Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 1 of 13 PageID #: 29909
`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 1 of 13 PagelD #: 29909
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`EXHIBIT 1B
`EXHIBIT 1B
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`

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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 2 of 13 PageID #: 29910
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
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`WIRTGEN AMERICA, INC.,
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`CATERPILLAR INC.,
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`
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`
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`
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`Civil Action No. 1:17-cv-00770-JDW
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`JURY TRIAL DEMANDED
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`Defendant/Counterclaim-Plaintiff.
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`
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`
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`DEFENDANT CATERPILLAR, INC.’S STATEMENT OF
`FACTS THAT REMAIN TO BE LITIGATED
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`
`
`

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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 3 of 13 PageID #: 29911
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`Pursuant to D. Del. LR 16.3(c)(4), Defendant Caterpillar, Inc. (“Caterpillar”) identifies the
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`following issues of fact that remain to be litigated. This statement is based on the arguments
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`Caterpillar expects to make, as well as its understanding of the arguments Plaintiff Wirtgen
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`America, Inc. (“Wirtgen America”) is likely to make, at trial. This statement is based on the
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`current status of the case, and the Court’s rulings to date. Caterpillar reserves the right to
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`supplement the instant statement in response to the Court’s subsequent rulings, or if Wirtgen
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`America should seek to introduce different legal arguments than expected. Should the Court
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`determine that any of the issues listed and discussed below are issues of fact, and not law,
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`Caterpillar incorporates such issues by reference into its Statement of Issues of Law that Remain
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`to be Litigated (Exhibit 2B). To the extent Caterpillar’s Statement of Issues of Law that Remain
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`to be Litigated contains issues that the Court deems are issues of fact, those issues are incorporated
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`herein by reference. The authorities cited herein are exemplary and not exhaustive, and Caterpillar
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`reserves the right to rely on authority not specifically cited in the instant statement, including
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`authority cited by Wirtgen America in its Statement of Issues of Fact to be Litigated (Exhibit 1A).
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`Caterpillar further reserves all rights to issues of fact or law disposed of by the Court’s orders at
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`D.I. 272, 273 for purposes of appeal and/or in the event of a relevant remand.
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`I.
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`VALIDITY1
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`A.
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`Prior Art
`
`i.
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`’641 Patent
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`1.
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`Whether Caterpillar can prove that the following references are prior art to the ’641
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`Patent:
`
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`1 The Court has previously resolved claim 17 of the ’641 Patent by finding that it is not
`infringed. If that issue were to be reversed, Caterpillar would allege invalidity of claim 17
`consistent with its invalidity contentions and its experts’ reports.
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`
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`-2-
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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 4 of 13 PageID #: 29912
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`a.
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`b.
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`c.
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`d.
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`e.
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`Caterpillar’s PM-565 machine (the “PM-565”);
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`Caterpillar’s PM-465 machine (the “PM-465”);
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`U.S. Patent No. 4,929,121 (“Lent”);
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`U.S. Patent No. 6,152,648 (“Gfroerer”); and
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`U.S. Patent No. 5,879,056 (“Breidenbach”).
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`ii.
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`’268 Patent
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`2.
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`Whether Caterpillar can prove that the following references are prior art to the ’268
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`Patent:
`
`a.
`
`b.
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`c.
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`d.
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`e.
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`the PM-465;
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`the PM-565
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`U.S. Patent No. 5,687,809 (“Braud”);
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`U.S. Patent No. 5,545,090 (“Kirschey”); and
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`U.S. Patent Application Publication No. US 2004/0081014 (“Chanasyk”).
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`iii.
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`’788 Patent
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`3.
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`Whether Caterpillar can prove that the following references are prior art to the ’788
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`Patent:
`
`a.
`
`b.
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`c.
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`d.
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`the PM-465;
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`the PM-565;
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`U.S. Patent Application Publication No. 2002/0047301 (“Davis”); and
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`U.S. Patent Application Publication No. 2002/015948 (“Brabec”).
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`iv.
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`’474 Patent
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`4.
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`Whether Caterpillar can prove that the following references are prior art to the ’474
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`Patent:
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`-3-
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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 5 of 13 PageID #: 29913
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`a.
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`b.
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`c.
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`d.
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`the PM-465;
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`the PM-565;
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`Davis; and
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`Brabec.
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`v.
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`’972 Patent
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`5.
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`Whether Caterpillar can prove that the following references are prior art to the ’972
`
`Patent:
`
`a.
`
`b.
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`c.
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`the PM-465;
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`the PM-565; and
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`RoadTec’s RX-500 machine (the “RX-500).
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`B.
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`Anticipation
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`i.
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`’641 Patent
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`6.
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`Whether Caterpillar can prove by clear and convincing evidence that Claim 11 of
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`the ’641 Patent is invalid as anticipated by the PM-465.
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`ii.
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`’474 Patent
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`7.
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`Whether Caterpillar can prove by clear and convincing evidence that any of Claims
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`19 and 21 of the ’474 Patent are invalid as anticipated by the PM-465.
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`8.
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`Whether Caterpillar can prove by clear and convincing evidence that any of Claims
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`19 and 21 of the ’474 Patent are invalid as anticipated by the PM-565.
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`iii.
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`’972 Patent
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`9.
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`Whether Caterpillar can prove by clear and convincing evidence that Claims 13 and
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`27 of the ’972 Patent are invalid as anticipated by the PM-465.
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`10. Whether Caterpillar can prove by clear and convincing evidence that Claims 13 and
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`27 of the ’972 Patent are invalid as anticipated by the PM-565.
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`
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`-4-
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`11. Whether Caterpillar can prove by clear and convincing evidence that Claims 13 and
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`27 of the ’972 Patent are invalid as anticipated by the RX-500.
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`12. Whether Caterpillar can prove by clear and convincing evidence that Claim 15 of
`
`the ’972 Patent is invalid as anticipated by the PM-465.
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`C.
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`Obviousness
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`i.
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`’641 Patent
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`13. Whether Caterpillar can prove by clear and convincing evidence that Claims 11 and
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`15 (and therefore also dependent claim 18) of the ’641 Patent are invalid as obvious in view of the
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`PM-465 and the knowledge of a person of ordinary skill in the art (“POSA”).
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`14. Whether Caterpillar can prove by clear and convincing evidence that Claims 11 and
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`15 (and therefore also dependent claim 18) of the ’641 Patent are invalid as obvious in view of the
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`PM-565 and the knowledge of a POSA.
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`15. Whether Caterpillar can prove by clear and convincing evidence that Claims 11 and
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`15 (and therefore also dependent claim 18) of the ’641 Patent are invalid as obvious in view of the
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`PM-465 or PM-565, Lent, and the knowledge of a POSA.
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`16. Whether Caterpillar can prove by clear and convincing evidence that Claims 11 and
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`15 of the ’641 Patent are invalid as obvious in light of the PM-465 or PM-565 in view of Lent,
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`Gfroerer, or Breidenbach, and the knowledge of a POSA.
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`17. Whether Caterpillar can prove by clear and convincing evidence that Claims 11,
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`15, and 18 of the ’641 Patent are invalid as obvious in light of the PM-465 or PM-565 in view of
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`Lent, Gfroerer, or Breidenbach, and the knowledge of a POSA.
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`ii.
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`’268 Patent
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`18. Whether Caterpillar can prove by clear and convincing evidence that Claims 1, 23,
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`30, and 32 of the ’268 Patent are invalid as obvious in view of the PM-465 or PM-565 and the
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`
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`-5-
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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 7 of 13 PageID #: 29915
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`knowledge of a POSA.
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`19. Whether Caterpillar can prove by clear and convincing evidence that Claims 1, 23,
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`30, and 32 of the ’268 Patent are invalid as obvious in view of the PM-465 or PM-565, Braud, and
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`the knowledge of a POSA.
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`20. Whether Caterpillar can prove by clear and convincing evidence that Claims 1, 23,
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`30, and 32 of the ’268 Patent are invalid as obvious in view of the PM-465 or PM-565, Braud,
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`Kirschey, or Chanasyk, and the knowledge of a POSA.
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`iii.
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`’788 Patent
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`21. Whether Caterpillar can prove by clear and convincing evidence that Claim 5 of the
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`’788 Patent is invalid as obvious over the PM-565 in view of Davis.
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`22. Whether Caterpillar can prove by clear and convincing evidence that Claim 5 of the
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`’788 Patent is invalid as obvious over the PM-465 in view of Davis.
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`23. Whether Caterpillar can prove by clear and convincing evidence that Claim 5 of the
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`’788 Patent is invalid as obvious over Davis in view of Brabec.
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`iv.
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`’474 Patent
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`24. Whether Caterpillar can prove by clear and convincing evidence that Claims 19 and
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`21 of the ’474 Patent are invalid as obvious in view of Davis over Brabec.
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`v.
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`’972 Patent
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`25. Whether Caterpillar can prove 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.
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`26. Whether Caterpillar can prove 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.
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`
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`-6-
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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 8 of 13 PageID #: 29916
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`27. Whether Caterpillar can prove by clear and convincing evidence that Claim 12 of
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`the ’972 Patent is invalid as obvious in view of the RX-500 over the knowledge of a POSA.
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`28. Whether Caterpillar can prove 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.
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`29. Whether Caterpillar can prove 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.
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`D.
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`Enablement, Written Description, Definiteness
`
`i.
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`’641 Patent
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`30. Whether Caterpillar can prove by clear and convincing evidence that Claims 11,
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`15, and 18 of the ’641 Patent are invalid as indefinite.
`
`ii.
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`’268 Patent
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`31. Whether Caterpillar can prove by clear and convincing evidence that Claims 1, 23,
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`30, and 32 of the ’268 Patent are invalid as indefinite.
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`iii.
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`’788 Patent
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`32. Whether Caterpillar can prove by clear and convincing evidence that Claim 5 of the
`
`’788 Patent are invalid due to lack of enablement.
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`33. Whether Caterpillar can prove by clear and convincing evidence that Claim 5 of the
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`’788 Patent are invalid due to lack of adequate written description.
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`iv.
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`’474 Patent
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`34. Whether Caterpillar can prove by clear and convincing evidence that Claims 19 and
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`21 of the ’474 Patent are invalid due to lack of enablement.
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`35. Whether Caterpillar can prove by clear and convincing evidence that Claims 19 and
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`21 of the ’474 Patent are invalid due to lack of adequate written description.
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`-7-
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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 9 of 13 PageID #: 29917
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`II.
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`INFRINGEMENT2
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`A.
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`Infringement
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`i.
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`’641 Patent
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`36. Whether Wirtgen America can prove by a preponderance of the evidence that
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`Caterpillar directly infringed, and continues to literally infringe Claims 11 and 18 of the ’641
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`Patent by making, using, selling, offering to sell in the U.S., or importing into the U.S. Caterpillar’s
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`PM-310, PM-312, and PM-313 machines (collectively, the “PM-300 Series Machines”), PM-620
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`and PM-622 machines (collectively, the “PM-600 Series Machines”), and PM-820 and PM-825
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`machines (collectively the “PM-800 Series Machines”).
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`37. Whether Wirtgen America can prove by a preponderance of the evidence that
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`Caterpillar indirectly infringed, and continues to infringe—under inducement— Claims 11 and 18
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`of the ’641 Patent by actively inducing Caterpillar dealers and customers to operate Caterpillar’s
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`PM-300, PM-600, and PM-800 Series Machines in a directly infringing manner.
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`ii.
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`’268 Patent
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`38. Whether Wirtgen America can prove by a preponderance of the evidence that
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`Caterpillar directly infringed, and continues to literally infringe Claims 30 and 32 of the ’268
`
`Patent by making, using, selling, offering to sell in the U.S., or importing into the U.S. Caterpillar’s
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`PM-600 and PM-800 Series Machines, and Caterpillar’s RM-600 and RM-800 machines
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`(collectively, the “RM Series Machines”).
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`39. Whether Wirtgen America can prove by a preponderance of the evidence that
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`Caterpillar indirectly infringed, and continues to infringe—under inducement—Claims 1 and 23
`
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`2 Wirtgen America is not accusing any of Caterpillar’s redesigned machines of infringing the
`’641,’530, or ’309 Patents.
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`-8-
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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 10 of 13 PageID #: 29918
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`of the ’268 Patent by actively inducing Caterpillar customers to operate Caterpillar’s PM-600, PM-
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`800, and RM Series Machines in a directly infringing manner.
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`iii.
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`’530 Patent
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`40. Whether Wirtgen America can prove by a preponderance of the evidence that
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`Caterpillar directly infringed, and continues to literally infringe Claims 5, 13, 16, and 22 of the
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`’530 Patent by making, using, selling, offering to sell in the U.S., or importing into the U.S.
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`Caterpillar’s PM-600 and PM-800 Series Machines.
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`iv.
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`’788 Patent
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`41. Whether Wirtgen America can prove by a preponderance of the evidence that
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`Caterpillar directly infringed, and continues to literally infringe—literally or under the doctrine of
`
`equivalents—Claim 5 of the ’788 Patent by making, using, selling, offering to sell in the U.S., or
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`importing into the U.S. Caterpillar’s PM-600 and PM-800 Series Machines.
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`42. Whether Wirtgen America is precluded—by the doctrine of prosecution history
`
`estoppel—from relying on the doctrine of equivalents to argue that a single display satisfies the
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`claim limitations of the ’474 and ’788 Patents of “a plurality of indication and setting devices[.]”
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`v.
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`’474 Patent
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`43. Whether Wirtgen America can prove by a preponderance of the evidence that
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`Caterpillar directly infringed, and continues to infringe—literally or under the doctrine of
`
`equivalents—Claims 19 and 21 of the ’474 Patent by making, using, selling, offering to sell in the
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`U.S., or importing into the U.S. Caterpillar’s PM-600 and PM-800 Series Machines.
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`44. Whether Wirtgen America is precluded—by the doctrine of prosecution history
`
`estoppel—from relying on the doctrine of equivalents to argue that a single display satisfies the
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`claim limitations of the ’474 and ’788 Patents of “a plurality of indication and setting devices[.]”
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`-9-
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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 11 of 13 PageID #: 29919
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`vi.
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`’972 Patent
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`45. Whether Wirtgen America can prove by a preponderance of the evidence that
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`Caterpillar directly infringed, and continues to literally infringe Claims 12, 13, 15, and 27 of the
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`’972 Patent by using, selling, offering to sell in the U.S., or importing into the U.S. Caterpillar’s
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`PM-600 and PM-800 Series Machines.
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`vii.
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`’309 Patent
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`46. Whether Wirtgen America can prove by a preponderance of the evidence that
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`Caterpillar directly infringed, and continues to infringe—literally or under the doctrine of
`
`equivalents—Claims 10 and 29 of the ’309 Patent by making, using, selling, offering to sell in the
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`U.S., or importing into the U.S. Caterpillar’s PM-600 and PM-800 Series Machines.
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`B. Willful Infringement
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`i.
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`’641 Patent
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`47. Whether Wirtgen America can prove, by a preponderance of the evidence, that
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`Caterpillar’s alleged infringement of the ’641 Patent was willful.
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`ii.
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`’268 Patent
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`48. Whether Wirtgen America can prove, by a preponderance of the evidence, that
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`Caterpillar’s alleged infringement of the ’268 Patent was willful.
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`iii.
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`’530 Patent
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`49. Whether Wirtgen America can prove, by a preponderance of the evidence, that
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`Caterpillar’s alleged infringement of the ’530 Patent was willful.
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`iv.
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`’788 Patent
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`50. Whether Wirtgen America can prove, by a preponderance of the evidence, that
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`Caterpillar’s alleged infringement of the ’788 Patent was willful.
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`-10-
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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 12 of 13 PageID #: 29920
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`v.
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`’474 Patent
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`51. Whether Wirtgen America can prove, by a preponderance of the evidence, that
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`Caterpillar’s alleged infringement of the ’474 Patent was willful.
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`vi.
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`’972 Patent
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`52. Whether Wirtgen America can prove, by a preponderance of the evidence, that
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`Caterpillar’s alleged infringement of the ’972 Patent was willful.
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`vii.
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`’309 Patent
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`53. Whether Wirtgen America can prove, by a preponderance of the evidence, that
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`Caterpillar’s alleged infringement of the ’309 Patent was willful.
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`III. DAMAGES
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`A.
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`Reasonable Royalty
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`54. Whether Wirtgen America can prove, by a preponderance of the evidence, the
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`amount of damages it is entitled to damages in the form of a reasonable royalty for Caterpillar’s
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`alleged infringement of any asserted claim of the ’268, ’788, ’641, ’309, ’530, ’972, and/or ’309
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`Patents.
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`B.
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`Enhanced Damages
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`55. Whether Wirtgen America is entitled to enhanced damages due to alleged willful
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`infringement of any asserted patent pursuant to 35 U.S.C. § 284.
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`56.
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`The total amount of enhanced damages, if any, that Wirtgen America is entitled to
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`for any willful infringement of any asserted patent.
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`C.
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`Pre- and Post-Judgment Interest
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`57. Whether Wirtgen America is entitled to any pre-judgment and/or post-judgment
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`interest.
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`-11-
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`Case 1:17-cv-00770-JDW Document 299-2 Filed 01/29/24 Page 13 of 13 PageID #: 29921
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`D.
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`Attorneys’ Fees and Costs
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`58. Whether Wirtgen America is entitled to a finding that the case is exceptional
`
`pursuant to 35 U.S.C. § 285.
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`59. Whether Caterpillar is entitled to a finding that the case is exceptional pursuant to
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`35 U.S.C. § 285.
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`60. Whether Wirtgen America is entitled to an award of its costs and attorneys’ fees.
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`61. Whether Caterpillar is entitled to an award of its costs and attorneys’ fees.
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`E.
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`Injunctive Relief
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`62. Whether Wirtgen America is entitled to a permanent injunction pursuant to 35
`
`U.S.C. § 283, including whether Wirtgen America will be irreparably harmed by Caterpillar’s
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`alleged wrongful conduct, whether the balance of equities favors entry of a permanent injunction,
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`and whether a permanent injunction is in the public interest.
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`F.
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`Ongoing Royalties
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`63. Whether Wirtgen America is entitled to an ongoing royalty or other damages or an
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`accounting in relation to ongoing infringement, to the extent an injunction is not issued.
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`G.
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`Prosecution Laches
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`64. Whether 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.
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`H.
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`Intervening Rights
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`65. Whether 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.
`
`I.
`
`Collateral Estoppel
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`66. Whether Wirtgen America is collaterally estopped from arguing that Claims 10 and
`
`29 of the ’309 Patent are valid.
`
`
`
`-12-
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