Case 1:17-cv-00770-JDW Document 259-1 Filed 11/02/23 Page 1 of 5 PageID #: 29175
`Case 1:17-cv-00770-JDW Document 259-1 Filed 11/02/23 Page 1 of 5 PagelD #: 29175
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`EXHIBIT 27
`EXHIBIT 27
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`Case 1:17-cv-00770-JDW Document 259-1 Filed 11/02/23 Page 2 of 5 PageID #: 29176
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`HIGHLY CONFIDENTIAL—SUBJECT TO PROTECTIVE ORDER
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`IN THE UNITED STATES DISTRICT COURT
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`BEFORE THE
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`THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.
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`Plaintiff
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`v.
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`CATERPILLAR, INC.
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`Defendant
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`C.A. No. 17-770-JDW
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`EXPERT REPOR T OF
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`DR. PALLAVI SETH
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`ON BEHALF OF
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`WIRTGEN AMERICA, INC.
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`M AY 1 9, 20 23
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`Case 1:17-cv-00770-JDW Document 259-1 Filed 11/02/23 Page 3 of 5 PageID #: 29177
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`HIGHLY CONFIDENTIAL—SUBJECT TO PROTECTIVE ORDER
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`II.D.2. Driving Backwards (the ’641 Patent)
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`73. As discussed in Section II.B, I understand that Wirtgen’s asserted driving backwards family
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`allows a machine operator to drive backwards without having to disengage the rotating milling
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`drum.131 According to Dr. Meyer, in prior machines, if the rotor contacted the ground while the
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`machine was traveling in reverse, it could cause the machine to dangerously accelerate
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`backwards.132 The driving backwards feature avoids this safety hazard by disengaging the rotor
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`drum if an unsafe condition is detected.133 I further understand from Dr. Meyer that the invention
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`enhances productivity because the milling machine need not disengage the rotor drum every time
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`it travels in reverse.134 Reduced overall wear and tear on the machine is another added benefit.135
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`74. This is another feature that customers told Caterpillar was important to them. As acknowledged
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`by Caterpillar’s VOC results, customers disliked the setup of Caterpillar’s PM201 machine:
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`“Dislike: Backup with drum running. Customer doesn’t understand
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`why the rotor is shut off when backing up when there is already
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`backup ski protection. Also, customer believes the machine still
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`travels far enough to hurt someone. When propel is stopped by the
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`backup protection, people think you are stopping and are put in
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`danger when propel is started again. Instead of looking where you
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`are going, you are restarting propel of the machine.”136
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`75. In the same document, Caterpillar noted that customers “would like the drum to remain on when
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`backing up” and “[t]hey want the rotor to run in reverse.”137 Caterpillar documented numerous
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`customer comments expressing the same sentiment.138
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`131 See, Section II.B. See also, Conversation with Dr. John Meyer, May 4, 2023.
`132 Conversation with Dr. John Meyer, May 4, 2023.
`133 Conversation with Dr. John Meyer, May 4, 2023.
`134 Conversation with Dr. John Meyer, May 4, 2023.
`135 Conversation with Dr. John Meyer, May 4, 2023.
`136 “2010 Summaries of Likes and Dislikes,” August 2, 2010, CAT0088667 at ’670.
`137 “2010 Summaries of Likes and Dislikes,” August 2, 2010, CAT0088667 at ’693, ’710.
`138 See, e.g., “Compilation of Feedback on Various Features and Machines,” CAT0115864 (“They want the rotor to
`run when the machine is in reverse.”); “Likes and Dislikes of Various Milling Machine Models,” CAT0115869,
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`Expert Report of Pallavi Seth, Ph.D.
`C.A. No. 17-770-JDW
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`| Page 31 of 128
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`Case 1:17-cv-00770-JDW Document 259-1 Filed 11/02/23 Page 4 of 5 PageID #: 29178
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`HIGHLY CONFIDENTIAL—SUBJECT TO PROTECTIVE ORDER
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`out here and get rid of that function I am going to send this machine back and go buy a
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`Wirtgen.”147
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`80. Consistent with the customer feedback Caterpillar received, Caterpillar listed the “ability to
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`reverse machine with rotor engaged” as a “PM300 Raw Customer Requirement[].”148 In its list
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`of technical requirements for its road milling machines, Caterpillar stated, “[t]he machine shall
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`be able to infinitely reverse without disengaging the rotor as long as the side plates and
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`moldboard are lowered below the profile of the rotor.”149
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`81. When asked about customer feedback on this feature, Nathan Mashek, a member of Caterpillar’s
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`cold planer product engineering group, admitted that it understood from the VOC survey that
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`customers wanted to be able to back up with the rotor on.150 He also admitted that this customer
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`feedback influenced Caterpillar’s machine design choices.151
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`82. Once again, given the benefits of this feature, the importance that Caterpillar placed on the
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`feature, and the customer feedback for this feature, it is reasonable to infer that Wirtgen’s
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`asserted driving backwards feature is yet another critical determinant of consumers’ ultimate
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`purchasing decision.
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`II.D.3. Path Measurement (the ’530 Patent)
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`83. As discussed in Section II.B, Wirtgen’s asserted path measurement family provides enhanced
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`machine height control in the form of a new leg sensor configuration.152 The feature allows the
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`operator to use position sensing cylinders to measure the position of the leg tubes relative to each
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`other, which in turn enables enhanced height control.153
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`147 “Likes and Dislikes of Controls on Various Machines,” CAT0115298.
`148 “PM300 Technical Requirements,” CAT0087933.
`149 “PM300 Technical Requirements,” CAT0087933, tab “PM300 Technical Requirements,” cell U147 (emphasis
`removed from original).
`150 Mashek Deposition, 15:14-18, 196:6-10 (“Q. Did you understand from the voice of customer survey that
`customers wanted to be able to back up – wanted to be able to travel in reverse with the rotor on? A. That is
`what’s stated in these comments.”).
`151 Mashek Deposition, 197:18-21 (“Q. And did the feedback from customers that they wanted the ability to drive
`in reverse with the rotor on play into your design choices for the PM300? A. Yes.”).
`152 See, Section II.B. See also, Conversation with Dr. John Lumkes, May 8, 2023.
`153 Conversation with Dr. John Lumkes, May 8, 2023.
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`Expert Report of Pallavi Seth, Ph.D.
`C.A. No. 17-770-JDW
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`| Page 33 of 128
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`Case 1:17-cv-00770-JDW Document 259-1 Filed 11/02/23 Page 5 of 5 PageID #: 29179
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`HIGHLY CONFIDENTIAL—SUBJECT TO PROTECTIVE ORDER
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`the sale of Accused Products, Wirtgen is entitled to a reasonable royalty rate of at least 31.6
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`percent, and potentially up to 40.7 percent, of revenues from the sale of Accused Products.361
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`This rate considers, among other things, both Wirtgen’s loss of market profits and the portion of
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`the value created by Caterpillar’s products that can be attributed to the Asserted Patents.
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`Respectfully Submitted,
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`Pallavi Seth, Ph.D.
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`361 See, Table 9, row [14].
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`Expert Report of Pallavi Seth, Ph.D.
`C.A. No. 17-770-JDW
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`| Page 91 of 128
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