Case 1:17-cv-00770-JDW Document 261 Filed 11/02/23 Page 1 of 25 PageID #: 29257
`Case 1:17-cv-00770-JDW Document 261 Filed 11/02/23 Page 1 of 25 PagelD #: 29257
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA,INC.
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`Plaintiff/Counterclaim-Defendant,
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`Vv.
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`)
`
`)
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`CATERPILLAR INC.
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`Defendant/Counterclaim-Plaintiff.
`
`C.A. No. 17-770-JDW
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`JURY TRIAL DEMANDED
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`REDACTED VERSION
`
`WIRTGEN AMERICA, INC.’S REPLY BRIEF IN SUPPORT OF ITS
`COMBINED MOTION FOR PARTIAL SUMMARY JUDGMENT AND
`
`MOTION TO EXCLUDE INADMISSIBLE EXPERT TESTIMONY
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`

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`Case 1:17-cv-00770-JDW Document 261 Filed 11/02/23 Page 2 of 25 PageID #: 29258
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`I.
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`TABLE OF CONTENTS
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`MOTIONS FOR PARTIAL SUMMARY JUDGMENT ....................................................1
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`A.
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`No Genuine Disputes of Material Fact Preclude Summary Judgment that
`Caterpillar Infringes Wirtgen’s ’530, ’309, and ’641 Patents ..................................1
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`1.
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`2.
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`3.
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`Caterpillar infringes claims 5, 16, and 22 of the ’530 patent. ......................1
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`Caterpillar infringes claim 29 of the ’309 patent. ........................................5
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`Caterpillar infringes claims 11, 17, and 18 of the ’641 patent. ....................7
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`B.
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`Caterpillar’s Invalidity Grounds for the ’530 and ’309 Patents are
`Estopped .................................................................................................................13
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`C.
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`The RE’268 Patent Claims were not Improperly Broadened ................................15
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`D. Wirtgen Does Not Infringe Caterpillar’s ’618 Patent ............................................16
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`II.
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`MOTION TO EXCLUDE CATERPILLAR’S LEGAL EXPERT ....................................18
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`III.
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`CONCLUSION ..................................................................................................................20
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`
`ii
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`Case 1:17-cv-00770-JDW Document 261 Filed 11/02/23 Page 3 of 25 PageID #: 29259
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...................................................................................................................2
`
`Atturo Tire Corp. v. Toyo Tire Corp.,
`No. 14-CV-0206, 2021 WL 3814800 (N.D. Ill. Aug. 26, 2021) .............................................19
`
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010)................................................................................................18
`
`Cal. Inst. of Tech. v. Broadcom Ltd.,
`No. CV 16-3714-GW(AGRx), 2019 WL 8192255 (C.D. Cal. Aug. 9, 2019),
`aff’d, 25 F.4th 976 (Fed. Cir. 2022) .........................................................................................14
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...................................................................................................................2
`
`Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp.,
`838 F. App’x. 551 (Fed. Cir. 2021) .........................................................................................18
`
`Exigent Technology, Inc. v. Atrana Solutions, Inc.,
`442 F.3d 1301 (Fed. Cir. 2006)..................................................................................................2
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) .............................................................................................................20
`
`HTC Corp. v. Cellular Commc'ns Equip., LLC,
`701 F. App’x 978 (Fed. Cir. 2017) ..........................................................................................18
`
`IOENGINE, LLC v. PayPal Holdings, Inc.,
`607 F. Supp. 3d 464 (D. Del. 2022) .........................................................................................13
`
`Microchip Tech. Inc. v. Aptiv Servs. US LLC,
`No. 1:17-cv-01194-JDW, 2020 WL 4335519 (D. Del. July 28, 2020) ...................................13
`
`Texas Instruments Inc. v. Cypress Semiconductor Corp.,
`90 F.3d 1558 (Fed. Cir. 1996)....................................................................................................7
`
`Tillotson, Ltd. v. Walbro Corp.,
`831 F.2d 1033 (Fed. Cir. 1987)................................................................................................16
`
`Wasica Fin. GmbH v. Schrader Int'l, Inc.,
`432 F. Supp. 3d 448 (D. Del. 2020) ...................................................................................13, 14
`
`
`
`
`
`iii
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`

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`Case 1:17-cv-00770-JDW Document 261 Filed 11/02/23 Page 4 of 25 PageID #: 29260
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`Caterpillar’s Opposition does not raise any genuine disputes of material fact with respect
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`to any of the issues on which Wirtgen seeks summary judgment. The few legal arguments
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`Caterpillar raises lack support in the law and the record, and thus do not provide a reason to deny
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`judgment in Wirtgen’s favor. Caterpillar’s Opposition also fails to meet its burden in establishing
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`the admissibility of its purported expert witness on ITC practice. The Court should exclude this
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`testimony and grant Wirtgen’s motions for partial summary judgment and Daubert exclusion.
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`I.
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`MOTIONS FOR PARTIAL SUMMARY JUDGMENT
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`Caterpillar’s Opposition fails to establish a genuine dispute of material fact. Instead,
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`Caterpillar raises belated and erroneous claim-construction arguments, rehashes positions it lost
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`at the ITC, and/or makes unsupported statements that Wirtgen’s comprehensive and unrebutted
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`evidence is somehow insufficient. It does not defeat Wirtgen’s motions.
`
`A.
`
`No Genuine Disputes of Material Fact Preclude Summary Judgment that
`Caterpillar Infringes Wirtgen’s ’530, ’309, and ’641 Patents
`
`Caterpillar’s Opposition declares that there are material disputes of fact, but merely
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`stating as much does not make it so. Each of Caterpillar’s purported disputes is either immaterial,
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`not factual in nature, or entirely without evidentiary support.
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`1.
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`Caterpillar infringes claims 5, 16, and 22 of the ’530 patent.
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`Caterpillar raises two purported disputes that it contends preclude summary judgment of
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`infringement of the ’530 patent. First, Caterpillar argues that there is a dispute as to whether the
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`“lifting position sensor” is coupled to two or more components of the lifting column. Opp. at 3.
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`This is the same argument that the ITC already rejected, Caterpillar did not appeal, and Wirtgen
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`dispelled in its SUMF and Opening Brief. See SUMF 37–59; Mot. at 4–7. Second, Caterpillar
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`alternatively argues, for the first time in this proceeding, that there is a dispute as to whether the
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`1
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`magnet within the Accused Products is “part of the sensor.” Opp. at 3. This unsupported attorney
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`argument appears nowhere in Drs. Sorini and Rakow’s rebuttal expert report.
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`Caterpillar contends that its experts reached opposite conclusions based on the evidence,
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`Opp. at 3, but they did not. Wirtgen’s Dr. Lumkes provided a detailed analysis and firm
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`conclusion that the Accused Products satisfy the sensor limitation. SUMF 37–56. Caterpillar’s
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`Dr. Rakow did not reach any conclusion of noninfringement at all, much less a conclusion based
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`on Caterpillar’s theories above. SUMF 57–59. Rather, Dr. Rakow’s testimony was that he could
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`not tell whether the claims were met from the evidence available to him (evidence that was
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`incomplete because he conducted no investigation). SUMF 49–51.
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`Importantly, contrary to Caterpillar’s position, Wirtgen’s criticisms of Caterpillar’s
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`arguments and Drs. Sorini and Rakow’s rebuttal expert reports do not shift the burden of proving
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`noninfringement to Caterpillar. Contra Opp. at 3. Wirtgen has met its burden of proving
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`infringement through Dr. Lumkes’s detailed opinion and extensive cited evidence. Caterpillar
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`has failed to identify a genuine dispute of material fact, supported by competent evidence that a
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`jury could accept to find noninfringement. See Celotex Corp. v. Catrett, 477 U.S. 317, 323–24
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`(1986) (establishing that non-movant must do more than merely assert a dispute of material fact);
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986) (same).1 There is none.
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`Wirtgen’s expert Dr. Lumkes shows that magnetostrictive position sensors in the
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`Accused Machines’ lifting columns satisfy the “lifting position sensors” limitation of claim
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`element [1g], and that they are coupled to two components of the lifting column. SUMF 41. He
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`1 Caterpillar’s citation to Exigent Technology, Inc. v. Atrana Solutions, Inc., 442 F.3d 1301,
`1307–08 (Fed. Cir. 2006) does not counsel otherwise. Contra Opp. at 3. There, the movant did
`not have to adduce affirmative evidence to argue that the plaintiff could not meet its burden at
`trial. Here, Caterpillar need not prove noninfringement, but it does need to point to evidence
`establishing a material dispute of fact. It cannot make a bare assertion that Wirtgen’s ample
`evidence of infringement is insufficient.
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`
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`2
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`

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`cites documentary evidence and testimony from Caterpillar’s own fact witness establishing what
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`components constitute the lifting position sensors and where and howthey are coupled to the
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`lifting column in two places. SUMF 42-46, 55, 56.
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`Regarding the sensor attachment points, Caterpillar suggests, for the first time, that the
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`sensor is coupled to the hydraulic cylinder’s moveable rod, not the lifting column. Opp.at 5.
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`However, the claim expressly defines the hydraulic cylinder (“piston-cylinder unit”) as part of
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`the lifting column, SUMF 34, and Caterpillar’s own manuals show the leg hydraulic cylinder
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`including an outer hollow tube and inner moveable rod. SUMF 34(citing D.I. 221-2 at 5277),
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`SUMF 41 (citing D.I. 221-2 at 5288). Notably, Caterpillar’s experts do not dispute that the
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`hydraulic cylinder has a movable rod orthat the hydraulic cylinder is part of the lifting column.
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`Contra Opp.at 5 (suggesting a dispute but citing nothing); SUMF 35. Thus, there is no genuine
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`dispute that the hydraulic cylinder’s moveable rodis part of the lifting column.
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`Regarding the sensor attachment points, Caterpillar argues that Dr. Lumkes “never
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`showed how the magnetis connected to a ‘movable rod,”” and misleadingly cites a portion of Dr.
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`Lumkes’s deposition transcript. Opp. at 5 (citing D.I. 240-1, Lumkes Tr. 211:5—7). First, Dr.
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`Lumkesdid show the connection in his report and the evidence cited. SUMF 41, 55, 56.
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`Caterpillar’s own 30(b)(6) witness, Mr. Engelmann, confirmed that Dr. Lumkes’s description of
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`the connection between the s¢nsIs (ich
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`again is part of the lifting column per the claim language) is correct. SUMF 56 (“the
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`Rn)). Conveniently, Caterpillar’s Dr. Rakow did not ask Mr.
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`Engelmann aboutthe lifting columns’ configuration, so he could remain willfully ignorant on the
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`second connection point. SUMF 48-51 (explaining that he could nottell from the limited
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`evidence he saw whetheror not the claim limitation wassatisfied and that he chose notto ask
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`Mr. Engelmann forclarification).
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`The portion of Dr. Lumkes’s deposition that Caterpillar cites for the proposition that Dr.
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`Lumkes’s opinion lacks substantiation asks whether the cylinder rod was labeled in the cited
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`diagram, not whether the diagram actually showed the required coupling of relevant parts. Opp.
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`at 5 (citing D.I, 240-1, Yen Dec. Ex. 22 at 211:5–7). That a particular part was not “labeled” in a
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`figure is not a concession that Dr. Lumkes’s opinion lacks substantiation. Contra Opp. at 5. His
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`deposition testimony went on to explain how the second connection point was nonetheless
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`shown in the figure he cited in his report.2 See Ex. A, Lumkes Tr. at 212:9–214:3.
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`Caterpillar cannot manufacture a failure-of-proof argument by withholding material
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`evidence from its expert, and then having that expert testify that the evidence is insufficient to
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`assess whether there is infringement. This strategy does not create a battle of the experts,
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`especially where two of Caterpillar’s other witnesses (one fact and one expert) who have seen
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`the relevant evidence agreed with Wirtgen’s Dr. Lumkes’s factual assessment. SUMF 42, 46, 56.
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`Indeed, Caterpillar’s only response is to argue that Wirtgen should have moved to exclude Dr.
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`Rakow’s opinion based on its flawed methodology. Opp. at 6. That Dr. Rakow’s opinion may
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`also be inadmissible under Daubert does not negate the fact that it is on its face insufficient to
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`establish a genuine dispute of material fact that the second connection point limitation is met.
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`Finally, Caterpillar raises a new argument that the magnet is not part of the sensor. Opp.
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`at 6. Caterpillar frames this argument as a factual dispute between the experts, but nowhere in
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`Caterpillar’s Drs. Sorini and Rakow’s joint report is there any discussion of this proposition.
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`Indeed, Caterpillar provides no citation to any report in support of the proposition that the sensor
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`2 Caterpillar’s argument that Dr. Lumkes did not verify the second connection point in his
`physical inspection of the actual machine is immaterial. Opp. at 5–6 (citing Yen Dec. Ex. 22 at
`216:11–14). The documentation and Caterpillar’s fact witness confirmed the second attachment
`between the magnet and cylinder rod. Dr. Lumkes did not need further confirmation to
`substantiate his opinion.
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`4
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`transducer and the magnetare not both parts of the sensor as claimed. Opp. at 6. Wirtgen’s Dr.
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`Lumkesexplained, and Caterpillar’s witnesses did not disagree, that the
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`P| of the lifting column—the function of the sensor as
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`claimed. SUMF 41-46. While sometimes the sensor transduceris referred to as, simply, “sensor”
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`in casual usage, the evidenceis clear that thea ofa
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`single apparatus (a single “system” as Dr. Alleynetestified), i.e., a single functional unit that
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`senses the positions of the lifting columns. See id. Dr. Rakow describing the magnet as
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`“associated” with the sensor did not create a dispute with Dr. Lumkes’s explanation that the
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`magnet was a componentof the sensoritself, and that the sensor transducer and magnet together
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`satisfies the sensor limitation of the claims. See D.I. 221-10, Kim Dec. Ex. 10 at 133:13—134:3.
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`2.
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`Caterpillar infringes claim 29 ofthe ’309 patent.
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`Caterpillar’s Opposition identifies a single purported dispute relevant to summary
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`judgment of the ’309 patent: whether the four-sided stability pattern of the Accused Products is
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`one “in which the widest transverse dimension falls within the milling rotor footprint.” Opp.at 8.
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`Once again, Caterpillar does not point to a single piece of evidence or expert opinion or basis on
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`which a jury might reasonably believe that the widest transverse dimension might nor fall within
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`the milling rotor footprint as Wirtgen’s Dr. Lumkesopines. Instead, Caterpillar purports to
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`challenge the authenticity of the demonstrative in Dr. Lumkes’s expert report, which shows how
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`the Accused Products meet the limitation. Opp.at 8.
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`Specifically, Dr. Lumkesrelies on a CAD file of the Accused Products that Caterpillar
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`produced, authenticated, and confirmed was an accurate representation of the Accused Products.
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`SUMF 111-114. Dr. Lumkescreated a demonstrative (shown below) from this CAD file to show
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`the widest transverse dimension (dashed blue line) of the 4-sided stability pattern (solid blue
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`Case 1:17-cv-00770-JDW Document 261 Filed 11/02/23 Page 9 of 25 PageID #: 29265
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`lines) and concluded that it fell within the footprint of the milling drum (gray).3 SUMF 111–112.
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`During his deposition, Dr. Lumkes confirmed that he did not manually draw the
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`annotations himself, but rather the annotations were added with his oversight. Although he could
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`not recall specifically who assisted him in creating the demonstrative, D.I. 229-26, Kim Dec. Ex.
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`73 at 160:10-18, he nonetheless confirmed that all the annotated lines are drawn correctly and
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`reflect his expert opinion. SUMF 111–114. Caterpillar presents no contrary evidence or lines.
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`Caterpillar faults Dr. Lumkes for not personally authenticating the CAD drawing or
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`knowing the educational background of the person who applied his annotations for him. Opp. at
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`9. Neither is a requirement, and Caterpillar cites no pertinent authority otherwise. Nor has
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`Caterpillar sought to exclude Dr. Lumkes’ opinions as unreliable. Dr. Lumkes expressly adopted
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`the drawing as reflecting his opinion, explained why it correctly depicts the widest transverse
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`dimension of the four-sided stability pattern, and reasonably relied upon Caterpillar’s own
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`representation that the underlying CAD file accurately depicts the Accused Products. SUMF
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`113–114. He did not need to personally measure the dimensions of the physical Accused
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`Machines, contra Opp. at 9, because he had no reason to distrust Caterpillar’s representation that
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`Caterpillar’s own CAD file was accurate. Caterpillar’s attempt to manufacture a factual dispute
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`relating to a document that it previously authenticated is pure gamesmanship.
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`3 Caterpillar characterizes the dashed blue line as “barely within” the footprint of the milling
`drum, rather than the “middle,” Opp. at 9, but there is no requirement that it be exactly centered
`within the rotor—just “within,” which Caterpillar’s widest transverse dimension undisputedly is.
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`6
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`Finally, Caterpillar argues that even if the annotated CAD file image is a true and
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`accurate representation of the Accused Products, Dr. Lumkes failed to provide any references,
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`calculations or analyses to support his location for the “pivot point” of the “imaginary axle” in
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`determining the four-sided stability pattern. Opp. at 11. But this does not identify a dispute of
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`material fact. Caterpillar’s Dr. Rakow does not dispute that a floating axle creates a virtual pivot
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`point. See D.I. 240-2, Yen Dec. Ex 23 ¶¶ 69–75. He also expressly admitted that the Accused
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`Products have the four-sided stability pattern Dr. Lumkes identifies. SUMF 110. Dr. Rakow’s
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`criticisms of Dr. Lumkes’s report are immaterial because Dr. Lumkes did not need calculations
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`or dimensions to identify the stability pattern in the Accused Products. Contra Opp. at 11. The
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`stability pattern and how it overlays the footprint of the machine are clear from the face of the
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`documents produced. SUMF 111–112. Caterpillar’s purported credibility challenges are empty.
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`3.
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`Caterpillar infringes claims 11, 17, and 18 of the ’641 patent.
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`The parties have cross-moved for summary judgment on whether Caterpillar’s reverse
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`shutoff feature infringes claims 11, 17, and 18. There are no genuine disputes of material fact
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`regarding how Caterpillar’s reverse shutoff feature works. Summary judgment is appropriate.
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`a.
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`Caterpillar infringes claim 11
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`The parties have cross-moved for summary judgment on whether Caterpillar’s reverse
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`shutoff feature satisfies the requirement of claim 11 by “monitoring” a distance between the
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`milling drum and the ground.4 Opp. at 12; SUMF 147–150. Specifically, Caterpillar argues that
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`its reverse travel shutoff feature is “triggered based on a drum exposure event,” and not the drum
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`4 This is the exact issue that Caterpillar raised before the ITC and lost. If nothing else, that
`establishes that there is sufficient evidence in the record here (which includes all of the evidence
`before the ITC) for a reasonable jury to find infringement for the same reasons the ITC found
`(and Federal Circuit affirmed) infringement. See Texas Instruments Inc. v. Cypress
`Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996) (“The district court can attribute
`whatever persuasive value to the prior ITC decision that it considers justified.”).
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`
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`7
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`distance to the ground. Opp.at 12 (citing SUMF 145). As Wirtgen’s opening brief (and the ITC
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`decision) explained, Caterpillar’s purported distinction between measuring drum exposure and
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`monitoring a distance between the drum and the ground is meaningless and ignores the claim
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`language. SUMF 127-133, 137-138, 145, 147; Mot. at 11-12.
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`Specifically, the “monitoring” step includes both direct and indirect monitoring. SUMF
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`122; D.1221-19, ’641 patent, 5:6—14. Monitoring rotor exposure indirectly monitors a distance
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`between the milling drum and the ground. SUMF 137-138. That Caterpillar’s fact witness
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`answered “no” when asked whether the Accused Products “measure the distance between the
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`drum and the ground” doesnot create a dispute of material fact. Contra Opp. at 12 (quoting D.I.
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`221-20, Kim Dec. Ex. 20 at Q28—29). The reasonthe witness gave for his answer wasthat
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`Caterpillar purportedly measured “rotor exposure” and not distance to ground. Jd. Butthatis
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`beside the point, because there is no dispute that Caterpillar’s system monitorsCY
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`PO and, when theyare raised by a pre-determined amount
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`while traveling in reverse, the rotor automatically disengages. As Wirtgen’s expert and the ITC,
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`concluded—measuring rotor exposure is a method ofindirectly monitoring the distance between
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`the drum and the ground. SUMF at 121, 122, 137-38 (citing D.I. 221-12, ID at 165, 437).
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`Thus,a jury crediting Mr. Engelmann’s testimonys#i// has no basis to find
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`noninfringement. Contra Opp. at 13. Indeed, Wirtgen credits Mr. Engelmann’s testimonytoo.
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`Accordingly, there is no dispute that Caterpillar’s machines function as Mr. Engelmann claims.
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`Noris there any dispute that the very method Caterpillar uses—measuring the position of the
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`moldboard using limit switches—is explicitly disclosed in the 641 patent as an embodiment of
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`the claimed “indirect” monitoring. D.I 221-19, ’641 patent, 6:5—10. Caterpillar’s Opposition
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`presents no support for the legal proposition that the indirect monitoring step excludes the
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`disclosed preferred embodiment of monitoring the distance by proxy, using rotor-exposure
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`measurement. Opp. at 14.
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`Instead, Caterpillar repeatedly accuses Wirtgen of ignoring the factual dispute created by
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`Caterpillar’s assertion that its machines “do not measure the distance between the drum and the
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`ground, as claim 11 requires.” Opp. at 14 (emphasis changed). But the language of claim 11 does
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`not require measuring that distance—it requires indirectly “monitoring” the distance, including
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`monitoring using rotor-exposure measurement. There is, therefore, no dispute of fact as to how
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`Caterpillar’s machines operate. There is only Caterpillar’s belated attorney argument
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`masquerading as a fact dispute, which does not preclude summary judgment of infringement.5
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`b.
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`Caterpillar infringes claims 15, 17, and 186
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`Caterpillar purports to dispute whether the “milling drum [of the Accused Products is]
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`raised a pre-determined amount that is larger than a minimum distance between the milling drum
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`and the ground surface” as required by claim 15.7 Caterpillar alleges that “a pre-determined
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`amount” requires a specific, pre-programmed machine height. SUMF 149–150. This
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`construction finds no support in the intrinsic or extrinsic evidence, and Caterpillar cites none.
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`The patent and claims only require that the milling drum be raised high enough to lift it out of
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`5 Wirtgen’s Opening Brief noted that Caterpillar’s SUMF responses appeared to raise a new (and
`erroneous) claim-construction dispute for “deviation” recited in claim 11. Mot. at 12–13 (citing
`SUMF 146–148). Caterpillar’s Opposition does not pursue this dispute. Wirtgen’s Reply thus
`addresses only the arguments raised in Caterpillar’s Opposition.
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`6 Caterpillar purports to identify limitations missing from claims 11, 15, and 17, but not 18. It
`therefore contests infringement of claim 18 only to the extent that it depends from claims 11, 15
`and 17, for which Caterpillar purports to contest infringement.
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`7 Wirtgen’s Opening Brief noted that Caterpillar’s SUMF responses appeared to raise a new (and
`erroneous) claim-construction dispute for “sensing device takes a lower limit position” in claim
`15. Mot. at 14 (citing SUMF 126–133, 150). Caterpillar’s Opposition does not pursue this
`dispute. Wirtgen’s Reply thus addresses only the arguments raised in Caterpillar’s Opposition.
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`
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`9
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`the milled track in order for the “pre-determined amount” to be larger than a minimum distance
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`between the milling drum and the ground surface. D.I 221-19, ’641 patent, 2:14–15 (raising the
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`milling drum out of the milled cut), 4:44–57 (raising the drum “out of the milled track”), 5:59–67
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`(same), 6:28–34, 8:43–51, D.I. 226-3, ‘641 patent, FIG. 2. Thus, the “pre-determined amount
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`that is larger than a minimum distance between the milling drum and the ground surface” is the
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`minimum height to clear the milled track. A machine that raises the milling drum at least that
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`amount therefore infringes.
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`The Accused Products undisputedly raise the milling drum a predetermined amount
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`before traveling in reverse to lift the rotor, moldboard, and side plates off the ground surface and
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`out of the milled cut. SUMF 126–133, 149. That the operator may “choose in the moment” to
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`continue raising the drum even higher than this predetermined amount does not undo the
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`infringement of first raising the drum the claimed predetermined amount that is larger than a
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`minimum distance between the milling drum and the ground surface. Opp. at 15. The claim does
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`not recite that the milling drum is raised the predetermined amount and no more.
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`Caterpillar argues that its overly narrow interpretation of the term “predetermined
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`amount” is “not a claim construction” because “it simply acknowledges the plain and ordinary
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`meaning of ‘pre-determined,’” which Caterpillar argues is “‘something that’s known ahead of
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`time.’” Opp. at 15. Thus, in one breath, Caterpillar (1) denies that it is arguing claim
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`construction, (2) argues that its proposed claim construction is plain meaning, and (3) proposes a
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`definition for the term. This is a dispute of law, not fact, and it fails for two reasons.
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`First, the Accused Products undisputedly must raise the milling drum enough to lift it out
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`of the milled cut, which is an amount that is known ahead of time and not decided in the
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`moment. Otherwise, the rotor would disengage during reverse travel. Second, the Accused
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`Products also undisputedly have a “pre-service” mode that raises the machine to a specific pre-
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`programmed height at which the machine can travel in reverse with the rotor spinning above
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`ground level. SUMF 149. There is no dispute that Caterpillar’s machines infringe when driven in
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`reverse in pre-service mode. Either way, both the pre-service height and the minimum amount
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`required to lift the drum out of the cut are known “ahead of time.”
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`Finally, Caterpillar contests that the Accused Products practice claim 17, purporting to
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`dispute that the Accused Products’ scraper blade is arranged behind the milling drum when seen
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`in the direction of travel. Opp. at 16. Again, there is no dispute as to where the scraper blade is
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`relative to the milling drum. The only dispute Caterpillar purports to raise is whether “behind”
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`actually means “in front of” when the machine is driving in reverse. This is another baseless
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`claim-construction argument masquerading as a factual dispute. The patent specification is clear
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`what it means when it says “when seen in the direction of travel”: it means relative to the
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`forward direction of travel. The arrangement of parts are defined relative to the direction of
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`travel. This is how the patent itself defines the direction of travel.8 See SUMF 144–145. Dr.
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`Meyer also testified that this is how one of skill in the art would understand conventional
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`designations like “behind” and “the direction of travel.” Id.
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`Like a car, a milling machine is a vehicle. The “front” bumper and “rear” bumper of a car
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`are defined relative to the direction of travel, as are the “front” and “back” seats. When the car
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`drives in reverse, the front bumper does not become the rear bumper and the front seat does not
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`become the back seat in common parlance. Similarly, here, the moldboard is behind the rotor
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`drum relative to the (forward) direction of travel, regardless of whether the machine happens to
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`be operating in reverse at a given moment. No one of skill in the art would interpret the claim in
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`8 The only exception is when the patent is talking about reverse “travel” specifically, and in those
`specific instances, it makes clear that the tracks are rotating in reverse. SUMF 144.
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`the counterintuitive way that Caterpillar proposes, and Caterpillar provides no intrinsic or
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`extrinsic evidence or expert testimony otherwise.
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`c.
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`Caterpillar induces infringement.
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`Caterpillar raises two challenges to the proposition that it induces infringement of the
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`’641 patent. First, it states, with no legal or factual support, that Wirtgen has not shown that
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`operators of the Accused Products ever raised any Accused Product to the service, preservice or
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`pre-scratch positions when driving in reverse. Opp. at 17. Caterpillar’s argument appears to
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`require direct evidence of specific instances of direct infringement, which is simply not required
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`by law. Wirtgen Mot. at 15–16 (collecting cases). Wirtgen submitted ample circumstantial
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`evidence of end-user infringement for claims 11, 15, 17, and 18 here, including the same
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`evidence the ITC and Federal Circuit found adequate to support inducement. SUMF 138.
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`Caterpillar simply ignores all this evidence, and all the cases Wirtgen cites, in its conclusory
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`assertion that Wirtgen failed to show direct infringement. Opp. at 17–18.
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`Second, Caterpillar states that it lacks the requisite intent for inducement because it
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`“maintains a good-faith belief that the accused reverse shut-off feature does not practice the
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`asserted claims.” Opp. at 17. But Caterpillar has pointed to no evidence of this purported good-
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`faith belief. No Caterpillar witness ever testified to it. The mere fact that a Caterpillar fact
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`witnesses testified that Caterpillar’s machines did not “measure” the distance from the drum to
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`the ground is irrelevant—that is not the asserted claim language and the witness never testified as
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`to his or the Company’s subjective beliefs vis-à-vis infringement or invalidity of Wirtgen’s
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`patents. Contra Opp. at 17 (citing Engelmann WS at Q25–Q29). Caterpillar’s attorneys cannot
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`proclaim a good-faith belief of noninfringement—even after the ITC and Federal Circuit found
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`direct infringement and inducement for these same claims—with no basis for that belief. Indeed,
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`all the evidence of record, including Caterpillar’s manuals, expert testimony regarding customer
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`training and instructions, and Caterpillar’s knowledge of the patents supports the requisite intent.
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`SUMF 134–138, 156–161. The words “good-faith belief” are not an incantation that can
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`preclude summary judgment against all evidence of record. Cf. Mot. at 15–16 (collecting cases
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`granting summary judgment of inducement under analogous circumstances).
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`B.
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`Caterpillar’s Invalidity Grounds for the ’530 and ’309 Patents are Estopped
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`Caterpillar states that W