IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 17-770-JDW
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`JURY TRIAL DEMANDED
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`WIRTGEN AMERICA, INC.’S MOTIONS IN LIMINE
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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 1 of 20 PageID #: 29564
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`WIRTGEN AMERICA, INC.
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`Plaintiff/Counterclaim-Defendant,
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`CATERPILLAR INC.
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`v.
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`Defendant/Counterclaim-Plaintiff.
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 2 of 20 PageID #: 29565
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`I.
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`TABLE OF CONTENTS
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`Caterpillar should be precluded from introducing at trial new theories, expert
`opinions, or evidence not previously disclosed. ..................................................................1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Caterpillar should be precluded from eliciting affirmative testimony that
`Caterpillar’s lifting column sensors do not infringe the ’530 patent. ......................1
`
`Caterpillar should be precluded from eliciting affirmative testimony that
`Caterpillar’s 4-sided stability pattern does not infringe the ’309 patent. .................3
`
`Caterpillar should be precluded from introducing a new hypothetical
`negotiation date. .......................................................................................................4
`
`Caterpillar should be precluded from raising new noninfringement
`arguments for the asserted ’972 patent. ...................................................................6
`
`Caterpillar should be precluded from introducing new theories first
`disclosed during the parties’ exchange of pretrial order materials. .........................7
`
`II.
`
`Caterpillar should be precluded from presenting evidence or eliciting testimony
`regarding a purported belief of noninfringement. ................................................................8
`
`III.
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`Caterpillar should be precluded from arguing claim construction to the jury. ....................9
`
`A.
`
`B.
`
`Caterpillar should be precluded from presenting claim construction
`arguments for claims 11 and 15 of the ’641 patent. .................................................9
`
`Caterpillar should be precluded from arguing a claim-construction position
`for the drive engine’s attachment to the frame in the ’268 patent. ........................11
`
`IV.
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`Caterpillar should be precluded from discussing claims and patents not at issue. ............12
`
`A.
`
`B.
`
`C.
`
`Caterpillar should be precluded from introducing evidence of its own
`patents related to milling machines........................................................................12
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`Caterpillar should be precluded from discussing Wirtgen’s ’395 patent. ..............13
`
`Caterpillar should be precluded from discussing the ’628 and ’340 patents. ........14
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`V.
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`Caterpillar should be precluded from presenting statements or findings regarding
`cancelled claims from the PTAB’s Final Written Decision concerning the ’972
`patent. .................................................................................................................................15
`
`VI.
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`CONCLUSION ..................................................................................................................15
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`
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`
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`
`
`ii
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`

`

`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 3 of 20 PageID #: 29566
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Abbott Point of Care, Inc. v. Epocal, Inc.,
`868 F. Supp. 2d 1310 (N.D. Al. 2012) .....................................................................................12
`
`Brooktree Corp. v. Advanced Micro Devices, Inc.,
`977 F.2d 1555 (Fed. Cir. 1992)................................................................................................13
`
`Cordis Corp. v. Bos. Sci. Corp.,
`561 F.3d 1319 (Fed. Cir. 2009)..................................................................................................9
`
`Enodis Corp. v. Emps. Ins. Co. of Wausau,
`No. CV 03-866-CAS, 2008 WL 11338033 (C.D. Cal. Nov. 26, 2008) .....................................1
`
`EZ Dock, Inc. v. Schafer Sys., Inc.,
`No. CIV.98-2364(RHK/AJB), 2003 WL 1610781 (D. Minn. Mar. 8, 2003) ..........................12
`
`Hazani v. ITC,
`126 F.3d 1473 (Fed. Cir. 1997)..................................................................................................1
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)................................................................................................12
`
`ICU Med., Inc., v. RyMed Techs., Inc.,
`752 F. Supp. 2d 486 (D. Del. 2010) .............................................................................13, 14, 15
`
`Johns Hopkins Univ. v. Alcon Lab’ys Inc.,
`No. 15-525-LPS-SRF, D.I. 406 (D. Del. 2018) .........................................................................1
`
`Luce v. United States,
`469 U.S. 38 (1984) .....................................................................................................................1
`
`Ne. Sav., F.A. v. United States,
`No. 92-550C, 2007 WL 5177410 (Fed. Cl. Feb. 8, 2007) .........................................................1
`
`O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)............................................................................................9, 10
`
`Paone v. Microsoft Corp.,
`No. 07-CV- 2973 (ADS), 2013 WL 4048503 (E.D.N.Y. Aug. 9, 2013) .................................12
`
`PersonalWeb Techs. LLC v. IBM,
`No. 16-cv-01266-EJD, 2017 U.S. Dist. LEXIS 117273 (N.D. Cal. July 26,
`2017) ........................................................................................................................................14
`
`Sanitary Refrigerator Co. v. Winters,
`280 U.S. 30 (1929) ...................................................................................................................13
`
`iii
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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 4 of 20 PageID #: 29567
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`
`
`Sentient Sensors, LLC v. Cypress Semiconductor Corp.,
`No. 19-1868 (MN), 2021 WL 1966406 (D. Del. May 17, 2021) ........................................9, 10
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016)..................................................................................................9
`
`Xodus Med., Inc. v. Prime Med. LLC.,
`No. 3:18-cv-413-JPM, 2022 WL 407090 (E.D. Tenn. Feb. 9, 2022) ......................................13
`
`Other Authorities
`
`Fed. R. Civ. P. 26(a)(2)(B)(i) ...........................................................................................................1
`
`Fed. R. Civ. P. 37(c)(1) ................................................................................................................1, 6
`
`Fed. R. Evid. 403 .....................................................................................................................13, 15
`
`Fed. R. Evid. 404(a)(1) ..................................................................................................................14
`
`
`
`
`iv
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 5 of 20 PageID #: 29568
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`Motions in limine allow the court “to exclude anticipated prejudicial evidence before the
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`evidence is actually offered.” Luce v. United States, 469 U.S. 38, 40 n.2 (1984). “The purpose of
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`an in limine motion is to aid the trial process by enabling the Court to rule in advance of trial on
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`the relevance of certain forecasted evidence, as to issues that are definitely set for trial, without
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`lengthy argument at, or interruption of, the trial.” Johns Hopkins Univ. v. Alcon Lab’ys Inc., No.
`
`1:15-cv-00525-LFS-SRF, D.I. 406 at 1–2 (D. Del. Aug. 30, 2018).
`
`I.
`
`Caterpillar should be precluded from introducing at trial new theories, expert opinions,
`or evidence not previously disclosed.
`
`Untimely submitted evidence and argument is generally inadmissible and will not be
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`considered. Hazani v. ITC, 126 F.3d 1473, 1476–77 (Fed. Cir. 1997) (affirming trial judge’s
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`refusal to consider untimely evidence); Enodis Corp. v. Emps. Ins. Co. of Wausau, No. CV 03-
`
`866 CAS (PJWx), 2008 WL 11338033, at *1 (C.D. Cal. Nov. 26, 2008) (“The Court will not
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`permit the introduction of evidence that was not produced in discovery.”). These rules against
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`previously undisclosed theories and evidence are designed “to prevent trial by ambush.” Ne.
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`Sav., F.A. v. United States, No. 92-550C, 2007 WL 5177410, at *3 (Fed. Cl. Feb. 8, 2007). For
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`instance, Rule 26(a) requires that an expert report contain “a complete statement of all opinions
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`the witness will express and the basis and reasons for them.” Fed. R. Civ. P. 26(a)(2)(B)(i). “If a
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`party fails to provide information . . . as required by Rule 26(a) . . . the party is not allowed to use
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`that information . . . at a trial.” Fed. R. Civ. P. 37(c)(1).
`
`A.
`
`Caterpillar should be precluded from eliciting affirmative testimony that
`Caterpillar’s lifting column sensors do not infringe the ’530 patent.
`
`Wirtgen’s expert, Dr. Lumkes, opines 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]. D.I. 212-4 at SUMF 41. Dr. Lumkes’s opinion is based on documentary evidence
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`and inspection of the accused machines and is supported by testimony from Caterpillar’s own
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`1
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 6 of 20 PageID #: 29569
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`
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`witnesses regarding the structure and function of the magnetostrictive sensors. Id. at SUMF 42–
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`46, 55, 56. Specifically, Caterpillar’s magnetostrictive sensors (pictured below) include a sensor
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`transducer (5) and a sensor magnet (4). Id. at SUMF 42–44, 46. Wirtgen’s position throughout
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`this case has been that the sensor transducer and magnet form the lifting position sensor and
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`work together to determine the machine position. Id. at SUMF 46.
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`
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`In response, Caterpillar’s position has been, consistently, that because “[e]ach lifting
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`position sensor is coupled to two or more components within its respective lifting column,” there
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`must be two attachment points where the sensor is coupled to the lifting column. Id. at SUMF 41.
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`But Caterpillar has never affirmatively argued that the accused machines lack two attachment
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`points. Rather, its position is that its parts manual is ambiguous in its depiction of the second
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`attachment point. Id. at SUMF 49; see also id. at SUMF 41, 47. In the Rakow-Sorini report,
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`Caterpillar’s experts dispute that the Accused Products infringe the asserted claims of the ’530
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`patent solely on the basis that Wirtgen’s expert, Dr. Lumkes, has purportedly failed to show that
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`the magnet relied upon for infringement is part of the accused sensor. Importantly, neither
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`Caterpillar expert opines nor presents evidence that the magnet is not part of the sensor. Rather,
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`they testified, repeatedly, only that they could not tell one way or the other whether the magnet
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`was part of the sensor and how it was connected.
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`Specifically, Dr. Rakow neither agreed nor disagreed with Dr. Lumkes on this point. Id.
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`at SUMF 48–49. Rather, Dr. Rakow testified only that he could not tell “from the evidence
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`‘available to him’” whether or not there was a second attachment point, and opined that Wirtgen
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`2
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 7 of 20 PageID #: 29570
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`therefore did not meet its evidentiary burden. Id. Dr. Rakow did not affirmatively opine that
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`Caterpillar’s magnetostrictive sensor lacked a second attachment point within the lifting column.
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`Id. at SUMF 48. Dr. Rakow did not review the testimony of Mr. Engelmann, Caterpillar’s
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`engineering manager, describing the configuration of the sensor magnet and the cylinder’s
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`movable rod, and did not ask Mr. Engelmann for details about how Caterpillar’s
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`magnetostrictive sensors were configured. Id. at SUMF 51. He also chose not to inspect an
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`accused machine for himself to see whether there was a second point of attachment. Id.
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`Caterpillar and its experts should therefore be limited at trial to presenting a
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`noninfringement case that relies solely on an alleged failure of proof, based on their inability to
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`conclude one way or the other whether the magnet is part of the sensor and how it is attached to
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`the lifting column. Caterpillar should not be allowed to introduce, for the first time, any
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`affirmative opinion or evidence that the magnet is not part of the sensor, or that the sensor does
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`not have two attachment points.
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`B.
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`Caterpillar should be precluded from eliciting affirmative testimony that
`Caterpillar’s 4-sided stability pattern does not infringe the ’309 patent.
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`The parties’ dispute over infringement of the ’309 patent turns on whether the four-sided
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`stability pattern of the Accused Products is one “in which the widest transverse dimension falls
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`within the milling rotor footprint,” as claimed. Wirtgen’s expert, Dr. Lumkes, opines that the
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`Accused Products satisfy the claims based on Caterpillar’s own technical diagrams. Caterpillar
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`has never introduced any affirmative evidence or expert opinion that the widest transverse
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`dimension does not fall within the milling rotor footprint. Instead, Caterpillar’s position has
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`consistently been to challenge the authenticity of the demonstrative in Dr. Lumkes’s expert
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`report, which shows how the Accused Products meet the limitation. D.I. 239, Opp. at 8.
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`3
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 8 of 20 PageID #: 29571
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`Specifically, Dr. Lumkes relies on a CAD file of the Accused Products that Caterpillar
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`produced and authenticated. D.I. 212-4 at SUMF 111–114. Dr. Lumkes created a demonstrative
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`from this CAD file to show the widest transverse dimension of the 4-sided stability pattern and
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`concluded that it fell within the footprint of the milling drum. Id. at SUMF 111–112. Caterpillar
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`faults Dr. Lumkes for not personally authenticating Caterpillar’s CAD drawing or knowing the
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`educational background of the person who applied his annotations for him. D.I. 239, Opp. at 9.
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`Caterpillar has also argued that even if the annotated CAD file image is a true and accurate
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`representation of the Accused Products, Dr. Lumkes failed to provide references, calculations or
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`analyses to support his opinions regarding the four-sided stability pattern. Id. at 11.
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`Once again, this is entirely a failure-of-proof argument. It does not purport to supply any
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`affirmative evidence or expert opinion that the CAD file is not accurate, or that it shows that the
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`asserted claim is not satisfied. See D.I. 240-2, Yen Dec. Ex. 23 ¶¶ 69–75. Caterpillar and its
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`experts should therefore be limited at trial to presenting a noninfringement case limited to an
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`alleged failure of proof, based on a lack of authentication or credibility of the evidence
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`underlying Dr. Lumkes’s opinion. Caterpillar should not be allowed to introduce, for the first
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`time, any affirmative opinion or evidence that the evidence cited shows something other than
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`what Dr. Lumkes’s opines that it shows, or that the limitation is not satisfied.
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`C.
`
`Caterpillar should be precluded from introducing a new hypothetical
`negotiation date.
`
`Wirtgen moves to prevent Caterpillar from (i) introducing through fact witness testimony,
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`expert witness testimony, or attorney questioning or argument a date of first infringement that is
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`earlier than the 2016 date it gave during fact discovery or (ii) offering expert witness testimony
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`that applies a hypothetical negotiation date earlier than the 2016 date given during fact
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`discovery. Specifically, during fact discovery, Wirtgen requested in Interrogatory No. 20 that
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`4
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 9 of 20 PageID #: 29572
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`CAT provide the date of manufacture and sale for each of the Accused Products, including in
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`particular the date of manufacture and sale for any prototype. Interrogatory No. 20 states:
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`Separately, for each of the Accused Caterpillar Products, set forth, describe, and
`identify each build (e.g., O1A, O2A, O2A-B, O2B, O2B-2), prototype, make, and
`model for the Accused Caterpillar Products, and for each build, prototype, make,
`and model, set forth, describe, and identify the dates of manufacture of, the dates
`of sales and offers for sales of, product identifiers for, and serial numbers for, the
`foregoing.
`
`D.I. 226-56, Interrogatory No. 20. In its response, CAT provided the below table.
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`Build
`01A
`
`Description
`Initial build
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`02A
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`02B
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`Ride control feature removed in
`running change during 02A
`production
`Ride control feature removed
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`Leg position sensors removed
`(For PM620/622/820/822/825)
`
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`Id. at Response to Interrogatory No. 20.
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`First Shipment Date
`May 2016 (PM620/622)
`December 2017 (PM820/822/825)
`May 2018 (PM310/312/313)
`June 2019 (PM310/312/313)
`June 2019 (PM620/622)
`July 2019 (PM820/822/825)
`November 2019 (PM310/312/313)
`November 2020 (PM620/622/820/822/825)
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`Thus, the earliest date Caterpillar provided was May 2016. Wirtgen’s damages expert
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`relied on this date in performing her damages analysis. Then, during expert discovery, an
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`employee at Caterpillar apparently informed Caterpillar’s damages expert that there was actually
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`a prototype that was manufactured and shipped earlier than 2016. See Ex. A, Reed Rebuttal Rep.
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`at 66, n.122–23. For example, Caterpillar’s damages expert states in footnote 122: “The PM6xx
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`prototype was built in Italy in early 2014 and was shipped to the U.S. in mid-2014. . . . I
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`understand the prototype had the accused functionality. . . . The serial number for the prototype
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`was JFC00100 (CAT0099697 at 704), the first of the 01A build of the PM6xx. This was
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`confirmed in a conversation with Mr. Eric Engelmann.” Id. at n.122.
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`5
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 10 of 20 PageID #: 29573
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`Caterpillar’s damages expert applied 2014 as the hypothetical negotiation date in
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`performing his damages analysis. See, e.g., Ex. B, Reed Dep. Tr. at 114:6–10, Aug. 11, 2023
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`(“Q. The—the date that you used for your hypothetical negotiation for Wirtgen’s asserted patent
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`was 2014; correct? A. Mid 2014, yeah, based on the date of first infringement of the—of an
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`accused product.”); see also Ex. A, Reed Rebuttal Rep. at 30 (“At the hypothetical negotiation in
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`mid-2014 . . .”). He confirmed that he used this date because he was relying on the 2014
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`manufacture/shipment dates told to him by a Caterpillar employee—dates that were requested
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`but not disclosed by Caterpillar during fact discovery. See Ex. B at 115:9–116:20. He also
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`acknowledged that if the hypothetical negotiation date is 2016 and not 2014, that would result in
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`a higher reasonable royalty amount for at least some of the asserted patents, although he
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`conceded that he had not calculated what that higher amount would be. See id. at 146:10–147:8.
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`Caterpillar cannot choose to withhold during fact discovery the requested first
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`manufacture date for prototypes and provide a false first shipment date, and then spring an earlier
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`date on Wirtgen later (during expert discovery or at trial) to argue that the hypothetical
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`negotiation date should have been earlier than the earliest date that Caterpillar gave in its
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`interrogatory response (May 2016). See, e.g., Fed. R. Civ. P. 37(c)(1). Caterpillar should be
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`precluded from introducing or suggesting a date of first infringement through fact witness
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`testimony, expert witness testimony, or attorney questioning or argument that is earlier than the
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`May 2016 date it gave during fact discovery. Caterpillar should be similarly precluded from
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`offering expert witness testimony that applies a 2014 hypothetical negotiation date.
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`D.
`
`Caterpillar should be precluded from raising new noninfringement arguments
`for the asserted ’972 patent.
`
`Caterpillar’s noninfringement position for the ’972 patent relied upon an improperly
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`narrow claim interpretation for the term “only when.” Specifically, asserted Claim 13 requires
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`6
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 11 of 20 PageID #: 29574
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`that the controller establish “the parallel orientation of the machine frame relative to the ground
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`surface only when the controller performs a readjustment of the milling depth of the milling
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`roller or a setting of a predefinable milling depth.” D.I. 226-5 at 13:14–19 (emphasis added). In
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`its summary judgment motion, Caterpillar argued that its Accused Products did not infringe
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`claim 13 because the controller in Caterpillar’s machines establishes parallel orientation during a
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`feature called “creep to inclination” or “pitch hold.” Caterpillar argues that establishing parallel
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`orientation during this time is not “during” the two conditions specified in the claim.
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`The Court rejected Caterpillar’s argument, finding that “only when” does not mean
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`“during” as Caterpillar urged. D.I. 272 at 14. Instead, the Court agreed with Wirtgen’s
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`interpretation of the phrase to mean “in the event that.” Id. The Court noted that Wirtgen’s
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`expert, Dr. Lumkes, opines that the controller on the Accused Machines performs a
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`“readjustment of the milling depth of the milling roller or a setting of a predefinable milling
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`depth . . . only after a milling adjustment,” which could support of finding of infringement. Id.
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`Caterpillar’s expert report lacks any affirmative argument that parallel adjustment does
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`not occur only after a milling depth adjustment. See Ex. C, Smith Rebuttal Rep. ¶¶ 161–167.
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`Caterpillar presented no evidence of parallel adjustment under any other conditions. D.I. 212-4 at
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`SUMF 83. Indeed, Caterpillar has never argued or submitted any evidence that the Accused
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`Products do not infringe under Wirtgen’s claim construction (which the Court has now adopted).
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`Caterpillar should be precluded from introducing any new positions or evidence at trial disputing
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`that parallel adjustment occurs only after a milling depth adjustment in the accused products.
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`E.
`
`Caterpillar should be precluded from introducing new theories first disclosed
`during the parties’ exchange of pretrial order materials.
`
`On January 17, Caterpillar served its statements of facts and law that remain to be
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`litigated and statement of intended proofs. Those documents contain references to arguments that
`
`7
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 12 of 20 PageID #: 29575
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`
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`(i) Wirtgen America is collaterally estopped from arguing that claims 10 and 29 of the ’309
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`patent are valid and (ii) Wirtgen America’s claims of infringement of the ’530 patent are barred
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`under the intervening rights doctrine. These arguments—in addition to being meritless—are
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`completely new. They appear nowhere in Caterpillar’s discovery responses, expert reports, or
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`briefing. Caterpillar should therefore be precluded from presenting these arguments at trial.
`
`II.
`
`Caterpillar should be precluded from presenting evidence or eliciting testimony
`regarding a purported belief of noninfringement.
`
`Caterpillar’s summary judgment briefing appeared to invoke a defense to willfulness or
`
`inducement of at least the ’641 patent based on a purported reasonable belief of noninfringement.
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`See D.I. 239 at 17. Caterpillar alleged evidence of this reasonable belief in Mr. Engelmann’s
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`testimony. Id. Caterpillar had never previously advanced such a position or elicited any
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`testimony to that effect. In response, Wirtgen filed a motion to compel Caterpillar to produce any
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`evidence it had in support of such a defense. D.I. 271. The Court heard argument on January 5,
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`2024, and ruled that the motion to compel was denied. D.I. 280.
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`In doing so, the Court explained:
`
`During his deposition, Mr. Engelmann testified that while Caterpillar relied on its
`lawyers to form its non-infringement belief, Mr. Engelmann’s own views of non-
`infringement were not based on the advice of counsel. He only offered his
`personal views when pressed and in response to a question that instructed him to
`set aside advice of counsel and to share his own views. Therefore, Caterpillar
`hasn’t put the advice of its counsel at issue.
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`D.I. 280. In other words, Mr. Engelmann’s personal views are not relevant to Caterpillar’s
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`beliefs as a company, and therefore are not relevant to any legal defense to willfulness or
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`inducement. Nor has Caterpillar put the advice of its counsel (on which Caterpillar’s beliefs as a
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`company rely) at issue in this case. Caterpillar should therefore be precluded from eliciting any
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`testimony at trial regarding any individual’s personal views of noninfringement (which are not
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`irrelevant) or Caterpillar’s beliefs (which Caterpillar has withheld as privileged).
`
`8
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`

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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 13 of 20 PageID #: 29576
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`Finally, to the extent Caterpillar intends to present evidence of litigation-inspired
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`positions it has taken in other proceedings, like the ITC, Customs and Border Patrol (CBP), or
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`PTAB, such evidence is not relevant to willfulness and should be excluded. See, e.g., WBIP, LLC
`
`v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016) (“Proof of an objectively reasonable
`
`litigation-inspired defense to infringement is no longer a defense to willful infringement.”). This
`
`includes Caterpillar’s communications with CBP and CBP decisions. See, e.g., DTX4610;
`
`DTX4611; DTX4613; DTX4614.1 Evidence of Caterpillar’s past litigation positions have no
`
`relevance to the issues in this litigation, and will serve only to distract the jury from the
`
`infringement questions presented and the evidence of record.
`
`III. Caterpillar should be precluded from arguing claim construction to the jury.
`
`It is improper for parties to argue claim construction to the jury. See O2 Micro Int’l Ltd.
`
`v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008); Cordis Corp. v. Bos. Sci.
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`Corp., 561 F.3d 1319, 1337 (Fed. Cir. 2009) (“it is improper to argue claim construction to the
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`jury”). That is true even where the court has not found it necessary to construe a claim term. See
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`Sentient Sensors, LLC v. Cypress Semiconductor Corp., No. 19-1868- MN, 2021 WL 1966406,
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`at *1 (D. Del. May 17, 2021). Under such circumstances, the parties must compare the claims as
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`construed to the accused products without reading additional requirements into the language of
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`those claims or deviating from the plain meaning embraced by the court’s prior orders. Id.
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`A.
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`Caterpillar should be precluded from presenting claim construction arguments
`for claims 11 and 15 of the ’641 patent.
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`Caterpillar’s expert Dr. Klopp purports to advance three claim construction arguments in
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`the context of his noninfringement opinions for the ’641 patent. While the parties discussed these
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`claim construction arguments in summary judgment briefing, see, e.g., D.I. 212-5, Wirtgen MSJ
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`1 All DTX citations reflect the exhibit numbering used in Caterpillar’s Exhibit List for trial.
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`9
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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 14 of 20 PageID #: 29577
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`at 12–14, the Court did not find it necessary to formally construe the terms. See D.I. 272 at 10–
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`11 (discussing claims 11 and 15). Caterpillar should not be permitted to argue these claim
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`construction positions to the jury under O2 Micro and Sentient Sensors.
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`First, despite the parties agreeing that “deviation,” in claim 11 means, “a change,
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`difference or departure,” Dr. Klopp suggests that “deviation” requires measuring units of length.
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`D.I. 212-4 at SUMF 146. This argument was not advanced during Markman and improperly
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`exceeds the plain meaning of the term. It first appeared in Dr. Klopp’s Rebuttal Report. Id. at
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`SUMF 147–148. Dr. Klopp should not be permitted to argue this definition to the jury.
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`Second, Dr. Klopp alleges that the language in claim 15 that “the milling drum (12) is
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`raised by a pre-determined amount” requires a specific, pre-programmed machine height. Id. at
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`SUMF 149–150. This construction finds no support in the intrinsic or extrinsic evidence because
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`the patent and claims only require that the milling drum be raised, for example, out of the milled
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`track. D.I. 226-3, ’641 patent, 2:14–15 (describing raising the milling drum out of the milled
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`cut), 4:44–57 (describing raising the milling drum “out of the milled track”), 5:59–67 (describing
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`the milling drum and scraper blade in a raised position outside of the milled track), 6:28–34,
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`8:43–51, FIG. 2. For the reverse travel shutoff feature, the machine is undisputedly raised a
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`certain amount before traveling in reverse to lift the rotor, moldboard, and side plates off the
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`ground surface and out of the cut. D.I. 212-4 at SUMF 126–133, 149. Caterpillar’s manuals
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`specify, “[w]hen the machine is moving in reverse and the rotor is running, raise the rotor to
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`clear all the obstacles.” D.I. 230-17 at 2074; D.I. 221-3 at 9834. Dr. Klopp should thus be
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`precluded from telling the jury that the words of the claim require something that they do not.
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`Third, Dr. Klopp alleges that the language in claim 15 that “a sensing device . . . takes a
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`lower limit position which corresponds to a predetermined distance or to a minimum distance to
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`be maintained between the milling drum (12) and the ground surface (2)” requires a specific
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`10
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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 15 of 20 PageID #: 29578
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`position for the sensing device that corresponds to a measured distance. There is no support in
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`the intrinsic or extrinsic evidence for such a requirement. D.I. 226-3, ’641 patent, 3:20–45
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`(describing the sensing device “that is capable of being lowered relative to the milling drum”),
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`3:49–50 (describing determining the lowest position of the sensing device), 5:59–67, 6:5–10,
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`6:18–34, FIG. 2. Dr. Klopp should be precluded from telling the jury otherwise.
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`B.
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`Caterpillar should be precluded from arguing a claim-construction position for
`the drive engine’s attachment to the frame in the ’268 patent.
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`The claims of the ’268 patent require “[a] construction machine, comprising” a first
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`subset that includes a drive engine, that “is attached to the machine frame elastically with a lower
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`spring stiffness so that transmission of vibrations to the machine frame is reduced[.]” D.I. 226-6,
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`’268 patent, claim 14. The plain and ordinary meaning of “attached to” does not require a
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`uniform and exclusive means of attachment or support. The claim thus requires at least one
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`attachment between the engine and the frame, which is elastic with a lower spring stiffness
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`compared to the second subset (i.e., the rigidly mounted pump drive, clutch, and drive pulley).
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`Caterpillar’s expert Dr. Klopp, however, proposes a far narrower claim construction for
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`the term. Dr. Klopp opines that the Accused Products do not infringe because the claims require
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`that the first subset or drive engine is “uniformly” attached to or supported at the machine frame
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`directly by elastic spring/damping elements. See Ex. D, Klopp Rebuttal Rep., ¶¶ 145, 149–151.
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`In other words, Dr. Klopp argues that all the attachments between the first subset and the frame
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`must be direct connections between the first subset and the frame. But nothing in the claim
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`language itself requires the drive engine to be uniformly attached to or supported at the machine
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`frame elastically. Nor does the claim require that all engine attachments must be to the frame.
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`This is a claim construction argument that imports limitations into the term “attached.”
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`11
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`Case 1:17-cv-00770-JDW Document 287 Filed 01/19/24 Page 16 of 20 PageID #: 29579
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`Even if exemplary embodiments described in the specification have drive engines
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`uniformly “attached to” the machine frame elastically with a lower spring stiffness, it would
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`violate basic canons of claim construction to import that disclosure as a limitation of the claims.
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`See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372–73 (Fed. Cir. 2014). Dr. Klopp
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`should not be permitted to argue to the jury that the claim has this requirement (or that the
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`Accused Products do not infringe because their engines are not uniformly attached to the frame)
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`because it is an improper and unsupported claim-construction argument.
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`IV.
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`Caterpillar should be precluded from discussing claims and patents not at issue.
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`This case involves