`WIRTGEN AMERICA, INC.,
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`CATERPILLAR INC.,
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`C.A. No. 17-770-JDW
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`JURY TRIAL DEMANDED
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`Defendant/Counterclaim-Plaintiff.
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`[PROPOSED] PRELIMINARY JURY INSTRUCTIONS
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 1 of 28 PageID #: 29722
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 2 of 28 PageID #: 29723
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`13.
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`14.
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`15.
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`16.
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`TABLE OF CONTENTS
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`Introduction; Role of the Jury ............................................................................................. 1
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`Overview of the Case .......................................................................................................... 2
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`General Guidance Regarding United States Patents ........................................................... 5
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`Evidence .............................................................................................................................. 6
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`Direct and Circumstantial Evidence ................................................................................... 8
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`Credibility of Witnesses ...................................................................................................... 9
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`Prior Sworn Testimony ..................................................................................................... 11
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`Expert Testimony .............................................................................................................. 12
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`Interrogatories ................................................................................................................... 13
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`Admitted Facts .................................................................................................................. 14
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`Burdens of Proof ............................................................................................................... 17
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`Notetaking by Jurors ......................................................................................................... 19
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`Conduct of the Jury ........................................................................................................... 21
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`Bench Conferences and Recesses ..................................................................................... 23
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`Course of the Trial ............................................................................................................ 24
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`Trial Schedule ................................................................................................................... 26
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`ii
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 3 of 28 PageID #: 29724
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`1.
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`Introduction; Role of the Jury1
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`Members of the jury: now that you have been sworn in, I have the following preliminary
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`instructions for guidance on your role as jurors in this case.
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`These instructions are intended to introduce you to the case and the law that you will
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`apply to the evidence you will hear. Also, because this case involves patents, I will give you
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`some preliminary instructions regarding patents. I will give you more detailed instructions on the
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`law at the end of the trial.
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`You will hear evidence, decide what the facts are, and then apply those facts to the law
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`that I will give to you. You and you alone will be the judges of the facts. I play no part in judging
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`the facts. My role is to be the judge of the law. I make whatever legal decisions have to be made
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`during the course of the trial, and I will explain to you the legal principles that must guide you in
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`your decisions. You must follow that law whether you agree with it or not. It is important that
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`you perform your duties fairly. Do not let any bias, sympathy, or prejudice influence your
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`decision in any way. Nothing I may say or do during the course of the trial is intended to indicate
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`what your verdict should be.
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`1 See TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 1, Introduction to the Role of the
`Jury); 3G Licensing, S.A. v. HTC Corp., No. 17-cv-00083-GBW, D.I. 735, Preliminary Jury
`Instructions (Oct. 16, 2023) (Instruction No. 1, Introduction); Third Circuit Model Jury
`Instructions (Aug. 2020) at 1.1, available at
`https://www.ca3.uscourts.gov/sites/ca3/files/chapters%201_2_3_%20for%20posting%20after%2
`0August%202020%20meeting.pdf.
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 4 of 28 PageID #: 29725
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`2.
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`Overview of the Case2
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`This is a patent case. The plaintiff in this case is Wirtgen America, Inc. I will refer to
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`plaintiff as “Wirtgen America.” The defendant in this case is Caterpillar Inc. I will refer to
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`defendant as “Caterpillar.”
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`Wirtgen America alleges that Caterpillar infringes seven of Wirtgen America’s United
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`States patents: U.S. Patent No. 7,828,309; U.S. Patent No. 9,656,530; U.S. Patent No. 8,424,972;
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`U.S. Patent No. 7,530,641; U.S. Patent No. 7,946,788; U.S. Patent No. 8,690,474; and U.S.
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`Patent No. RE48,268. You may hear these patents referred to by their last three numbers as the
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`’309 patent, the ’530 patent, the ’972 patent, the ’641 patent, the ’788 patent, the ’474 patent, and
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`the ’268 patent. I will refer to these patents together as the “Asserted Patents.” During the trial,
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`the parties will offer testimony and evidence to familiarize you with the technology involved in
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`the Asserted Patents.
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`Wirtgen America contends that Caterpillar has infringed the following claims of the
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`Asserted Patents: claims 10 and 29 of the ’309 patent; claims 5, 13, 16, and 22 of the ’530 patent;
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`claims 12, 13, 15, and 27 of the ’972 patent; claims 11 and 18 of the ’641 patent; claim 5 of the
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`’788 patent; claims 19 and 21 of the ’474 patent; and claims 1, 23, 30, and 32 of the ’268 patent.
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`I will refer to these patent claims as the “Asserted Claims.” You will hear more about the
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`meaning of a “patent claim” in just a moment.
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`The products accused of infringement are certain Caterpillar cold planer machines, also
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`called road milling machines, and certain Caterpillar rotary mixer machines. In particular,
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`2 See TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 2, Overview of the Case); 3G
`Licensing, S.A. v. HTC Corp., No. 17-cv-00083-GBW, D.I. 735, Preliminary Jury Instructions
`(Oct. 16, 2023) (Instruction No. 2, Overview of the Case).
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`2
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 5 of 28 PageID #: 29726
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`Wirtgen America contends that Caterpillar’s PM620, PM622, PM820, PM822, PM825, PM310,
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`PM312, and PM313 road milling machines and Caterpillar’s RM600 and RM800 rotary mixer
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`machines infringe the Asserted Claims. These machines may be referred to collectively as
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`“Caterpillar’s Accused Products.” Wirtgen America also claims that Caterpillar’s infringement
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`was willful.
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`Caterpillar denies that its products infringe the Asserted Claims, denies that any
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`infringement was willful, and contends that the Asserted Claims are invalid [Defendant’s
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`Proposal: and unenforceable].3
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`3 Plaintiff’s position: Caterpillar’s unenforceability defenses of prosecution laches is equitable in
`nature. Personalized Media Commc’ns, LLC v. Apple Inc., 57 F.4th 1346, 1354 (Fed. Cir. 2023).
`It therefore should be adjudicated by the Court, not the jury. See id. at 1350 (noting that district
`court decided the issue of prosecution laches after the jury returned a verdict of infringement).
`And that is so even if this equitable issue involves underlying factual disputes, because “issues of
`fact underlying [an] equitable [defense] are matters for court, not jury disposition.” Revolution
`Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1373 (Fed. Cir. 2009). Notably, neither the
`AIPLA model instructions nor the FBCA model instructions contains an instruction on
`prosecution laches. And Plaintiff’s counsel has located several cases where the parties disputed
`the inclusion of an instruction on prosecution laches and no such instruction was ultimately
`included in the final jury instructions—further reinforcing the notion that this equitable issue is
`for court, not jury, resolution. Compare, e.g., Cellectis S.A. v. Precision BioSciences, Inc., No.
`11-cv-00173-SLR, D.I. 278, Proposed Final Jury Instructions (April 6, 2013) (Instruction No. 35,
`Laches); GlaxoSmithKline LLC v. Teva Pharms. USA, Inc., No. 14-cv-00878-LPS, D.I. 375,
`Joint Proposed Final Jury Instructions (May 23, 2017) (Instruction No. 6.2, Laches [Disputed]
`Teva’s Proposal); Natera, Inc. v. ArcherDX, Inc., No. 20-cv-00126-GBW, D.I. 576, Proposed
`Final Jury Instructions (April 25, 2023) (Instruction No. 6.1, [Disputed] Defendants’ Proposal:
`Prosecution Laches), with Cellectis S.A. v. Precision BioSciences, Inc., No. 11-cv-00173-SLR,
`D.I. 298, Final Jury Instructions (April 30, 2013); GlaxoSmithKline LLC v. Teva Pharms. USA,
`Inc., No. 14-cv-00878-LPS, D.I. 440, Final Jury Instructions (June 19, 2017); Natera, Inc. v.
`ArcherDX, Inc., No. 20-cv-00126-GBW, D.I. 605, Final Jury Instructions (May 12, 2023).
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`Caterpillar has also characterized its collateral-estoppel argument as an unenforceability
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`defense. Regardless of how it is characterized, collateral estoppel is a purely legal issue and
`therefore likewise should be resolved by the court, not the jury. See Jean Alexander Cosms., Inc.
`v. L'Oreal USA, Inc., 458 F.3d 244, 248 (3d Cir. 2006) (collateral estoppel “is a matter of law
`over which we exercise plenary review”); Pharmacia & Upjohn Co. v. Mylan Pharms., Inc., 170
`F.3d 1373, 1376 (Fed. Cir. 1999) (same). And neither the AIPLA model instructions nor the
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`3
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 6 of 28 PageID #: 29727
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`Your job will be to decide whether Caterpillar has infringed each of the Asserted Claims
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`and whether those claims are invalid [Defendant’s Proposal: or unenforceable]. If you decide
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`that Caterpillar has infringed any of the Asserted Claims and that the infringed claims are not
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`invalid [Defendant’s Proposal: and unenforceable], you will need to decide any monetary
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`damages to be awarded to Wirtgen America to compensate for Caterpillar’s infringement. You
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`will also need to decide whether Caterpillar’s infringement was willful. If you decide that any
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`infringement was willful, that decision should not affect any damages award you give. I will take
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`willfulness into account later.
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`FBCA model instructions nor the Third Circuit model instructions contain an instruction on
`collateral estoppel.
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`Defendant’s position: Caterpillar’s prosecution laches defense involves underlying
`issues of fact about whether Wirtgen America delayed in prosecution the asserted claims and is
`included in the FCBA Model Instructions (2016).
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`Caterpillar’s indefiniteness defense also implicates underlying factual issues, and courts
`find it proper to go to the jury when the underlying dispute is factual, including in this district.
`See Bombardier Recreational Prods. Inc. v. Arctic Cat Inc., 785 Fed. App’x 858, 867 (Fed. Cir.
`2019) (holding that where “[t]he evidence presented [on indefiniteness] was almost exclusively
`extrinsic, in large part encompassing warring expert testimony[,]” “[t]he question of definiteness
`thus required the resolution of critical factual issues and was properly before the jury.”); Pac.
`Biosciences of California, Inc. v. Oxford Nanopore Techs., Inc., No. CV 17-1353-LPS-CJB,
`2020 WL 4699049, at *10–11 (D. Del. Aug. 13, 2020) (“First, ONT insists that the Supreme
`Court's decision in Teva vs. Sandoz[, 574 U.S. 318 (2015),] made indefiniteness an issue
`exclusively for the court to decide. I disagree. I continue to believe that I have discretion to put ...
`indefiniteness before the jury where[,] as here, there are subsidiary fact disputes that inform the
`indefiniteness decision as a matter of law. ONT has cited no contrary Federal Circuit case. In
`fact, instead, the Federal Circuit [has] made clear that indefiniteness is amenable to resolution by
`the jury where the issues are factual in nature. So I think it was appropriate to put indefiniteness
`before the jury.”) (modifications in original) (citing Bombardier), aff'd, 996 F.3d 1342 (Fed. Cir.
`2021).
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`Caterpillar asserts that its collateral estoppel defenses have underlying issues of fact for the jury
`to resolve, i.e., whether claims in the asserted patents are not materially different from claims
`that were previously found invalid.
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`4
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 7 of 28 PageID #: 29728
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`3.
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`General Guidance Regarding United States Patents4
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`As I mentioned before, this case is about patents, which is a subject matter unfamiliar to
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`many people. I am going to show you a 17-minute video that will provide background
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`information to help you understand what patents are, why they are needed, the role of the Patent
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`Office, and why disputes over patents arise. This video was prepared by the Federal Judicial
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`Center, not the parties in this case, to help introduce you to the patent system. At the conclusion
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`of the video, I will provide you with additional instructions.
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`[The video will be played.]
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`4 See TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 3, United States Patents); 3G
`Licensing, S.A. v. HTC Corp., No. 17-cv-00083-GBW, D.I. 735, Preliminary Jury Instructions
`(Oct. 16, 2023) (Instruction No. 3, United States Patents).
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`5
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 8 of 28 PageID #: 29729
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`4.
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`Evidence5
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`You must make your decision based only on the evidence that you see and hear in the
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`courtroom. Do not let rumors, suspicions, or anything else that you may have seen or heard
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`outside of court influence your decision in any way.
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`The evidence in this case includes only what the witnesses say while they are testifying
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`under oath (including prior sworn testimony that will be played or read to you), the exhibits that I
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`allow into evidence, any facts that the parties agreed to by stipulation, and any facts that I
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`instruct you to take as true.
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`Additionally, you may consider any fair inferences or reasonable conclusions that you
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`can draw from the facts and circumstances that have been proven. Nothing else is evidence.
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`The following things are not evidence and must not be considered as such:
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`Statements, arguments, questions, and comments by lawyers are not evidence.
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`Exhibits that are identified by a party but not offered or received into evidence are
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`1.
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`2.
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`not evidence.
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`3.
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`Objections are not evidence. Lawyers have an obligation to their clients to make
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`an objection when they believe testimony or exhibits being offered into evidence are not proper
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`under the Rules of Evidence. You should not be influenced by a lawyer’s objection or by my
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`ruling on the objection. If I sustain or uphold the objection to a question or an exhibit, you must
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`ignore the question or the exhibit. If I overrule an objection and allow the matter into evidence,
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`5 See TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 4, Evidence); 3G Licensing, S.A. v.
`HTC Corp., No. 17-cv-00083-GBW, D.I. 735, Preliminary Jury Instructions (Oct. 16, 2023)
`(Instruction No. 4, Evidence); Third Circuit Model Jury Instructions (August 2020) at 1.5,
`available at
`https://www.ca3.uscourts.gov/sites/ca3/files/chapters%201_2_3_%20for%20posting%20after%2
`0August%202020%20meeting.pdf.
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`6
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 9 of 28 PageID #: 29730
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`treat the testimony or document as you would any other evidence. If I instruct you during the
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`trial that some item of evidence is admitted for a limited purpose, you must follow that
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`instruction and consider that evidence for that purpose only. If this does occur during the trial, I
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`will try to clarify this for you at that time.
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`4.
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`5.
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`My legal rulings are not evidence.
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`You should not consider testimony and documents I have excluded or stricken
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`from the record and not admitted into evidence or told you to disregard.
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`6.
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`Anything you see or hear about this case outside the courtroom is not evidence
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`and must be disregarded. You are to decide this case solely on the evidence presented here in the
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`courtroom.
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`Do not in any way research any information about this case, the law or the people
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`involved, including the parties, the witnesses, the lawyers or the judge, until after you have been
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`excused as jurors. If you happen to see or hear anything touching on this case in the media, turn
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`away and report it to me as soon as possible. These rules protect the parties’ rights to have this
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`case decided only on evidence they know about that has been presented here in court.
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`During this trial, you may be shown charts, animations, videos, or other illustrations that
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`were created by Wirtgen America or Caterpillar to illustrate the testimony of witnesses or other
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`underlying evidence. These are called demonstrative exhibits and used for convenience and ease
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`of presentation. They are not themselves evidence or proof of any facts, which means you will
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`not have access to them when you are deliberating, so pay attention during the trial. If your
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`recollection of the evidence differs from the demonstrative exhibits you saw, rely on your
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`recollection of the evidence.
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`7
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 10 of 28 PageID #: 29731
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`5.
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`Direct and Circumstantial Evidence6
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`There are two kinds of evidence that you may use in reaching your verdict. One kind of
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`evidence is called “direct evidence.” Direct evidence is direct proof of a fact, such as testimony
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`of an eyewitness. For example, if a witness testified that she saw it raining outside, that would be
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`direct evidence that it was raining.
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`The other kind of evidence is called “circumstantial evidence.” Circumstantial evidence
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`is proof of one or more facts from which you may infer or conclude that other facts exist. For
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`example, if someone walked into the courtroom wearing a raincoat covered with drops of water
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`and carrying a wet umbrella, that would be circumstantial evidence from which you could
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`conclude that it was raining.
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`You should consider both kinds of evidence that are presented to you. The law makes no
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`distinction between the weight that you should give to either direct or circumstantial evidence,
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`but simply requires that you find facts from all the evidence in the case, both direct and
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`circumstantial, and give it whatever weight you believe it deserves.
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`6 See TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 4, Evidence); 3G Licensing, S.A. v.
`HTC Corp., No. 17-cv-00083-GBW, D.I. 735, Preliminary Jury Instructions (Oct. 16, 2023)
`(Instruction No. 4, Evidence); Third Circuit Model Jury Instructions (August 2020) at 1.6,
`available at
`https://www.ca3.uscourts.gov/sites/ca3/files/chapters%201_2_3_%20for%20posting%20after%2
`0August%202020%20meeting.pdf.
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`8
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 11 of 28 PageID #: 29732
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`6.
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`Credibility of Witnesses7
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`In deciding what the facts are, you may have to decide what testimony you believe and
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`what testimony you do not believe. You are the sole judges of the credibility of the witnesses.
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`“Credibility” means whether a witness is worthy of belief. You may believe everything a witness
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`says or only part of it or none of it. In deciding what to believe, you may consider several factors,
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`including the following:
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`1.
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`the opportunity and ability of the witness to see or hear or know the things the
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`witness testifies to;
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`2.
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`3.
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`4.
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`the quality of the witness’s understanding and memory;
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`the witness’s manner or demeanor while testifying;
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`whether the witness has an interest in the outcome of the case or any other motive,
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`bias, or prejudice;
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`5.
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`whether the witness’s testimony is contradicted by anything the witness said or
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`wrote before trial or by other evidence;
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`6.
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`how reasonable the witness’s testimony is when considered in the light of other
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`evidence that you believe; and
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`7.
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`any other factors that bear on believability of the testimony.
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`The weight of the evidence to prove a fact does not necessarily depend on the number of
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`witnesses who testify. What is more important is how believable the witnesses were, and how
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`7 See TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 6, Witnesses); 3G Licensing, S.A.
`v. HTC Corp., No. 17-cv-00083-GBW, D.I. 735, Preliminary Jury Instructions (Oct. 16, 2023)
`(Instruction No. 6, Credibility of Witnesses; Weighing Conflicting Testimony); Third Circuit
`Model Jury Instructions (August 2020) at 1.7, available at
`https://www.ca3.uscourts.gov/sites/ca3/files/chapters%201_2_3_%20for%20posting%20after%2
`0August%202020%20meeting.pdf.
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`9
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`

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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 12 of 28 PageID #: 29733
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`much weight you think their testimony deserves.
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`This instruction applies to all witnesses, including expert witnesses.
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`10
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 13 of 28 PageID #: 29734
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`7.
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`Prior Sworn Testimony8
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`You may hear witnesses testify through deposition testimony. A deposition is the sworn
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`testimony of a witness taken before trial. The witness is placed under oath and swears to tell the
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`truth, and lawyers for each party may ask questions. A court reporter is present and records the
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`questions and answers. The deposition may or may not be recorded on videotape.
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`You may also hear witnesses testify through prior testimony given at a hearing. This
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`testimony was likewise provided under oath in response to questions asked by the lawyers for
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`each party.
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`If played by video, the prior testimony may have been edited or cut to exclude irrelevant
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`testimony. You should not attribute any significance to the fact that the videos may appear to
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`have been edited. If you are hearing testimony from a videotaped deposition or hearing, the
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`testimony you are hearing was provided after the witness was sworn in.
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`Prior sworn testimony is entitled to the same consideration and is to be judged, insofar as
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`possible, in the same way as if the witness had been present to testify.
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`8 See TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 8, Deposition Testimony); 3G
`Licensing, S.A. v. HTC Corp., No. 17-cv-00083-GBW, D.I. 735, Preliminary Jury Instructions
`(Oct. 16, 2023) (Instruction No. 9, Deposition Testimony); Third Circuit Model Jury Instructions
`(August 2020) at 2.5, available at
`https://www.ca3.uscourts.gov/sites/ca3/files/chapters%201_2_3_%20for%20posting%20after%2
`0August%202020%20meeting.pdf.
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`11
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 14 of 28 PageID #: 29735
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`8.
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`Expert Testimony9
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`Some of the witnesses you are going to hear from in this trial will present expert
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`testimony. Expert testimony is testimony from a person who has developed a special skill or
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`knowledge in some science, profession, or business. This skill or knowledge is not common to
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`the average person, but it has been acquired by the expert through special study or experience.
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`In weighing opinion testimony, you may consider the expert’s qualifications, the reasons
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`for their opinions, and the reliability of the information supporting those opinions, as well as the
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`factors I have previously mentioned for weighing the testimony of any other witness. The
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`opinions of expert witnesses should receive whatever weight and credit, if any, you think
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`appropriate, given all the other evidence in the case. You are free to accept or reject the
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`testimony of experts, just as with any other witness.
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`
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`9 See TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 7, Expert Testimony); 3G
`Licensing, S.A. v. HTC Corp., No. 17-cv-00083-GBW, D.I. 735, Preliminary Jury Instructions
`(Oct. 16, 2023) (Instruction No. 7, Expert Testimony); Third Circuit Model Jury Instructions
`(August 2020) at 2.11, available at
`https://www.ca3.uscourts.gov/sites/ca3/files/chapters%201_2_3_%20for%20posting%20after%2
`0August%202020%20meeting.pdf.
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`12
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 15 of 28 PageID #: 29736
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`9.
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`Interrogatories10
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`You may hear answers that the parties gave in response to written questions submitted by
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`the other side. The written questions are called “interrogatories.” The answers were given in
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`writing and under oath, before the trial.
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`Interrogatory answers are entitled to the same consideration and are to be judged, insofar
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`as possible, in the same way as other evidence.
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`
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`10 TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 9, Interrogatories); Third Circuit
`Model Jury Instructions (August 2020) at 2.6, available at
`https://www.ca3.uscourts.gov/sites/ca3/files/chapters%201_2_3_%20for%20posting%20after%2
`0August%202020%20meeting.pdf.
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`
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`13
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`

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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 16 of 28 PageID #: 29737
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`10.
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`Admitted Facts11
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`The parties have stipulated that certain facts are true, and those admitted facts may be
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`read to you during trial. You must treat these admitted facts as having been proven for purposes
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`of this case.
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`11 See TwinStrand Bioscis., Inc. v. Guardant Health, Inc., No. 21-cv-1126-GBW, D.I. 480,
`Preliminary Jury Instructions (Nov. 6, 2023) (Instruction No. 10, Admitted Facts); Complete
`Genomics, Inc. v. Illumina, Inc., No. 19-cv-00970-MN, D.I. 383, Preliminary Jury Instructions
`(Apr. 25, 2022) (Instruction IX, Admitted Facts); Third Circuit Model Jury Instructions (August
`2020) at 2.4, available at
`https://www.ca3.uscourts.gov/sites/ca3/files/chapters%201_2_3_%20for%20posting%20after%2
`0August%202020%20meeting.pdf.
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`
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`14
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 17 of 28 PageID #: 29738
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`11. Other Proceedings12
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`During this trial, you may hear about proceedings in the International Trade Commission,
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`also known as the ITC, involving the asserted patents involved in this case. [Plaintiff’s proposal:
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`12 See D.I. 272 at 10, 18–19; see also 28 U.S.C. § 1659(b); Tex. Instruments Inc. v. Cypress
`Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996).
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`Plaintiff’s position: Caterpillar proposed the inclusion of a specific instruction on the ITC
`proceedings. Wirtgen America is not opposed to including such an instruction in principle, but
`multiple aspects of Caterpillar’s proposed instruction—which is not based on any model
`instruction or case law—are transparently prejudicial, not to mention factually and legally
`incorrect. The ITC proceedings involved much of the same “procedure,” “evidence,” and
`“circumstances” as this case. The record in the ITC proceeding is admissible by statute, see 28
`U.S.C. § 1659(b), and the Court has already suggested that the ITC’s determination may be
`probative on willfulness, D.I. 272 at 18–19, so the evidence from the ITC proceeding is
`decidedly relevant here. Finally, Wirtgen America has no objection to telling the jury that the
`ITC’s determinations are not binding, but, to avoid confusion and provide context, the jury
`should also be instructed as to what the relevant determinations were.
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`Caterpillar’s cases are inapposite. Rambus (i) did not involve allegations of willful patent
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`infringement and (ii) involved the non-final determination of an ALJ. See Rambus, Inc. v.
`Infineon Techs. AG, 222 F.R.D. 101 (E.D. Va. 2004). Here, in contrast, the ITC decision is
`relevant to willfulness, and the relevant determinations have been judicially reviewed and
`affirmed by the Federal Circuit. Realtek is a similar story: the court excluded an ALJ
`determination under Rule 403 specifically because, while the decision was relevant, “the
`relevance is limited here because of the non-final nature of the ALJ’s decision.” Realtek
`Semiconductor Corp. v. LSI Corp., 2014 WL 46997, at *1 (N.D. Cal. Jan. 6, 2014). That
`reasoning does not apply here because the ITC’s decision is final.
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`Defendant’s position: The ITC findings are not binding, are irrelevant, and are prejudicial to
`Caterpillar. See Realtek Semiconductor Corp. v. LSI Corp., No. C-12-03451-RMW, 2014 U.S.
`Dist. LEXIS 1171, at *3-4 (N.D. Cal. Jan. 6, 2014) (holding that relevance of the ITC decision is
`limited because of the non-final nature of the ALJ’s decision, and this limited relevance is
`outweighed by the danger of unfair prejudice and misleading the jury, pursuant to FRE 403);
`Rambus, Inc. v. Infineon Techs. AG, 222 F.R.D. 101, 110 (E.D. Va. 2004) (holding that ITC
`decision must be excluded under FRE 403 because it would give undue weight to the findings of
`the ALJ and that the juror’s ability to reach their own determinations would be undermined by
`admission of the decision); see also Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90
`F.3d 1558, 1569 (Fed. Cir. 1996). Wirtgen America seeks to include “relevant determinations”
`from the ITC in jury instructions. This is improper. Wirtgen America has the burden to prove
`facts, including any facts concerning what occurred at the ITC. Jury instructions cannot be used
`to meet Wirtgen America’s evidentiary burdens. Wirtgen America may propose stipulated facts
`as requested in Caterpillar’s Motion in Limine No. 2, but jury instructions are not the appropriate
`place for such facts.
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`15
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`Case 1:17-cv-00770-JDW Document 295 Filed 01/26/24 Page 18 of 28 PageID #: 29739
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`As relevant here, the ITC found there that Caterpillar infringed claim 11 of the ’641 patent,
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`claim 29 of the ’309 patent, and claims 2, 5, 16, and 23 of the ’530 patent. The ITC also found
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`that Caterpillar had not shown that those claims were invalid.]13 Any determinations made about
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`the infringement and validity of the asserted patents made at the ITC is not binding on you.
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`[Plaintiff’s proposal: However, if you decide that any of Wirtgen America’s patents are infringed
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`and not invalid, you may consider the ITC’s determinations in determining whether Caterpillar’s
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`infringement was willful.]14 [Defendant’s proposal: The ITC proceedings involved a different
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`procedure, different evidence, and different circumstances. Your decision should be based
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`on evidence presented during the course of this trial and should not take into account what
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`happened at the ITC or any determinations made there.]
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`13 See 86 Fed. Reg. 62566, 62566–67 (Nov. 10, 2021).
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`14 See D.I. 272 at 18–19 (“Wirtgen contends that Caterpillar chose to continue to manufacture,
`import, and sell the machines after having been found to infringe the ’530 Patent during the ITC
`proceedings…. A jury could find willfulness on these grounds.”) (cleaned up); Final Jury
`Instructions, AIA Eng’g Ltd. v. Magotteaux Int’l S/A, No. 3:09-cv-00255, D.I. 381 at 33 (Willful
`Infringement) (M.D. Tenn. June 29, 2012) (“T