Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 1 of 21 PageID #: 29085
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff/Counterclaim-Defendant,
`
`v.
`
`Civil Action No. 17-770-JDW
`
`CATERPILLAR INC.,
`
`REDACTED VERSION
`
`Defendant/Counterclaim-Plaintiff.
`
`WIRTGEN AMERICA’S OPPOSITION TO
`CATERPILLAR INC.’S MOTION TO STRIKE OPINIONS OF
`DRS. DURHAM GILES, JOHN MEYER, AND PALLAVI SETH
`
`

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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 2 of 21 PageID #: 29086
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`
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`TABLE OF CONTENTS
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`I.
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`II.
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`Introduction ......................................................................................................................... 1
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`Background and Argument ................................................................................................. 1
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`A.
`
`B.
`
`C.
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`Caterpillar had fair notice of Dr. Giles’ noninfringement theories. ........................ 3
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`Caterpillar had fair notice of Dr. Meyer’s opinions that Wirtgen’s
`machines practice the ’641 patent. .......................................................................... 7
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`Dr. Seth did not offer any new opinions and thus her testimony should
`not be stricken. ...................................................................................................... 11
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`III.
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`Conclusion ........................................................................................................................ 16
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`ii
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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 3 of 21 PageID #: 29087
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Acceleration Bay LLC. v. Activision Blizzard, Inc.,
`No. 16-453 (RGA), 2017 WL 11517421 (D. Del. Nov. 7, 2017) ............................................14
`
`Borden v. Ingersoll-Rand Co.,
`No. 01-CV-5455, 2003 WL 21488511 (E.D. Pa. Jan. 17, 2003) ...............................................5
`
`British Telecomms. PLC v. IAC/Interactivecorp, Match Grp., Inc.,
`No. 18-366-WCB, 2020 WL 13749385 (D. Del. July 15, 2020) .............................................15
`
`Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prod., LLC,
`No. 1:09-CV-1685, 2013 WL 3872201 (M.D. Pa. July 25, 2013) ............................................9
`
`In re Mercedes-Benz Anti-Tr. Litig.,
`225 F.R.D. 498 (D.N.J. 2005) ....................................................................................................2
`
`Meyers v. Pennypack Woods Home Ownership Ass’n,
`559 F.2d 894 (3d Cir. 1977)............................................................................................. passim
`
`Novartis Pharms. Corp. v. Actavis, Inc.,
`2013 No. 12–366, 2013 WL 7045056 (D. Del. Dec. 23, 2013) .................................................3
`
`In re Paoli R.R. Yard PCB Litig.,
`35 F.3d 717 (3d Cir. 1994).........................................................................................................2
`
`Power v. Hewlett-Packard Co.,
`No. 2:17-CV-00154, 2021 WL 1310422 (W.D. Pa. Apr. 8, 2021)............................................9
`
`TQ Delta, LLC v. 2Wire, Inc.,
`No. 1:13-CV-01835-RGA, 2019 WL 1857117 (D. Del. Apr. 25, 2019) ...................................5
`
`Vectura Ltd. v. GlaxoSmithKline, LLC,
`No. 16-638, 2019 WL 1436296 (D. Del. Apr. 1, 2019) .........................................................6, 7
`
`Wonderland Nurserygoods Co. v. Thorley Indus., LLC,
`No. 12-196, 2013 WL 2471801 (W.D. Pa. June 7, 2013) .........................................................2
`
`Wyeth Holdings Corp. v. Sandoz, Inc.,
`No. 09-955, 2012 WL 1669555 (D. Del. May 10, 2012) ..........................................................3
`
`ZF Meritor LLC v. Eaton Corp.,
`696 F.3d 254 (3d Cir. 2012).......................................................................................................2
`
`iii
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`Statutes
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`28 U.S.C. § 1659(b) .........................................................................................................................8
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`Other Authorities
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`Fed. R. Civ. P. 26(a) ........................................................................................................................2
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`Fed. R. Civ. P. 26(a)(2)(B) ..............................................................................................................2
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`Fed. R. Civ. P. 26(e) ........................................................................................................................2
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`Fed. R. Civ. P. 26(e)(1)(A) ..............................................................................................................2
`
`Fed. R. Civ. P. 26(e)(2) ....................................................................................................................2
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`Fed. R. Civ. P. 30(e) ......................................................................................................................15
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`Fed. R. Civ. P. 37(c)(1) ....................................................................................................................2
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`
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`
`iv
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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 5 of 21 PageID #: 29089
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`
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`I.
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`Introduction
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`Caterpillar’s motion to strike is a vast overreach, and it fails to articulate the type of
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`incurable prejudice and bad faith behavior that warrants the exclusion of evidence under the
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`Pennypack factors. At base, the opinions that Caterpillar calls “new” and “untimely” are
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`anything but as they were fully disclosed through expert reports disclosed in this proceeding.
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`Moreover, Caterpillar had the full opportunity to depose Wirtgen’s experts on their opinions.
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`Even if Caterpillar could make a showing of some modicum of prejudice—it cannot—it
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`still falls far short of proving that exclusion of portions of their testimony is appropriate. With
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`respect to Dr. Meyer and Dr. Giles, Caterpillar’s complaints relate to depositions that occurred
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`on August 17, 2023, and August 24, 2023, respectively. Caterpillar’s motion never explains
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`why—if the potential prejudice was so great—it waited nearly two months to first raise its
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`concerns. With respect to Dr. Seth, Caterpillar’s purported “prejudice” is impossible to decipher
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`given that the opinions Caterpillar seeks to exclude were set forth in Dr. Seth’s May 19, 2023
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`Opening Report. As Dr. Seth stated in her errata, she misspoke during her deposition so she
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`corrected her response to be consistent with the opinions in her report. Caterpillar is free to use
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`Dr. Seth’s misstatement during her deposition to cross-examine her in accordance with the
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`Federal Rules. But a misstatement during a deposition—properly corrected via errata—is not a
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`proper basis for a motion to strike opinions disclosed in an expert report.
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`II.
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`Background and Argument
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`Caterpillar fails to meet the high burden required to exclude Wirtgen’s expert testimony.
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`Dressed up as a motion to strike, Caterpillar seeks to have the Court preclude testimony from
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`three of Wirtgen’s experts: (1) all references by Dr. Giles to Wirtgen’s Spare Parts Manual; (2)
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`opinions by Dr. Meyer regarding commercial embodiments of the ’641 patent; and (3) opinions
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`by Dr. Seth regarding the royalty base calculation for damages in this case. “The Third Circuit
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`1
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`has, on several occasions, manifested a distinct aversion to the exclusion of important testimony
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`absent evidence of extreme neglect or bad faith on the part of the proponent of the testimony.” In
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`re Mercedes-Benz Anti-Tr. Litig., 225 F.R.D. 498, 504–05 (D.N.J. 2005) (collecting cases).
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`Indeed, the Third Circuit has long held that the exclusion of important testimony is an “‘extreme’
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`sanction, not normally imposed absent a showing of willful deception or ‘flagrant disregard’ of a
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`court order by the proponent of the evidence.” In re Paoli R.R. Yard PCB Litig., 35 F.3d 717,
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`791–92 (3d Cir. 1994) (citing Meyers v. Pennypack Woods Home Ownership Ass’n, 559 F.2d
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`894, 905 (3d Cir. 1977)). “[T]hus, a district court’s discretion is not unlimited.” ZF Meritor LLC
`
`v. Eaton Corp., 696 F.3d 254, 297 (3d Cir. 2012). And a motion to strike is not the proper avenue
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`for seeking to exclude expert testimony. See Wonderland Nurserygoods Co. v. Thorley Indus.,
`
`LLC, No. 12-196, 2013 WL 2471801, at *1 (W.D. Pa. June 7, 2013) (“Dr. Clarke’s expert report
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`is not a pleading, nor for that matter a brief or affidavit, and therefore cannot by stricken by the
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`Court.”).
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`Pursuant to Federal Rule of Civil Procedure 37(c)(1), a party may rely on information or
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`witnesses not disclosed pursuant to Rule 26(a) or (e) when the non-disclosure is substantially
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`justified or harmless. Federal Rule of Civil Procedure 26(e) requires that “[a] party who has
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`made a disclosure under Rule 26(a) . . . must supplement or correct its disclosure or response: in
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`a timely manner if the party learns that in some material respect the disclosure or response is
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`incomplete or incorrect, and if the additional or corrective information has not otherwise been
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`made known to the other parties during the discovery process or in writing.” Fed. R. Civ. P.
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`26(e)(1)(A). For expert witnesses who disclose an expert report under Rule 26(a)(2)(B),
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`additions or changes “must be disclosed by the time the party’s pretrial disclosures . . . are due.”
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`Fed. R. Civ. P. 26(e)(2).
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`2
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`While Wirtgen sufficiently disclosed the opinions that Caterpillar now seeks to exclude,
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`if the Court were to determine that Wirtgen’s disclosures were insufficient in some way, the
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`Court would consider the Pennypack factors to determine whether excluding expert testimony is
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`appropriate. Pennypack, 559 F.2d at 904–05. The factors are: (1) “the prejudice or surprise in
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`fact of the party against whom the excluded witnesses would have testified” or the excluded
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`evidence would have been offered; (2) “the ability of that party to cure the prejudice”; (3) the
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`extent to which allowing such witnesses or evidence would “disrupt the orderly and efficient trial
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`of the case or of other cases in the court”; (4) any “bad faith or willfulness in failing to comply
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`with the court's order”; and (5) the importance of the excluded evidence. Pennypack, 559 F.2d at
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`904–05. While “[s]ome courts also evaluate the non-movant’s explanation for the failure of
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`timely disclosure as a separate Pennypack factor; others tend to incorporate that issue into the
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`analysis of the ‘bad faith or willfulness’ factor.” Novartis Pharms. Corp. v. Actavis, Inc., 2013
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`No. 12–366, 2013 WL 7045056, at *7, n.8 (D. Del. Dec. 23, 2013). Courts look to the “overall
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`balance” of these Pennypack factors. Wyeth Holdings Corp. v. Sandoz, Inc., No. 09-955, 2012
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`WL 1669555, at *4 (D. Del. May 10, 2012).
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`Caterpillar had fair notice of Dr. Giles’ noninfringement theories.
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`A.
`Caterpillar contends that Dr. Giles offered new opinions of noninfringement of the
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`’618 patent pertaining to a Wirtgen technical document called the “Spare Parts Manual.” Mot.
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`at 2. Namely, Caterpillar argues that Dr. Giles offered “the new opinion that the spare parts
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`manual does not include ‘a separate component that can be purchased or with a separate part
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`number or a call-out,’” and that Dr. Giles offered “multiple new opinions about how the manual
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`‘inform[s] your opinion’ on non-infringement.’” Id. Caterpillar’s argument is both wrong and
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`misleading.
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`There is no dispute that prior to his deposition, Dr. Giles disclosed in his rebuttal expert
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`3
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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 8 of 21 PageID #: 29092
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`report his opinion that “the Accused Wirtgen America Machines do not include a water reservoir
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`that would be considered ‘mounted on’ the frame because the water reservoir is formed by the
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`frame itself. Thus, there is no separate part that must be ‘mounted on’ the frame.” D.I. 229-16,
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`Giles Rebuttal Report, ¶¶ 134–138. In support of his opinion, Dr. Giles cited inspection photos
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`and CAD drawings illustrating Wirtgen’s Accused Machines. See id.
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`In response to Dr. Giles’ noninfringement report, Caterpillar’s expert, Dr. Sorini, served a
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`reply report that purported to question the authenticity and accuracy of the evidence cited by
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`Dr. Giles. See D.I. 230-8, July 7, 2023 Reply Expert Report of Dr. Adam Sorini, ¶¶ 83–85.
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`During Dr. Giles’ deposition, Caterpillar’s counsel pursued a similar line of questioning. See D.I.
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`229-21 and Ex. 1, Giles Dep. 122:19–125:6. On redirect, Dr. Giles pointed to an additional
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`document that illustrated Wirtgen’s Accused Machines and that is consistent with the other
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`evidence discussed in Dr. Giles’ noninfringement report. D.I. 234-1, Giles Dep. 256:16–258:14
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`(explaining that the Spare Parts Manual provided a different viewing angle of the water tank
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`from the inspection photos). The specific document-in-question came as no surprise to
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`Caterpillar, because their own expert extensively cited to it in support of his infringement
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`opinions. See, e.g., D.I. 229-22, Sorini Opening Report, ¶¶ 201, 215, 220, 347. Ex. 2 Sorini
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`Opening Report, ¶ 235. Whether Dr. Giles points to photographs, CAD drawings, or the Spare
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`Parts Manual to illustrate the Wirtgen machines, his opinion that those machines do not meet the
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`water reservoir limitation are the same and those opinions are set forth in his noninfringement
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`report.
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`Moreover, Caterpillar has failed to show that the Pennypack factors warrant precluding
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`Dr. Giles from discussing evidence that Caterpillar’s own expert relies on and that contradicts
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`Caterpillar’s infringement theory.
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`4
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`As to Pennypack factor 1 (prejudice/surprise), Caterpillar has not shown that it has been
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`prejudiced or surprised by Dr. Giles’ testimony at his deposition of a document that Caterpillar’s
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`own expert extensively discussed. Dr. Giles did not offer a new opinion or theory. Rather, his
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`deposition testimony merely explained how an additional document corroborates his opinion that
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`Wirtgen’s Accused Products do not infringe because the water reservoir is not separately
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`mounted on the frame as the water reservoir is integrally formed as part of the frame. See D.I.
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`229-16, Giles Rebuttal Report, ¶¶ 134–38.
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`Caterpillar does not articulate a “prejudice,” other than its complaint that Dr. Giles’
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`opinion “[came] too late for any of its experts to respond to the new opinions.” Mot. at 7. But
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`Dr. Sorini already considered the Spare Parts Manual, and Caterpillar had the opportunity to
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`question Dr. Giles during his deposition about the Spare Parts Manual. D.I. 234-1, Giles Dep.
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`259:6–263:8. Under similar circumstances, courts routinely deny motions to strike. Borden v.
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`Ingersoll-Rand Co., No. 01-CV-5455, 2003 WL 21488511, at *3 (E.D. Pa. Jan. 17, 2003)
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`(denying motion to preclude opinions offered during deposition testimony as party had notice of
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`claim, party had chance to cross-examine witnesses during depositions, and deposition testimony
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`was offered “more than three months before the case was scheduled to go to trial, thereby
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`vitiating any claims of extreme unfairness or surprise”). The absence of any articulable prejudice
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`weighs against exclusion.
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`As to Pennypack factor 2 (ability to cure), even if Caterpillar could articulate prejudice,
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`such prejudice has already been cured by Caterpillar’s opportunity to depose Dr. Giles regarding
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`this very document at issue. See D.I. 234-1, Giles Dep. 259:6–263:8; see also TQ Delta, LLC v.
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`2Wire, Inc., No. 1:13-CV-01835-RGA, 2019 WL 1857117, at *12 (D. Del. Apr. 25, 2019)
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`(holding that any surprise “will have worn off long before trial and any prejudice . . . has been
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`5
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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 10 of 21 PageID #: 29094
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`cured” by the deposition where the contested evidence (infringement chart in this case) had been
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`disclosed four months before trial and a month before the deposition); Vectura Ltd. v.
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`GlaxoSmithKline, LLC, No. 16-638, 2019 WL 1436296, *2 & n.2 (D. Del. Apr. 1, 2019)
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`(denying motion to strike supplemental expert report disclosed two months before trial because
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`there was enough time to depose the expert and to supplement a rebuttal expert report in
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`response). Thus, this factor also weighs against exclusion.
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`Caterpillar has also made no persuasive showing as to Pennypack factor 3 (disruption of
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`trial). Although it contends (Mot. at 7), that expert discovery would need to be reopened, it does
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`not explain why. Indeed, Caterpillar’s own expert considered and relied on the very document it
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`complains of in support of his infringement opinions. Accordingly, this factor does not warrant
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`striking any opinions by Dr. Giles. See Vectura Ltd. v. GlaxoSmithKline, LLC, No. CV 16-638,
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`2019 WL 1436296, at *2 (D. Del. Apr. 1, 2019) (finding factor “neutral” as “[n]either party has
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`asserted that the trial would be delayed or disrupted”).
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`As to Pennypack factor 4 (bad faith or willful non-compliance with a court order, and
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`explanation for the disclosure), Caterpillar alleges that Wirtgen did not act in good faith because
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`Dr. Giles was aware of the Spare Parts Manual when he drafted his noninfringement expert
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`report but failed to include citations to it. Mot. at 8. Caterpillar accuses Wirtgen of “tactically
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`wait[ing] until after Caterpillar’s experts had served their corresponding reports” and then
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`eliciting “door-opening testimony from Dr. Giles on redirect to use as a pretense to bring in his
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`new opinions.” Id. at 8–9. This is misleading. It was Caterpillar’s line of questioning that opened
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`the door to testimony related to the Spare Parts Manual. Caterpillar asked if Dr. Giles had relied
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`on the inspection photos to inform his definition of the frame, to which Dr. Giles responded,
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`“Partially.” Ex. 1, Giles Dep. 125:2–6. But Caterpillar did not inquire further into the other
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`6
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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 11 of 21 PageID #: 29095
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`evidence supporting Dr. Giles opinion. On redirect, Dr. Giles expanded upon that testimony and
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`explained that his opinions were also informed by the Spare Parts Manual. See D.I. 234-1, Giles
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`Dep. 251:3–20. Failing to cite every piece of evidence in support of his opinion hardly amounts
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`to bad faith.
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`As to Pennypack factor 5 (importance of the excluded evidence), Caterpillar seeks to
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`prevent Dr. Giles from testifying about one set of images and schematics that depict the Wirtgen
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`machines. But Caterpillar’s issue is not with Dr. Giles’ noninfringement opinions or that those
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`opinions have somehow changed. Rather, it simply wants to prevent Dr. Giles from testifying
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`about evidence discussed by Caterpillar’s expert that supports Dr. Giles’ opinion and contradicts
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`Caterpillar’s expert’s opinion. But such documents are central to Wirtgen’s noninfringement
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`arguments, as it is not possible to bring a milling machine into the courtroom for the jury to view
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`first-hand. It would be prejudicial to Wirtgen and unhelpful for the jury to prohibit an expert
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`from testifying about such documents that illustrate the disputed features at issue and that are
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`directly responsive to Caterpillar’s infringement theories. See Vectura Ltd. v. GlaxoSmithKline,
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`LLC, No. CV 16-638, 2019 WL 1436296 (D. Del. Apr. 1, 2019), at *3 (finding factor favored
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`against exclusion as “the opinions offered are directly responsive to assertions of [the movant’s]
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`expert in his rebuttal report”). Thus, this factor also weighs against exclusion.
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`For all of the foregoing reasons, Caterpillar’s motion to strike with respect to Dr. Giles
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`should be denied.
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`B.
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`Caterpillar had fair notice of Dr. Meyer’s opinions that Wirtgen’s machines
`practice the ’641 patent.
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`Dr. Meyer did not offer any new opinions relating to Wirtgen’s practicing of the ’641
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`patent. Dr. Meyer provided reports on this issue to Caterpillar during the related 337-TA-1067
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`proceeding at the ITC. Caterpillar’ lawyers deposed Dr. Meyer on his opinions and cross-
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`7
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`examined him on his opinions at the evidentiary hearing before the ITC. Indeed, the parties
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`expressly agreed, and the Court ordered that “the discovery produced or taken in the 1067
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`Investigation may be used as if produced or taken in the Civil Action.” D.I. 61, Amended P.O.
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`at 1. This is consistent with the statutory mandate that “the record of the proceeding before the
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`United States International Trade Commission shall be transmitted to the district court and shall
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`be admissible in the civil action, subject to such protective order as the district court determines
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`necessary, to the extent permitted under the Federal Rules of Evidence and the Federal Rules of
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`Civil Procedure.” 28 U.S.C. § 1659(b). In view of this, Caterpillar’s motion to strike Dr. Meyer’s
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`opinion elevates form over substance and should be denied.
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`Contrary to Caterpillar’s claims, Dr. Meyer did not render any “new theories regarding
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`how Wirtgen America’s own machines purportedly practice the claims of the ’641 Patent.” Mot.
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`at 1. Dr. Meyer conducted an extensive independent investigation into whether Wirtgen’s
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`machines practice the ’641 patent. See D.I. 245-19, Meyer Witness Statement at 4741-58
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`(discussing claims 1, 7, 11, and 17 of the ’641 patent). The investigation included review of
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`product literature and documented inspections of the physical machines. Dr. Meyer provided
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`detailed reports providing analysis, methodology, and conclusions. Id. Caterpillar had the full
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`and fair opportunity to depose and cross-examine Dr. Meyer on those opinions.
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`Thus, every Pennypack factor weighs against exclusion. Under Pennypack factor 1
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`(prejudice/surprise), Caterpillar cannot claim any prejudice or surprise by Dr. Meyer’s opinion as
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`it has known about those opinions for years. Dr. Meyer—the same expert here and in the ITC—
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`adopted his prior reports, testimony, and opinions in this case and appeared for deposition on the
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`topic of Wirtgen’s patent-practicing machines in this litigation. See D.I. 234-2, Meyer Op. Rep.
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`8
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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 13 of 21 PageID #: 29097
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`¶ 191 (“Wirtgen America’s milling machines are commercial embodiments of the ’641 patent.”);
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`id. at Appx. C (listing Dr. Meyer’s testimony and reports from the 1067 proceeding).
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`As to the Pennypack factor 2 (ability to cure), Caterpillar could have cured any purported
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`prejudice during the deposition, but it chose not to. Dr. Meyer in his deposition made it clear that
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`he was relying on his opinion from the ITC case regarding whether Wirtgen’s machines practice
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`the ’641 patent. See D.I. 245-34, Meyer Dep. 106:22–107:8 (“Q. . . . do you anywhere provide an
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`analysis showing that use of Wirtgen’s road milling machines practice each and every step of
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`claims 11, 17, and 18? . . . A. My understanding is that the material from the prior ITC
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`investigation has been made available to this particular case, and in that investigation I did that
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`analysis.”). Caterpillar cannot bury its head in the sand and then allege that Wirtgen did not
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`provide a full evidentiary showing on this otherwise undisputed issue.
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`And Pennypack factor 3 (disruption of trial) similarly weighs against exclusion because
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`the evidence that Caterpillar claims is “new,” is already a part of the record, and would not
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`disrupt the orderly and efficient trial of the case in the court. See, e.g., Power v. Hewlett-Packard
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`Co., No. 2:17-CV-00154, 2021 WL 1310422, at *5 (W.D. Pa. Apr. 8, 2021) (noting that based on
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`prior discovery record “it does not follow that [the party] would be prejudiced by information it
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`already knew”). It would not require expert discovery to be reopened, nor would it require
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`Caterpillar’s experts to address the new opinions. See Kimberly-Clark Worldwide, Inc. v. First
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`Quality Baby Prod., LLC, No. 1:09-CV-1685, 2013 WL 3872201, at *5 (M.D. Pa. July 25, 2013)
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`(finding third Pennypack factor did not warrant exclusion as “KC has already cross-examined
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`these witnesses on the relevant issue, and furthermore, the parties have ample time to prepare
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`these witnesses to testify at trial, which is more than four months away”). Caterpillar was well
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`aware of Dr. Meyer’s opinion, as Dr. Meyer adopted his prior reports, testimony, and opinions in
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`9
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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 14 of 21 PageID #: 29098
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`this case and appeared for deposition on the topic of Wirtgen’s patent-practicing machines in this
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`litigation. See D.I. 234-2, Meyer Op. Rep. ¶ 191 (“Wirtgen America’s milling machines are
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`commercial embodiments of the ’641 patent.”); id. at Appx. C (listing Dr. Meyer’s testimony and
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`reports from the 1067 proceeding).
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`Moreover, as to Pennypack factor 4 (bad faith or willful non-compliance with a court
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`order, and explanation for the disclosure), Wirtgen did not act in bad faith. To the contrary,
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`Wirtgen is following the parties’ agreement and the protective order entered in this case. So
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`despite Caterpillar’s claims that “Wirtgen America tactically waited until after Caterpillar’s
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`experts had served their corresponding reports and elicited new opinions” during redirect of Dr.
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`Meyer, the fact remains, Dr. Meyer did not provide new opinions. Even Dr. Meyer stated in his
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`deposition that he understood the ITC record to be in the record here. Indeed, the exhibit (Exhibit
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`252) that Caterpillar complains that Dr. Meyer’s counsel used to elicit “multiple new opinions
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`from Dr. Meyer” was Dr. Meyer’s Direct Witness Statement from the ITC (CX-0006C), which is
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`listed in Dr. Meyer’s list of materials considered in his expert reports. D.I. 234-2, Meyer Op.
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`Rep. Appx. C.
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`Finally, Pennypack factor 5 (importance of the excluded evidence) weighs against
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`exclusion because evidence and testimony over whether Wirtgen practices the asserted claims of
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`the ’641 patent impact its claims for damages and for objective indicia rebutting Caterpillar’s
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`claims of obviousness. Tellingly, Caterpillar does not articulate any reason Dr. Meyer’s
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`testimony would not be important.
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`For all of the foregoing reasons, Caterpillar’s motion to strike with respect to Dr. Meyer
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`should be denied.
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`C.
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`Dr. Seth did not offer any new opinions and thus her testimony should not be
`stricken.
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` Turning to Dr. Seth, Caterpillar attempts to exploit Dr. Seth’s misstatement during her
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`deposition to strike opinion disclosed in her Opening Expert Report. Caterpillar alleges that Dr.
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`Seth “offered deposition testimony entirely consistent with her report, but then used her errata to
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`introduce brand-new opinions that contradict her deposition testimony and that are missing from
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`her expert reports.” Mot. at 2. The exact opposite occurred. Dr. Seth disclosed her opinions in
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`her expert reports, misspoke during her deposition, and served an errata to correct her
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`misstatements to align with the analysis and opinion in her expert reports. This is clear from the
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`errata itself, which set forth exactly where the information is provided in her expert report and
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`those corrections are fully aligned with her expert reports. These are not “new” opinions, and the
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`errata does not contradict anything in her expert reports.
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`Caterpillar fully understands Dr. Seth’s opinion that the minimum amount Wirtgen would
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`have been willing to accept during the hypothetical negotiation is Wirtgen’s lost profits. This is
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`one of Caterpillar’s principal (albeit legally incorrect) Daubert arguments against Dr. Seth’s
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`analysis. See D.I. 211 § I.A (Caterpillar’s Daubert #1). Throughout her expert reports and her
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`deposition, Dr. Seth was unwavering that the minimum amount Wirtgen would have been
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`willing to accept during the hypothetical negotiation is Wirtgen’s lost profits. See, e.g., Seth Op.
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`Rep. ¶ 17 (“Similarly, Wirtgen’s MWA is defined by the profits it anticipates to lose should
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`Caterpillar practice the Asserted Patents. Again, these profits can be estimated as Wirtgen’s lost
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`profits due to infringement (the ‘Lost Profits’).”); Seth Reply Rep. ¶ 16 (“I rightly observed that
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`Wirtgen would not agree to a royalty amount less than their expected profit loss (their minimum
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`willingness to accept or ‘MWA’).”); Seth Dep. 106:1–7 (“Q. . . . In your opinion, Wirtgen’s
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`MWA is defined by profits it anticipates to lose should Caterpillar practice the asserted patents;
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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 16 of 21 PageID #: 29100
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`correct? A. That is correct.”). And Dr. Seth’s May 19, 2023 Opening Expert Report provides
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`exactly what Wirtgen’s lost profits are, including a patent-by-patent analysis for Wirtgen’s lost
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`profits for the medium Accused Machines (Table 7) and the large Accused Machines (Table 8).
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`Her May 19, 2023 report also shows how the numbers were calculated (in Exhibit 6) and how
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`they factor into her damages model (in Exhibit 5).
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`During her deposition, Caterpillar’s counsel asked Dr. Seth about the impact of a variety
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`of different hypotheticals on Wirtgen’s minimum willingness to accept. See D.I. 213-2, Seth
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`Dep. 112:2–116:9. Caterpillar’s counsel started with the initial assumption that all seven
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`Asserted Patents were infringed (for a lost profit amount—and minimum willingness to accept—
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`of approximately
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` and then removed various patents from the list of hypothetically
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`infringed patents, questioning what the impact would be on Wirtgen’s minimum willingness to
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`accept. Id. Changing the number or identity of infringed patents does not change Dr. Seth’s
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`damages theory: that the minimum amount Wirtgen would be willing to accept is its lost profits.
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`But, because some patents are asserted against all of the Caterpillar Accused Machines while
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`others are not asserted against the medium Accused Machines, and others are not asserted
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`against Caterpillar’s redesigned machines while others did not issue until after Caterpillar began
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`selling the Accused Machines, there are a variety of permutations of Accused Machine sets that
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`alter the value of Wirtgen’s lost profits (and, therefore, its minimum willingness to accept). The
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`transcript shows that Dr. Seth endeavored to answer these hypotheticals carefully and accurately.
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`See D.I. 213-2, Seth Dep. 112:2–6, 112:15–20, 113:5–12, 113:20, 114:4–10, 114:17–115:1.
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`Nevertheless, upon review of the transcript, Dr. Seth identified errors in her deposition testimony
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`answers that were inconsistent with the calculations in her expert report.
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`In reviewing her deposition transcript, Dr. Seth realized that she had misspoke during her
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`Case 1:17-cv-00770-JDW Document 254 Filed 10/30/23 Page 17 of 21 PagelD #: 29101
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`deposition because—as discussed above—while her theory (that the minimum amount Wirtgen
`
`would be willing to acceptis its lost profits) does not changeas the identity of infringed patents
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`is altered, the va/ue (what that lost profits number is) can. Thus, Dr. Seth includedin hererrata
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`corrections to a handful of answers to provide Wirtgen’s lost profits amount(all of which were
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`calculated and shown in her Opening Expert Report) for each of the various hypotheticals she
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`wasasked. Theface of the errata itself and the table below show exactly where this information
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`was disclosed in her May 19, 2023 Opening Expert Report.
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`“A: That’s incorrect. In this case, the
`minimum willingness to pay would be about See Seth Op. Rep..
`as given in Table 8, row 1,
`Table 8. Row 1. Col. E
`column E of Exhibit 196. Exhibit 6 to my
`° a
`May 19, 2023 Opening Expert Report a
`.
`for
`shows how this numberwascalculated, and wTarce Wbration
`Exhibit 5 to my May 19, 2023 Opening
`ee,
`Mounting and Parallel
`Report at rows 57-59, column AN shows
`to Surface”)
`how this figure factors into my model.” Seth
`Dep. Errata at 1.
`“A: That’s incorrect. In this case, the
`minimum willingness to pay would be about
`See Seth Op. Rep.,
`as given in Table 8, row 1,
`Table 8,