Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 1 of 17 PageID #: 29604
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff,
`
`v.
`
`CATERPILLAR INC.,
`
`Defendant.
`
`CATERPILLAR INC.’S OMNIBUS BRIEF
`IN SUPPORT OF ITS MOTIONS IN LIMINE
`
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 493-9300
`
`Lucy Yen
`Cassie Leigh Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Telephone: (212) 999-5800
`
`Dated: January 19, 2024
`11279922 /11898.00005
`
`

`

`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 2 of 17 PageID #: 29605
`
`TABLE OF CONTENTS
`
`MIL No. 1: Limiting Wirtgen GmbH-Related Evidence ......................................... - 1 -
`
`INTRODUCTION .......................................................................................................... - 1 -
`
`BACKGROUND ............................................................................................................ - 1 -
`
`ARGUMENT .................................................................................................................. - 3 -
`I.
`Wirtgen America Should Be Bound by Corporate Testimony, and
`Evidence About Wirtgen GmbH’s Development Efforts Must Be
`Limited to Avoid Confusion and Prejudice ............................................ - 3 -
`
`II.
`
`Günter Hähn Should Be Precluded from Testifying Outside the Scope of
`the Parties’ Agreement ............................................................................ - 5 -
`CONCLUSION ............................................................................................................... - 6 -
`
`MIL No. 2: Limiting ITC-Related Evidence ............................................................. - 6 -
`
`INTRODUCTION .......................................................................................................... - 6 -
`
`BACKGROUND ............................................................................................................ - 7 -
`
`ARGUMENT .................................................................................................................. - 7 -
`
`MIL No. 3: Precluding Unsubstantiated Allegations of Tip Overs ....................... - 11 -
`
`INTRODUCTION ........................................................................................................ - 11 -
`
`BACKGROUND .......................................................................................................... - 11 -
`
`ARGUMENT ................................................................................................................ - 12 -
`
`

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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 3 of 17 PageID #: 29606
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`No. 2:10-cv-248, 2011 WL 7036048 (E.D. Va. July 5, 2011)...............................................8, 9
`
`Bio-Tech. Gen. Corp. v. Genentech, Inc.,
`80 F.3d 1553 (Fed. Cir. 1996)....................................................................................................8
`
`Caterpillar Prodotti Stradali S.R.L. v. ITC,
`847 F. App’x 893 (Fed. Cir. 2021) ............................................................................................7
`
`Certain Road Milling Machines and Components Thereof,
`ITC-337-TA-1067 ......................................................................................................................6
`
`Checkpoint Sys., Inc. v. All-Tag Sec. S.A.,
`No. CIV. A. 01-CV-2223, 2007 WL 4730861 (E.D. Pa. Jan. 31, 2007) .................................10
`
`Crawford v. George & Lynch, Inc.,
`19 F. Supp. 3d 546 (D. Del. 2013) .........................................................................................4, 5
`
`HTC Corp. v. Tech. Properties Ltd.,
`No. 5:08-cv-00882-PSG, 2013 WL 4782598 (N.D. Cal. Sept. 6, 2013) .............................9, 10
`
`QBE Ins. Corp. v. Jorda Enters.,
`277 F.R.D. 676 (S.D. Fla. 2012) ............................................................................................4, 5
`
`Realtek Semiconductor Corp. v. LSI Corp.,
`No. C-12-03451-RMW, 2014 WL 46997 (N.D. Cal. Jan. 6, 2014) ..........................................8
`
`San Joaquin Valley Ins. Auth. v. Gallagher Ben. Servs.,
`No. 1:17-cv-00861-EPG, 2020 U.S. Dist. LEXIS 20557 (E.D. Cal. Feb. 6, 2020)...................6
`
`Tex. Instruments, Inc. v. Cypress Semiconductor Corp.,
`90 F.3d 1558 (Fed. Cir. 1996)....................................................................................................8
`
`Trinidad v. Moore,
`Civil Action No. 2:15-cv-323-WHA, 2016 U.S. Dist. LEXIS 130997
`(M.D. Ala. Sep. 26, 2016) ..........................................................................................................6
`
`STATUTES
`
`ITC ADMINISTRATIVE LAW ..............................................................................................................7
`
`- 2 -
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`

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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 4 of 17 PageID #: 29607
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`RULES
`
`FED. R. EVID. 401 .............................................................................................................................1
`
`FED. R. EVID. 403 ...............................................................................................................7, 8, 9, 11
`
`Fed. R. Civ. P. 30(b)(6)............................................................................................................ 1, 4-5
`
`- 3 -
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`

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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 5 of 17 PageID #: 29608
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`Defendant Caterpillar Inc. (“Caterpillar”) submits this omnibus brief in support of its
`
`Motions in Limine (“MILs”).
`
`MIL No. 1: Limiting Wirtgen GmbH-Related Evidence
`
`INTRODUCTION
`
`Wirtgen America has made clear that Wirtgen GmbH is a distinct entity whose employees,
`
`activities, and files should be shielded from this litigation. For that reason and others, Wirtgen
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`America witnesses should be precluded from testifying about Wirtgen GmbH’s development and
`
`manufacturing efforts, where that testimony would lack foundation coming from Wirtgen America
`
`witnesses (who are not involved in development and who provided no relevant information during
`
`their Rule 30(b)(6) testimony), and be confusing to the jurors and prejudicial to Caterpillar. If
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`Wirtgen America wanted to present admissible testimony about the development of patents and
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`Wirtgen-branded machines, they could have done so through the timely identification of Wirtgen
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`GmbH witnesses (which they failed to do). Instead, Wirtgen America disclaimed knowledge about
`
`the Asserted Patents, belatedly identified Wirtgen GmbH employee, Günter Hähn—an inventor of
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`a subset of the Asserted Patents—and then agreed that his testimony would be severely limited.
`
`See D.I. 196. Any testimony from Wirtgen America witnesses or Dr. Hähn about Wirtgen GmbH’s
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`research and development (“R&D”) efforts, development and manufacturing of Wirtgen-branded
`
`machines, and IP strategies would thus be confusing and prejudicial and should be precluded. FED.
`
`R. EVID. 401-03.
`
`BACKGROUND
`
`Wirtgen America is a Nashville-based corporation and is the only plaintiff in this action.
`
`In Wirtgen America’s own words, “Wirtgen America did not engage or participate in, nor has it
`
`engaged or participated in the development of the subject matter of Wirtgen America’s asserted
`
`patents” or “the design, development, or testing of any Wirtgen America products” that allegedly
`
`

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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 6 of 17 PageID #: 29609
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`embody the patented technology. See, e.g., Ex. 11 (Wirtgen America’s Rspns. to RFPs at Nos. 3,
`
`4). Wirtgen GmbH, on the other hand, is a German entity who is not a party here.
`
`Notwithstanding that Wirtgen GmbH develops and manufactures products that purportedly
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`practice the Asserted Patents and is knowledgeable about the claimed inventions, manufacturing
`
`processes, and competition with Caterpillar, Wirtgen America’s goal was clear: use the fact that
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`Wirtgen GmbH is a separate entity as a shield to avoid providing relevant discovery.
`
`Wirtgen America and Wirtgen GmbH went to great lengths to accomplish that goal. On
`
`the eve of litigation, Wirtgen GmbH assigned thirteen patents to Wirtgen America for assertion
`
`against Caterpillar. Ex. 2 (3/31/23 McEvoy Dep. Tr.) at 77:20-78:11, 80:20-81:2. Thereafter,
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`Wirtgen America claimed that it was unable to collect responsive documents from Wirtgen GmbH
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`and refused to offer relevant witnesses from Wirtgen GmbH for deposition. D.I. 189. Wirtgen
`
`America repeatedly disclaimed reliance on the inventors of the Asserted Patents. See, e.g., D.I.
`
`189-3, 189-4 (failing to identify inventors in Initial Disclosures served in October 2021 and First
`
`Amended Initial Disclosures served in February 2023). Wirtgen America also refused to
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`systematically collect the inventors’ ESI, and instead produced to Caterpillar only a scattershot of
`
`self-serving documents. D.I. 189-5 (2/10/22 letter from Wirtgen America counsel re: search terms
`
`and custodians).
`
`Wirtgen America designated its own Vice-President, Mr. Schmidt, as its corporate witness
`
`for topics relating to the development, conception, and reduction to practice of the Asserted
`
`Patents. Ex. 3 (3/29/23 Schmidt Dep.) at 33:22-34:7; see also D.I. 189 at 4-5. Despite having the
`
`means to do so, Mr. Schmidt did not speak with any of the inventors of the Asserted Patents and
`
`1 “Ex.” refers to the exhibits attached to the Declaration of Lucy Yen filed herewith in
`support of Caterpillar’s omnibus brief.
`
`- 2 -
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`

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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 7 of 17 PageID #: 29610
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`did not even know who some of them were. Ex. 3 (3/29/23 Schmidt Dep.) at 41:4-7, 68:12-69:15,
`
`91:1-8. As a result, he did not have any information on how the patents or claims were conceived
`
`despite being specifically designated to testify on the topic. Id. at 41:8-13, 47:20-49:16, 69:16-
`
`70:4, 84:13-85:8, 86:8-17, 88:21-89:14; 109:16-21. Nor did he know the facts and circumstances
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`surrounding their reduction to practice. Id. at 53:2-9, 65:11-17; 100:9-12. Mr. Schmidt admitted
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`that Wirtgen America itself has no knowledge of product development or the conception and
`
`reduction-to-practice of the Asserted Patents. See id. Mr. Schmidt confirmed that Wirtgen
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`America does not design or engineer products. Id. at 38:10-39:14; see also Ex. 2 (3/31/23 McEvoy
`
`Dep.) at 31:6-8, 32:6-8, 32:18-20. He mistakenly testified that Wirtgen America filed the
`
`applications for the Asserted Patents, but later testified that he “wouldn’t know” who filed the
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`applications (the applications were, in fact, filed by Wirtgen GmbH). Ex. 3 (3/29/23 Schmidt
`
`Dep.) at 40:5-12.
`
`After fact discovery closed, Wirtgen America attempted to amend its Initial Disclosure to
`
`add two of the seven inventors of the patents-in-suit—Dr. Hähn and Christian Berning. D.I. 189-
`
`6. To address the resulting prejudice, Caterpillar filed a motion to exclude inventor discovery (D.I.
`
`189), and the Court ordered Wirtgen America to either remove the belatedly-identified inventors
`
`or provide agreed-upon discovery. See D.I. 191. The parties ultimately filed a joint stipulation in
`
`which Wirtgen America agreed to remove Mr. Berning from its Initial Disclosures and to limit Dr.
`
`Hähn’s anticipated testimony to “Wirtgen GmbH’s patent protection policies as well as written
`
`communications with Caterpillar regarding Wirtgen America’s patents.” D.I. 196.
`
`ARGUMENT
`
`I.
`
`Wirtgen America Should Be Bound by Corporate Testimony, and Evidence About
`Wirtgen GmbH’s Development Efforts Must Be Limited to Avoid Confusion and
`Prejudice
`
`- 3 -
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`

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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 8 of 17 PageID #: 29611
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`Given Wirtgen America’s strategic choice to disassociate itself from Wirtgen GmbH, any
`
`conflation of the two at trial would be confusing to the jurors and prejudicial to Caterpillar.
`
`Wirtgen America intentionally filed this case as the sole plaintiff, receiving assignment of the
`
`patents on the eve of filing so Wirtgen GmbH would not need to be named as a party to the action.
`
`Ever since, the two companies have made every effort to distinguish themselves. Wirtgen America
`
`witnesses disclaimed knowledge of Wirtgen GmbH activities, 30(b)(6) deponents made no effort
`
`to consult Wirtgen GmbH on designated topics, and Plaintiff refused to produce relevant discovery
`
`that was in the custody of Wirtgen GmbH. Having made the deliberate decision to erect a wall
`
`between Wirtgen America and Wirtgen GmbH, Wirtgen America must live with the consequences
`
`of that decision during trial, including being bound by corporate testimony that it has no knowledge
`
`about the conception and reduction to practice of the Asserted Patents.
`
`Wirtgen America’s Rule 30(b)(6) witness, Mr. Schmidt, was required to reasonably
`
`prepare to testify about his designated topics, including conception, reduction to practice,
`
`development, and enforcement of the Asserted Patents. Crawford v. George & Lynch, Inc., 19 F.
`
`Supp. 3d 546, 554 (D. Del. 2013) (“A corporation has an affirmative duty to produce a
`
`representative who can answer questions that are within the scope of the matters described in the
`
`notice. The duty of preparation goes beyond the designee’s personal knowledge and matters in
`
`which the designee was personally involved. If necessary, the deponent must use documents, past
`
`employees, or other resources to obtain responsive information.”). Having failed to do so (see
`
`supra at 2-3), Wirtgen America must now be bound by the testimony of its corporate
`
`representative. See QBE Ins. Corp. v. Jorda Enters., 277 F.R.D. 676, 698 (S.D. Fla. 2012)
`
`(precluding plaintiff from “tak[ing] a position at trial - including the introduction of testimony and
`
`exhibits - on the topics … on which [the corporate witness] did not provide 30(b)(6) testimony”);
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`- 4 -
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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 9 of 17 PageID #: 29612
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`Crawford, 19 F. Supp. 3d at 554 (“A Rule 30(b)(6) witness’s testimony is binding on the
`
`corporation.”).
`
`Any other outcome would be “fundamentally unfair” and risk significant prejudice to
`
`Caterpillar at trial. QBE Ins. Corp., 277 F.R.D. at 698 (“It would be fundamentally unfair if
`
`[plaintiff] did not provide 30(b)(6) testimony on certain matters, proclaimed a lack of its own
`
`knowledge, advocated that the association’s refusal to cooperate should not impact it and then at
`
`trial take affirmative positions on these topics and seek to introduce evidence against
`
`[defendant].”). Wirtgen America had an opportunity to reasonably prepare for the deposition,
`
`including by consulting with Wirtgen GmbH. Wirtgen America chose not to provide substantive
`
`testimony on several topics and deprived Caterpillar of a meaningful opportunity to obtain
`
`discovery on the Asserted Patents. Having made that choice, Wirtgen America cannot present a
`
`different narrative at trial.
`
`II.
`
`Günter Hähn Should Be Precluded from Testifying Outside the Scope of the Parties’
`Agreement
`
`There is only one Wirtgen GmbH employee who was belatedly identified in Wirtgen
`
`America’s operative Initial Disclosures: Günter Hähn. Wirtgen America has already agreed to
`
`limit Dr. Hahn’s testimony consistent with the following disclosure:
`
`Managing director at Wirtgen GmbH with knowledge of Wirtgen GmbH’s patent
`protection policies as well as written communications with Caterpillar regarding
`Wirtgen America’s patents.
`
`D.I. 196 at 1. The parties further stipulated that Dr. Hähn would not testify to certain other
`
`categories of information:
`
`1. The conception and/or the reduction to practice of any Asserted Patent;
`2. The infringement of any Asserted Patent;
`3. The validity of any Asserted Patent;
`4. Any alleged prior art Wirtgen-branded products;
`5. Any alleged copying of any Asserted Patent and/or Wirtgen-branded product by
`Caterpillar;
`
`- 5 -
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`

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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 10 of 17 PageID #: 29613
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`6. Any competition between any Wirtgen Entity, Caterpillar, and/or other
`companies, such as Roadtec or BOMAG;
`7. Any sales, profits, losses, damages, and/or competitive harm relating to any claim
`by Wirtgen America against Caterpillar;
`8. Patent licensing, royalty rates, and/or any intellectual property agreements;
`9. The economic value of any individual features found in products that Wirtgen
`America asserts practice the claimed inventions of the Asserted Patents; and
`10. Manufacturing capacity and/or supply chain issues.
`
`Id. at 1-2.
`
`Permitting Dr. Hahn to testify on additional topics would violate the parties’ agreement
`
`and prejudice Caterpillar, who agreed to receive only a limited set of written discovery and take a
`
`shortened deposition in exchange for the narrowed scope of anticipated testimony. See Trinidad
`
`v. Moore, Civil Action No. 2:15-cv-323-WHA, 2016 U.S. Dist. LEXIS 130997, at *6 (M.D. Ala.
`
`Sep. 26, 2016) (granting motion in limine to exclude witness testimony outside scope of initial
`
`disclosures); San Joaquin Valley Ins. Auth. v. Gallagher Ben. Servs., No. 1:17-cv-00861-EPG,
`
`2020 U.S. Dist. LEXIS 20557, at *12 (E.D. Cal. Feb. 6, 2020) (same).
`
`CONCLUSION
`
`In view of the foregoing, Caterpillar respectfully requests that Wirtgen America witnesses
`
`be precluded from offering any evidence, testimony, or making reference to: (1) development,
`
`conception, and reduction to practice of the Asserted Patents; (2) Wirtgen GmbH’s R&D
`
`investments, and (3) Wirtgen GmbH’s IP strategies.
`
`MIL No. 2: Limiting ITC-Related Evidence
`
`INTRODUCTION
`
`The Court should limit the inclusion of prejudicial evidence from Certain Road Milling
`
`Machines and Components Thereof, ITC-337-TA-1067 (the “ITC Proceeding”). Wirtgen America
`
`should not be permitted to prejudice and confuse the jury about a non-binding proceeding in a
`
`separate administrative forum. Although Wirtgen America has repeatedly asserted that the ITC
`
`- 6 -
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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 11 of 17 PageID #: 29614
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`Proceeding is relevant to its claim of post-suit willfulness, the minimal relevance of such evidence
`
`must be weighed against the high risk of the jury relying on the ITC Proceeding and permitting
`
`the ITC to usurp its role as factfinder. See FED. R. EVID. 403.
`
`Accordingly, Caterpillar moves to: (1) exclude written determinations and orders from the
`
`ITC Proceeding and related appeal to the United States Court of Appeals for the Federal Circuit,
`
`as well as any testimony or evidence describing the reasoning of the ITC Administrative Law
`
`Judge (“ALJ”) or the Federal Circuit in reaching their conclusions; (2) exclude references to the
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`source of any designated or impeaching witness testimony or exhibits presented to the jury from
`
`the ITC Proceeding; and (3) limit references to the ITC Proceeding, legal arguments made therein,
`
`and its outcome and impact to certain stipulated facts and jury instructions.
`
`BACKGROUND
`
`Around the time this case was filed, Wirtgen America filed a complaint with the ITC
`
`alleging Caterpillar infringed certain claims of five of the twelve patents that were initially
`
`asserted in this litigation.2 This case was stayed until resolution of the ITC Proceeding. After an
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`evidentiary hearing and appeal to the Federal Circuit, the ITC found that Caterpillar infringed
`
`claims of three patents that will be tried in this case – the ‘309, ’530, and ’641 Patents. See ITC
`
`Proceeding, Final Initial Determination (Oct. 2, 2018); ITC Proceeding, Commission Opinion
`
`(July 18, 2019); Caterpillar Prodotti Stradali S.R.L. v. ITC, 847 F. App’x 893, 894-95 (Fed. Cir.
`
`2021).
`
`ARGUMENT
`
`2 In the ITC Proceeding, Wirtgen America asserted infringement of U.S. Patent Nos.
`9,644,340 (the “’340 Patent”), 9,624,628 (the “’628 Patent”), 9,656,530 (the “’530 Patent”),
`7,530,641 (the “’641 Patent”), and 7,828,309 (the “’309 Patent”). The ’530, ’641, and ’309
`Patents are currently asserted in this case.
`
`- 7 -
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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 12 of 17 PageID #: 29615
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`Throughout this litigation, Wirtgen America has made clear that it intends to introduce at
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`trial testimony and/or argument relating to the infringement and validity findings from the ITC
`
`Proceeding and related appeal. See e.g., D.I. 244 at 2-3, 12, 36-37. Wirtgen America has also
`
`included on its exhibit list the ITC Exclusion Order, the ITC Final Initial Determination, and the
`
`related appellate decision. But the Federal Circuit has consistently held that ITC decisions are not
`
`binding in other forums. Tex. Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558,
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`1569 (Fed. Cir. 1996) (“[ITC’s] findings neither purport to be, nor can they be, regarded as binding
`
`interpretations of the U.S. patent laws in particular factual contexts. Therefore, it seems clear that
`
`any disposition of a Commission action by a Federal Court should not have res judicata or
`
`collateral estoppel effect in cases before such courts.”); see also Bio-Tech. Gen. Corp. v.
`
`Genentech, Inc., 80 F.3d 1553, 1564 (Fed. Cir. 1996) (“[W]e hold that the ITC’s prior decision
`
`cannot have claim preclusive effect in the district court.”). Indeed, this Court has also
`
`acknowledged that the ITC’s “decision is not binding” on this Court. See D.I. 272 (Memorandum
`
`Opinion) at 10.
`
`Given the limited relevance of the ITC Proceeding and its findings, materials from and
`
`references to the ITC Proceeding and related appeal must be narrowly tailored and limited to avoid
`
`the danger of unfair prejudice, confusing the issues, and misleading the jury. FED. R. EVID. 403.
`
`Because the ITC is an official government agency with experience and expertise in patent law,
`
`there is a high risk of prejudice from evidence and testimony related to its findings. The jury may
`
`simply adopt the ITC’s findings rather than deciding the issues on the merits. See Realtek
`
`Semiconductor Corp. v. LSI Corp., No. C-12-03451-RMW, 2014 WL 46997, at *1 (N.D. Cal. Jan.
`
`6, 2014) (finding that “any limited relevance [of the ITC decision] is outweighed by the danger of
`
`unfair prejudice and misleading the jury”); ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`
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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 13 of 17 PageID #: 29616
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`No. 2:10-cv-248, 2011 WL 7036048, at *2 (E.D. Va. July 5, 2011) (finding evidence related to
`
`ITC litigation “would be unduly prejudicial” and “may have a tendency to confuse the jury”). Such
`
`prejudice cannot be fully cured by additional evidence or even a limiting instruction. If the jury
`
`learns the specific reasoning of the ITC ALJ or the Federal Circuit, that knowledge will
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`unquestionably influence the jury’s perception of the case and its role as fact finder.
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`Further, there is significant risk of confusion of the issues, misleading the jury, as well as
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`considerations of undue delay and waste of time. FED. R. EVID. 403. Lay persons are unlikely to
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`be familiar with the ITC, how it operates, and how it relates to federal court litigation. Absent a
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`witness who can explain the ITC Proceeding, jurors will likely be highly confused by receiving
`
`the decisions and orders of the ITC or hearing extensive testimony on the proceedings. See, e.g.,
`
`HTC Corp. v. Tech. Properties Ltd., No. 5:08-cv-00882-PSG, 2013 WL 4782598, at *3 (N.D. Cal.
`
`Sept. 6, 2013) (excluding evidence of ITC investigation given the likely confusion that will result).
`
`This confusion will be compounded by the fact that there are patents and claims at issue in this
`
`litigation that were not at issue in the ITC Proceeding, including additional claims that Wirtgen
`
`America has newly raised in this action on the same patents that were at issue in the ITC
`
`Proceeding.3
`
`For these and similar concerns, courts have entirely excluded references to ITC
`
`proceedings governing the same patents at issue in district court litigation. See, e.g., ActiveVideo
`
`Networks, Inc., 2011 WL 7036048 at *2 (“The Court finds that presentation of evidence pertaining
`
`to proceedings involving some of the patents-in-suit in this case in the ITC or elsewhere would be
`
`unduly prejudicial, as any such evidence may have a tendency to confuse the jury.”); HTC Corp.,
`
`3 For example, Wirtgen America is asserting at trial that a Caterpillar machine that was not at
`issue in the ITC Proceeding infringes a claim of the ’530 Patent that the ALJ did not assess for
`infringement one way or the other in the ITC Proceeding.
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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 14 of 17 PageID #: 29617
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`2013 WL 4782598 at *3 (“Although the court does agree that this district’s jury pool is quite
`
`capable, it cannot countenance the likely confusion that will result upon admission of evidence of
`
`a co-pending investigation at the ITC on this litigation.”). However, Caterpillar does not seek to
`
`fully exclude reference to the ITC Proceeding. Instead, as demonstrated below, Caterpillar is
`
`seeking only to tailor evidence related to the ITC Proceeding in a way that accurately reflects its
`
`limited relevance.
`
`Exclusion of Written Decisions: The written determinations and orders from the ITC
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`Proceeding and the Federal Circuit include analysis concerning infringement and validity for three
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`of the patents that will be tried in this case. The ITC’s determinations and orders also discuss
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`issues that are not germane to this case, such as analysis of patents and claims that are no longer
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`asserted, issues related to importation and domestic industry, and the availability of ITC-specific
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`remedies. To avoid undue prejudice, confusion, misleading the jury, and undue delay addressing
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`these irrelevant topics, Caterpillar seeks to exclude written decisions related to the ITC Proceeding,
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`any evidence detailing the reasoning of the ITC ALJ or Federal Circuit, and factual findings made
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`by the ALJ, including with respect to jurisdiction, domestic industry, and technology incorporated
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`in Wirtgen-branded machines. See Checkpoint Sys., Inc. v. All-Tag Sec. S.A., No. CIV. A. 01-CV-
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`2223, 2007 WL 4730861, at *1 (E.D. Pa. Jan. 31, 2007) (granting motion in limine precluding
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`“evidence regarding why the ITC case was lost” but permitting “evidence regarding the general
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`ITC outcome”).
`
`No Characterization of Source of Evidence: The parties have both designated witness
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`testimony and exchanged exhibits from the ITC Proceeding as potentially relevant evidence at
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`trial. To avoid juror confusion, Caterpillar requests that the parties refer to exhibits and testimony
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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 15 of 17 PageID #: 29618
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`generally, without any characterization about the source of the evidence (i.e., whether it is from
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`the ITC Proceeding or this action).
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`Stipulation of Facts and Jury Instructions: Given the high risk of prejudice, Caterpillar
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`requests the opportunity to collaborate with Wirtgen America to agree on a stipulation of facts
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`and preliminary and final jury instructions that explain the ITC Proceeding and limit the
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`language that can be used at trial to describe the proceeding, the legal arguments asserted therein,
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`and the outcome and impact of the proceeding.
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`MIL No. 3: Precluding Unsubstantiated Allegations of Tip Overs
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`INTRODUCTION
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`Wirtgen America should be precluded from making unsubstantiated suggestions about
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`actual or potential tip over incidents involving the Accused Products. Such allegations lack
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`foundation and would be prejudicial. FED. R. EVID. 403. While Wirtgen America appears poised
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`to claim that its purported patented technology improves safety, Wirtgen America has offered no
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`evidence that the use of its purported technology would have prevented any actual or potential “tip
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`over” incidents. Wirtgen America has proffered no safety expert. It has conducted no
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`investigation into these events. The Court should not permit Wirtgen America to rely on
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`conjecture, insinuation, and speculation to make unsupported and unfair allegations about the
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`functionality and safety of the Accused Products.
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`BACKGROUND
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`Wirtgen America accuses Caterpillar’s PM600 and PM800 machines of infringing the ’309
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`Patent. Wirtgen America’s technical expert, John Lumkes, asserts that the ’309 Patent improves
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`machine stability and thus can prevent tip over events. Ex. 4 (5/18/23 Initial Expert Report of Dr.
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`John H. Lumkes) (“Lumkes Report”), ¶¶ 34-35. In support, Dr. Lumkes cited three Caterpillar
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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 16 of 17 PageID #: 29619
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`documents referring to tip over events in accused Caterpillar PM600/PM800 machines. Id. (citing
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`Ex. 5 (CAT_0055857); Ex. 6 (CAT_00055858); Ex. 7 (CAT_00055869)).
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`ARGUMENT
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`Tip over events with Caterpillar machines are irrelevant to any claim or defense in this
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`case. First, the Caterpillar documents cited by Dr. Lumkes expressly state that most tip over events
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`were not due to stability issues in the Caterpillar machines, but rather due to “operator error, or
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`hazard of the application and environment.” Ex. 5 (CAT_00055857 at 5). Wirtgen America has
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`no evidence that the technology of the ‘309 Patent would have prevented these incidents.
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`Second, to the extent that Wirtgen America suggests that at least some tip overs were the
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`result of machine instability or that Caterpillar incorporated the ’309 Patent to increase machine
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`stability and address tip overs, such suggestions are baseless because the tip overs occurred in the
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`same machines that Wirtgen America accuses of infringing the ’309 Patent. Because the
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`referenced tip over incidents occurred after Wirtgen America alleged that Caterpillar had already
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`incorporated the ’309 Patent, they clearly had no relation to supposed stability issues that Dr.
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`Lumkes asserts the ’309 Patent addresses.
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`Finally, evidence of tip overs would serve no purpose but to confuse and unfairly prejudice
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`the jury into believing that the Accused Products are unsafe or defective, that the ‘309 Patent
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`offered important safety benefits, or that Caterpillar sought to use the ’309 Patent to address tip
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`overs in its machine. All of these suggestions would be implausible given that the tip overs were
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`occurring after the date that Wirtgen America alleges that Caterpillar first started infringing the
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`’309 Patent.
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`Consequently, Dr. Lumkes’s references to tip overs are irrelevant and prejudicial and
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`should be precluded.
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`Case 1:17-cv-00770-JDW Document 289 Filed 01/19/24 Page 17 of 17 PageID #: 29620
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`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 493-9300
`
`Lucy Yen
`Cassie Leigh Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Telephone: (212) 999-5800
`
`Dated: January 19, 2024
`11279922 /11898.00005
`
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`