Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 1 of 11 PageID #: 30304
`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 1 of 11 PagelD #: 30304
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`EXHIBIT 6B
`EXHIBIT 6B
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 1 of 11 PagelD #: 30304
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`EXHIBIT 6B
`EXHIBIT 6B
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 2 of 11 PageID #: 30305
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`
`CATERPILLAR INC.,
`
`
`
`Plaintiff/Counterclaim-Defendant,
`
`v.
`
`
`
`
`
`
`Civil Action No. 1:17-cv-00770-JDW
`
`JURY TRIAL DEMANDED
`
`Defendant/Counterclaim-Plaintiff.
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`
`
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`
`
`DEFENDANT CATERPILLAR, INC.’S STATEMENT OF
`INTENDED PROOFS
`
`
`
`
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 3 of 11 PageID #: 30306
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`Caterpillar will offer the following proof at trial:
`
`I.
`
`NONINFRINGEMENT OF WIRTGEN AMERICA’S ASSERTED PATENTS
`
`A.
`
`1.
`
`Noninfringement of U.S. Patent No. 7,828, 309 (“the ’309 Patent)
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has infringed, literally
`
`or under the doctrine of equivalents, claim 10 and 29 of the ’309 Patent.
`
`2.
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has willfully infringed
`
`claims 10 and 29 of the ’309 Patent.
`
`B.
`
`3.
`
`Noninfringement of U.S. Patent No. 9,656, 530 (“the ’530 Patent)
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has infringed claims
`
`5, 13, 16, and 22 of the ’530 Patent.
`
`4.
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has willfully infringed
`
`claims 5, 13, 16, and 22 of the ’530 Patent.
`
`C.
`
`5.
`
`Noninfringement of U.S. Patent No. 8,424,972 (“the ’972 Patent)
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has infringed claims
`
`12, 13, 15, and 27 of the ’972 Patent.
`
`6.
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has willfully infringed
`
`claims 12, 13, 15, and 27 of the ’972 Patent.
`
`D.
`
`7.
`
`Noninfringement of U.S. Patent No. 7,530,641 (“the ’641 Patent)
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has infringed claims
`
`11 and 18 of the ’641 Patent.
`
`8.
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has induced others to
`
`infringe claims 11 and 18 of the ’641 Patent and that Caterpillar was aware that its actions would
`
`induce infringement or that it was willfully blind to the fact that its actions would induce
`
`infringement.
`
`
`
`-2-
`
`
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 4 of 11 PageID #: 30307
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`9.
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has willfully infringed
`
`claims 11 and 18 of the ’641 Patent.
`
`E.
`
`10.
`
`Noninfringement of U.S. Patent No. 7,946,788 (“the ’788 Patent)
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has infringed, literally
`
`or under the doctrine of equivalents, claim 5 of the ’788 Patent.
`
`11.
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has willfully infringed
`
`claim 5 of the ’788 Patent.
`
`12.
`
`Proof that prosecution history estoppel bars application of the doctrine of
`
`equivalents by Wirtgen America with respect to the ’788 Patent.
`
`F.
`
`13.
`
`Noninfringement of U.S. Patent No. 8,690,474 (“the ’474 Patent)
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has infringed, literally
`
`or under the doctrine of equivalents, claims 19 and 21 of the ’474 Patent.
`
`14.
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has willfully infringed
`
`claim 19 and 21 of the ’474 Patent.
`
`15.
`
`Proof that prosecution history estoppel bars application of the doctrine of
`
`equivalents by Wirtgen America with respect to the ’474 Patent.
`
`G.
`
`16.
`
`Noninfringement of U.S. Patent No. RE48,268 (“the ’268 Patent)
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has infringed claims
`
`1, 23, 30, and 32 of the ’268 Patent.
`
`17.
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has induced others to
`
`infringe claims 1, 23, 30 and 32 of the ’268 Patent and that Caterpillar was aware that its actions
`
`would induce infringement or that it was willfully blind to the fact that its actions would induce
`
`infringement.
`
`
`
`-3-
`
`
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 5 of 11 PageID #: 30308
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`18.
`
`Proof rebutting Wirtgen America’s assertion that Caterpillar has willfully infringed
`
`claims 1, 23, 30, and 32 of the ’268 Patent.
`
`II.
`
`VALIDITY
`
`H.
`
`Prior Art
`
`i.
`
`’641 Patent
`
`19.
`
`Proof that the following references are prior art to the ’641 Patent:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`Caterpillar’s PM-565 machine (the “PM-565”);
`
`Caterpillar’s PM-465 machine (the “PM-465”);
`
`U.S. Patent No. 4,929,121 (“Lent”);
`
`U.S. Patent No. 6,152,648 (“Gfroerer”); and
`
`U.S. Patent No. 5,879,056 (“Breidenbach”).
`
`ii.
`
`’268 Patent
`
`20.
`
`Proof that the following references are prior art to the ’268 Patent:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`the PM-465;
`
`the PM-565;
`
`U.S. Patent No. 5,687,809 (“Braud”);
`
`U.S. Patent No. 5,545,090 (“Kirschey”); and
`
`U.S. Patent Application Publication No. US 2004/0081014 (“Chanasyk”).
`
`iii.
`
`’788 Patent
`
`21.
`
`Proof that the following references are prior art to the ’530 Patent:
`
`a.
`
`b.
`
`c.
`
`d.
`
`the PM-465;
`
`the PM-565;
`
`U.S. Patent Application Publication No. 2002/0047301 (“Davis”); and
`
`U.S. Patent Application Publication No. 2002/015948 (“Brabec”).
`
`
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`-4-
`
`
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 6 of 11 PageID #: 30309
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`iv.
`
`’474 Patent
`
`22.
`
`Proof that the following references are prior art to the ’474 Patent:
`
`a.
`
`b.
`
`c.
`
`d.
`
`the PM-465;
`
`the PM-565;
`
`Davis; and
`
`Brabec.
`
`v.
`
`’972 Patent
`
`23.
`
`Proof that the following references are prior art to the ’972 Patent:
`
`a.
`
`b.
`
`c.
`
`the PM-465;
`
`the PM-565; and
`
`RoadTec’s RX-500 machine (the “RX-500).
`
`I.
`
`Anticipation
`
`i.
`
`’641 Patent
`
`24.
`
`Proof by clear and convincing evidence that Claim 11 of the ’641 Patent is invalid
`
`as anticipated by the PM-465.
`
`ii.
`
`’474 Patent
`
`25.
`
`Proof by clear and convincing evidence that any of Claims 19 and 21 of the ’474
`
`Patent are invalid as anticipated by the PM-465.
`
`26.
`
`Proof by clear and convincing evidence that any of Claims 19 and 21 of the ’474
`
`Patent are invalid as anticipated by the PM-565.
`
`iii.
`
`’972 Patent
`
`27.
`
`Proof by clear and convincing evidence that Claims 13 and 27 of the ’972 Patent
`
`are invalid as anticipated by the PM-465.
`
`
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`-5-
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 7 of 11 PageID #: 30310
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`28.
`
`Proof by clear and convincing evidence that Claims 13 and 27 of the ’972 Patent
`
`are invalid as anticipated by the PM-565.
`
`29.
`
`Proof by clear and convincing evidence that Claims 13 and 27 of the ’972 Patent
`
`are invalid as anticipated by the RX-500.
`
`30.
`
`Proof by clear and convincing evidence that Claim 15 of the ’972 Patent is invalid
`
`as anticipated by the PM-465.
`
`J.
`
`Obviousness
`
`i.
`
`’641 Patent
`
`31.
`
`Proof by clear and convincing evidence that Claim 11 of the ’641 Patent is invalid
`
`as obvious in view of the PM-465 and the knowledge of a person of ordinary skill in the art
`
`(“POSA”).
`
`32.
`
`Proof by clear and convincing evidence that Claim 11 of the ’641 Patent is invalid
`
`as obvious in view of the PM-565 and the knowledge of a POSA.
`
`33.
`
`Proof by clear and convincing evidence that Claim 11 of the ’641 Patent is invalid
`
`as obvious in view of the PM-465 or PM-565, Lent and the knowledge of a POSA.
`
`34.
`
`Proof by clear and convincing evidence that Claim 11 of the ’641 Patent is invalid
`
`as obvious in light of the PM-465 or PM-565 in view of Lent, Gfroerer, or Breidenbach, and the
`
`knowledge of a POSA.
`
`35.
`
`Proof by clear and convincing evidence that Claims 11 and 18 of the ’641 Patent
`
`are invalid as obvious in light of the PM-465 or PM-565 in view of Lent, Gfroerer, or Breidenbach,
`
`and the knowledge of a POSA.
`
`ii.
`
`’268 Patent
`
`36.
`
`Proof by clear and convincing evidence that Claims 1, 23, 30, and 32 of the ’268
`
`Patent are invalid as obvious in view of the PM-465 or PM-565 and the knowledge of a POSA.
`
`
`
`-6-
`
`
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 8 of 11 PageID #: 30311
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`37.
`
`Proof by clear and convincing evidence that Claims 1, 23, 30, and 32 of the ’268
`
`Patent are invalid as obvious in view of the PM-465 or PM-565, Braud, and the knowledge of a
`
`POSA.
`
`38.
`
`Proof by clear and convincing evidence that Claims 1, 23, 30, and 32 of the ’268
`
`Patent are invalid as obvious in view of the PM-465 or PM-565, Braud, Kirschey, or Chanasyk,
`
`and the knowledge of a POSA.
`
`iii.
`
`’788 Patent
`
`39.
`
`Proof by clear and convincing evidence that Claim 5 of the ’788 Patent is invalid
`
`as obvious over the PM-565 in view of Davis.
`
`40.
`
`Proof by clear and convincing evidence that Claim 5 of the ’788 Patent is invalid
`
`as obvious over the PM-465 in view of Davis.
`
`41.
`
`Proof by clear and convincing evidence that Claim 5 of the ’788 Patent is invalid
`
`as obvious over Davis in view of Brabec.
`
`iv.
`
`’474 Patent
`
`42.
`
`Proof by clear and convincing evidence that Claims 19 and 21 of the ’474 Patent
`
`are invalid as obvious in view of Davis over Brabec.
`
`v.
`
`’972 Patent
`
`43.
`
`Proof by clear and convincing evidence that Claim 12 of the ’972 Patent is invalid
`
`as obvious in view of the PM-465 over the knowledge of a POSA.
`
`44.
`
`Proof by clear and convincing evidence that Claim 12 of the ’972 Patent is invalid
`
`as obvious in view of the PM-565 over the knowledge of a POSA.
`
`45.
`
`Proof by clear and convincing evidence that Claim 12 of the ’972 Patent is invalid
`
`as obvious in view of the RX-500 over the knowledge of a POSA.
`
`
`
`-7-
`
`
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 9 of 11 PageID #: 30312
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`46.
`
`Proof by clear and convincing evidence that Claim 15 of the ’972 Patent is invalid
`
`as obvious in view of the PM-465 over the PM-565.
`
`47.
`
`Proof by clear and convincing evidence that Claim 15 of the ’972 Patent is invalid
`
`as obvious in view of the PM-465 in view of the RX-500.
`
`K.
`
`Enablement, Written Description, Definiteness
`
`i.
`
`’641 Patent
`
`48.
`
`Proof by clear and convincing evidence that Claims 11 and 18 of the ’641 Patent
`
`are invalid as indefinite.
`
`ii.
`
`’268 Patent
`
`49.
`
`Proof by clear and convincing evidence that Claims 1, 23, 30, and 32 of the ’268
`
`Patent are invalid as indefinite.
`
`iii.
`
`’788 Patent
`
`50.
`
`Proof by clear and convincing evidence that Claim 5 of the ’788 Patent are invalid
`
`due to lack of enablement.
`
`51.
`
`Proof by clear and convincing evidence that Claim 5 of the ’788 Patent are invalid
`
`due to lack of adequate written description.
`
`iv.
`
`’474 Patent
`
`52.
`
`Proof by clear and convincing evidence that Claims 19 and 21 of the ’474 Patent
`
`are invalid due to lack of enablement.
`
`53.
`
`Proof by clear and convincing evidence that Claims 19 and 21 of the ’474 Patent
`
`are invalid due to lack of adequate written description.
`
`III. DAMAGES
`
`A.
`
`Reasonable Royalty
`
`54.
`
`Proof rebutting Wirtgen America’s evidence regarding the amount of damages it is
`
`
`
`-8-
`
`
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 10 of 11 PageID #: 30313
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`entitled to damages in the form of a reasonable royalty for Caterpillar’s alleged infringement of
`
`any asserted claim of the ’268, ’788, ’641, ’309, ’530, ’972, and/or ’316 Patents.
`
`B.
`
`55.
`
`Enhanced Damages
`
`Proof rebutting Wirtgen America’s assertion that it is entitled to enhanced damages
`
`due to alleged willful infringement of any asserted patent pursuant to 35 U.S.C. § 284.
`
`56.
`
`Proof rebutting the total amount of enhanced damages, if any, that Wirtgen America
`
`is entitled to for any willful infringement of any asserted patent.
`
`C.
`
`57.
`
`Pre- and Post-Judgment Interest
`
`Proof rebutting Wirtgen America’s assertion that it is entitled to any pre-judgment
`
`and/or post-judgment interest.
`
`D.
`
`58.
`
`Attorneys’ Fees and Costs
`
`Proof rebutting Wirtgen America’s assertion that the case is exceptional pursuant
`
`to 35 U.S.C. § 285.
`
`59.
`
`Proof that Caterpillar is entitled to a finding that the case is exceptional pursuant to
`
`35 U.S.C. § 285.
`
`60.
`
`Proof rebutting Wirtgen America’s assertion that is entitled to an award of its costs
`
`and attorneys’ fees.
`
`61.
`
`E.
`
`62.
`
`Proof that Caterpillar is entitled to an award of its costs and attorneys’ fees.
`
`Ongoing Royalties
`
`Proof rebutting Wirtgen America’s assertion, if any, that it is entitled to an ongoing
`
`royalty or other damages or an accounting in relation to ongoing infringement, to the extent an
`
`injunction is not issued.
`
`
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`-9-
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`Case 1:17-cv-00770-JDW Document 299-11 Filed 01/29/24 Page 11 of 11 PageID #: 30314
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`IV.
`
`EQUITABLE ISSUES
`
`A.
`
`63.
`
`Equitable Estoppel
`
`Proof that Wirtgen America’s claims of alleged infringed of the Asserted Patents
`
`against Caterpillar are barred due to equitable estoppel.
`
`B.
`
`64.
`
`Prosecution Laches
`
`Proof that Wirtgen America’s claims of alleged infringement of the asserted claims
`
`of the ’268 and ’530 Patents against Caterpillar are barred due to prosecution laches.
`
`C.
`
`65.
`
`Intervening Rights
`
`Proof that Wirtgen America’s claims of alleged infringement of the asserted claims
`
`of the ’268 Patent against Caterpillar are barred due to the doctrine of intervening rights.
`
`D.
`
`66.
`
`Collateral Estoppel
`
`Proof that Wirtgen America is collaterally estopped from arguing that Claims 10
`
`and 29 of the ’309 Patent are valid.
`
`E.
`
`67.
`
`Injunctive Relief
`
`Proof rebutting Wirtgen America’s assertion that it is entitled to a permanent
`
`injunction, including proof rebutting Wirtgen America’s assertion that it will be irreparably
`
`harmed by Caterpillar’s alleged wrongful conduct, and proof rebutting the assertion that the
`
`balance of equities favors entry of a permanent injunction, and whether a permanent injunction is
`
`in the public interest.
`
`
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`
`
`-10-
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`
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