Case 1:17-cv-00770-JDW Document 293-2 Filed 01/19/24 Page 1 of 8 PageID #: 29712
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`Exhibit C
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`Exhibit C
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`Case 1:17-cv-00770-JDW Document 293-2 Filed 01/19/24 Page 2 of 8 PageID #: 29713
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.
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`Plaintiff,
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`v. )
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`CATERPILLAR INC.,
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`Defendant.
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`________________________________
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`C.A. No. C.A. No. 17-770-JDW
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`REBUTTAL EXPERT REPORT OF DR. ANDREW W. SMITH, P.E.
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`Case 1:17-cv-00770-JDW Document 293-2 Filed 01/19/24 Page 3 of 8 PageID #: 29714
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`Claim 13: The road milling machine of Claim 1, wherein: the controller is configured to
`establish the parallel orientation of the machine frame relative to the ground surface only
`when the controller performs a readjustment of the milling depth or a setting of a
`predefinable milling depth.
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` Regarding Claim 13 Dr. Lumkes opines (ellipses added):
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`“In my opinion, to the extent that the Accused Caterpillar Machines only establish
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`parallel to surface during the ‘creep to scratch’ and ‘creep to parallel’ maneuvers
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`described in the CTCT documents, this claim is met…….The ‘creep to scratch’
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`and ‘creep to parallel’ maneuvers occur only after a milling adjustment.”189
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` Examples of the obstacle jump and ramp-in maneuvers referred to by Dr. Lumkes are
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`shown in Figure 30. As can be seen, both of the creep to scratch maneuvers referred to by
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`Dr. Lumkes occur after the stabilization of the milling roller at its final milling depth
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`position. Accordingly, Dr. Lumkes takes the position that “when the controller performs a
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`readjustment of the milling depth” does not mean “when the controller is currently
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`performing a readjustment of the milling depth”, but rather that the limitations of Claim 13
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`can be satisfied if the parallel orientation maneuver occurs merely “in response to” or after
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`a readjustment of the milling depth (or setting) of the milling roller has been completed.
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` Dr. Lumkes provides no support for this interpretation; i.e., an appropriate analysis of the
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`claim limitation would proceed by analyzing the specification of the ’972 Patent to
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`demonstrate that “when the controller performs” can include “after the controller performs,
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`whereas Dr. Lumkes has not provided any of this analysis. Accordingly, his position that
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`“when the controller performs” means “after the controller performs” is unsupported.
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`189 Lumkes Opening Report, ¶363.
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`2111403 002 - 1731
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`75
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`Case 1:17-cv-00770-JDW Document 293-2 Filed 01/19/24 Page 4 of 8 PageID #: 29715
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`Figure 30:
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`Annotated figures showing two of the creep to scratch maneuvers described in Dr.
`Lumkes' report being performed after a ramp in operation (left) and an obstacle
`jump (right). As can be seen, the creep to scratch maneuvers indicated in orange
`regions occur after the machine has adjusted the leg heights, not during this time.
` On the contrary, the specification of the ’972 teaches that the limitations of Claim 13 refer
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`specifically
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`to
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`the performing of a parallel orientation procedure during a
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`readjustment/setting operation (not after it). The specification describes (emphasis added):
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`“In the preferred embodiment according to FIG. 8, the control means controls the
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`parallel orientation of the machine frame 4 relative to the ground or traffic
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`surface 8 only when the control means 23 performs a readjustment of the
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`milling depth or a setting of a predetermined milling depth.” 190
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`The specification of the ’972 Patent continues on to describe what “only when the control
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`means performs” actually means (emphasis added):
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`“By setting the two 2/2-way valves 94, 88 in a corresponding manner, the control
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`means 23 determines whether the front working cylinders 40, 42 and thus the front
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`lifting columns 12 or the rear working cylinders 44, 46 and thus the rear lifting
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`190 ’972 Patent, 10:48-52.
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`2111403 002 - 1731
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`Case 1:17-cv-00770-JDW Document 293-2 Filed 01/19/24 Page 5 of 8 PageID #: 29716
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`columns 13 will be displaced. Thus, the establishing of the parallel orientation
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`of the machine frame 4 relative to the ground or traffic surface 8 is not
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`controlled actively by the control means 23, but passively in that, in a currently
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`performed readjustment of the milling depth or in the process of newly setting
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`a desired value for the predetermined milling depth, it is decided whether the
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`quantity of oil flowing via the two 4/3-way valves 84,86 for this purpose is to be
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`guided into the front working cylinders 40,42 and thus into the front lifting columns
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`12, or into the rear working cylinders 44,46 and thus into the rear lifting columns
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`13.”191
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` Accordingly, Dr. Lumkes is incorrect to assert that “when the controller performs” means
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`“after the controller performs” within Claim 13 as the specification of the ’972 clearly
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`teaches that “when the controller performs a readjustment….” means “during the time that
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`the controller is performing a readjustment.” Dr. Lumkes provides no analysis to
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`demonstrate that the controllers of the Accused Products perform a parallel orientation
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`during a readjustment or setting operation, thus he has not demonstrated that the Accused
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`Products practice the limitations of Claim 13 as intended by the specification.
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` Dr. Lumkes’ unsupported interpretations of terms notwithstanding, even if one assumes
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`arguendo that Dr. Lumkes’ interpretation of “when the controller performs” as “after the
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`controller performs) is supported (it is not), he has still only shown that, for several
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`examples of operation, the Accused Products initiate a parallel orientation maneuver after
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`an adjustment of the milling depth not that the Accused Products are incapable of
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`191 ’972 Patent, 10:52-67.
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`2111403 002 - 1731
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`Case 1:17-cv-00770-JDW Document 293-2 Filed 01/19/24 Page 6 of 8 PageID #: 29717
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`performing an adjustment of milling depth if and only if a milling adjustment has been
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`made.
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` For at least the above reasons, Dr. Lumkes has failed to demonstrate that the Accused
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`Products practice the limitations of Claim 13 of the ’972 Patent. Furthermore, as can be
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`seen above, e.g., in Figure 30, the Accused Products perform the creep to scratch
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`maneuvers well after the adjustments of milling depth. To the extent that the creep to
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`scratch and creep to parallel maneuvers are found to be operations to establish a parallel
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`orientation of the frames of the Accused Products, the Accused Products do not perform
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`these maneuvers “only when the controller performs a readjustment of the milling depth or
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`a setting of a predefinable milling depth;” accordingly the Accused Products do not
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`practice the limitations of Claim 13 of the ’972 Patent.
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`Claim 15: The road milling machine of Claim 1, wherein: the controller is configured to
`control the parallel orientation of the machine independently of control of the milling depth
`of the milling roller.
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` Dr. Lumkes also opines that the Accused Products practice the limitations of Claim 15 of
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`the ’972 Patent with the following analysis (ellipses added):
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`“The controller can implement the parallel to surface features while the machine is
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`milling in automatic mode. Accordingly, such a parallel to surface feature is
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`implemented independent of milling depth. As shown in the various schematics
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`depicting operations involving “creep to scratch” maneuvers, milling depth is
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`maintained while creeping to scratch….Thus, milling depth is maintained
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`independently of the “creep to scratch” maneuver [sic] that controls the parallel
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`orientation of the machine frame.”192
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`192 Lumkes Opening Report, ¶367.
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`2111403 002 - 1731
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`78
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`Case 1:17-cv-00770-JDW Document 293-2 Filed 01/19/24 Page 7 of 8 PageID #: 29718
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`controller (by e.g., activating touch screen buttons via a separate screen) to change this
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`relative inclination.
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`In this case, a user could select a variety of relative inclinations to set the machine frame
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`to, as well as select an appropriate error band which (if the machine travelled outside of
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`this inclination error band) the user would be notified and queried for further instructions
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`(i.e., to manually establish the machine’s parallel orientation again or not). Such
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`information would be useful, e.g., as an alert to the operator that the ground inclination was
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`unexpectedly changing, for instance.
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`In his opening report, Dr. Lumkes opines that there were “Advantages of Parallel to
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`Surface” capabilities which, in his opinion were acknowledged by Caterpillar. However,
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`Dr. Lumkes does not opine that the automatic establishing of said parallel orientation itself
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`was the recognized feature; accordingly, to the extent that there was a perceived user
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`preference for parallel to surface orientation capabilities, Dr. Lumkes (nor, to my
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`knowledge, Wirtgen America) has not demonstrated that the preference could not have
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`been satisfied by achieving parallel orientation automatically, as opposed to manually. This
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`notwithstanding, I am not aware of any information provided by Wirtgen America in this
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`matter which demonstrates that any sales were tied directly to the automatic establishing
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`of parallel orientation as recited in the ’972 Patent.
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`I declare under the penalty of perjury that the foregoing is true and correct.
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`Executed on June 16, 2023, at Chicago, IL.
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`Andrew W. Smith, Ph.D., P.E.
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`2111403 002 - 1731
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`90
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`Case 1:17-cv-00770-JDW Document 293-2 Filed 01/19/24 Page 8 of 8 PageID #: 29719
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`CERTIFICATE OF SERVICE
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`I, Adam W. Poff, Esquire, hereby certify that on January 19, 2024, I caused the foregoing
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`document to be served by email upon the following counsel:
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`Bindu A. Palapura
`Andrew L. Brown
`POTTER ANDERSON & CORROON, LLP
`1313 N. Market Street, 6th Floor
`Wilmington, DE 19801
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`James C. Yoon
`Ryan R. Smith
`Christopher Mays
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`jyoon@wsgr.com
`rsmith@wsgr.com
`cmays@wsgr.com
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`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI
`1301 Avenue of the Americas
`40th Floor
`New York, NY 10019
`lyen@wsgr.com
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`caterpillar@wsgr.com
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
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`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
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`Attorneys for Plaintiff
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