Case 1:17-cv-00770-JDW Document 306 Filed 02/02/24 Page 1 of 13 PageID #: 30439
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`CATERPILLAR INC.
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`Defendant/Counterclaim-Plaintiff.
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`C.A. No. 17-770-JDW
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`JURY TRIAL DEMANDED
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`WIRTGEN AMERICA, INC.’S OMNIBUS BRIEF IN OPPOSITION TO
`CATERPILLAR’S MOTIONS IN LIMINE
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`Case 1:17-cv-00770-JDW Document 306 Filed 02/02/24 Page 2 of 13 PageID #: 30440
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`I.
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`TABLE OF CONTENTS
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`Wirtgen Should not be Precluded from Presenting Relevant Evidence about
`Wirtgen GmbH.....................................................................................................................1
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`A.
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`B.
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`There is no risk of confusion or evidence of conflation between Wirtgen
`America and Wirtgen GmbH. ..................................................................................1
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`The parties’ stipulation regarding Dr. Hahn’s testimony has nothing to do
`with Caterpillar’s broad motion to exclude other evidence. ....................................3
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`II. Wirtgen Should Not Be Precluded from Presenting Relevant Evidence Regarding
`Certain Road Milling Machines and Components Thereof, ITC-337-TA-1067. ................4
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`III. Wirtgen Should Not be Precluded from Discussing the Purpose and Benefits of
`the Patented Technology. .....................................................................................................6
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`IV.
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`Conclusion ...........................................................................................................................8
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`ii
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`Case 1:17-cv-00770-JDW Document 306 Filed 02/02/24 Page 3 of 13 PageID #: 30441
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`Cases
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`TABLE OF AUTHORITIES
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`Checkpoint Sys., Inc. v. All-Tag Sec. S.A.,
`No. 01-CV- 2223, 2007 WL 4730861 (E.D. Pa. Jan. 31, 2007) ...............................................5
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`ICU Med., Inc. v. RyMed Techs Inc.,
`752 F.Supp.2d 486 (D. Del. 2010) .............................................................................................4
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`Ingevity Corp. v. BASF Corp.,
`No. 18-1391-RGA, 2020 WL 8458071 (D. Del. Aug. 26, 2020) ..............................................4
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`QBE Ins. Corp. v. Jorda Enters.,
`277 F.R.D. 676 (S.D. Fla. 2012) ................................................................................................2
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`Statutes
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`28 U.S.C. § 1659(b) .........................................................................................................................4
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`iii
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`Case 1:17-cv-00770-JDW Document 306 Filed 02/02/24 Page 4 of 13 PageID #: 30442
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`Caterpillar’s three motions in limine seek overbroad preclusions of relevant evidence
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`without adequate justification or legal authority. All three should be denied in their entireties.
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`I.
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`Wirtgen Should not be Precluded from Presenting Relevant Evidence about Wirtgen
`GmbH.
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`Caterpillar moves to limit the evidence that Wirtgen may present at trial regarding
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`Wirtgen GmbH (Wirtgen America’s German parent company) under the pretext that testimony
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`about Wirtgen GmbH’s design and development of the patented technology would be confusing
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`to the jury. D.I. 289 (“MIL”) at 1. Caterpillar’s motion, however, provides no reason to believe
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`that the jury is likely to confuse Wirtgen America and Wirtgen GmbH. Outside of that initial
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`purported justification for the motion, Caterpillar does not even discuss alleged jury confusion.
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`Id. at 1–6.
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`Instead, Caterpillar’s motion reads like a discovery-sanction motion, arguing that because
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`Wirtgen GmbH is a foreign entity not a party to this case, and because Caterpillar never properly
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`pursued discovery in the district court case of Wirtgen GmbH, Wirtgen America should therefore
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`be precluded from disclosing to the jury any helpful context about the design and development of
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`the patented technology. Id. at 3–4. But Caterpillar’s motion does nothing to support its
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`entitlement to such a severe sanction—one that deprives the jury of helpful and important
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`background information.
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`A.
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`There is no risk of confusion or evidence of conflation between Wirtgen
`America and Wirtgen GmbH.
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`Caterpillar summarizes the rationale for its motion as “[g]iven Wirtgen America’s
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`strategic choice to disassociate itself from Wirtgen GmbH, any conflation of the two at trial
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`would be confusing to the jurors and prejudicial to Caterpillar.” Id. at 4. But Caterpillar’s desire
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`to make Wirtgen “live with the consequences” of its “deliberate decision to erect a wall” has
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`nothing to do with alleged juror confusion. Id. Indeed, there is no risk of juror confusion, and
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`1
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`Caterpillar identifies none. Every exhibit, every deposition, and every filing in this case has
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`consistently made clear which entity was responsible for which activities and the relationship
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`between the two. The jury will be fully capable of distinguishing Wirtgen American and its
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`German affiliate.
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`Once the thin pretext of juror confusion is dispelled, it is clear that Caterpillar merely
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`wants to use this motion to rectify what it sees as a “fundamental[] unfair[ness]” in its inability to
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`seek unlimited discovery from Wirtgen GmbH. Caterpillar cites QBE Ins. Corp. v. Jorda Enters.,
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`277 F.R.D. 676, 698 (S.D. Fla. 2012), for the proposition that a corporate witness cannot
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`disclaim all relevant knowledge at a deposition, and then be allowed to provide affirmative
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`testimony on those very topics at trial. Id. But that is not what Caterpillar’s motion seeks to
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`prevent, nor does Caterpillar cite any basis to accuse Wirtgen of intending to submit new
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`evidence at trial that conflicts with its witnesses’ prior testimony regarding Wirtgen GmbH.
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`Caterpillar’s overbroad motion seeks to preclude all information about the design and
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`development of the technology, the asserted patents, and any aspect of Wirtgen’s business that
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`involves Wirtgen GmbH. Id.at 4. The stated basis for this sweeping sanction is that Wirtgen
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`America’s corporate representative (Mr. Schmidt) did not know details about conception and
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`reduction to practice of the claimed inventions. Id. But conception and reduction to practice are
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`not actually at issue in this case as Wirtgen America has not sought to swear behind any prior art
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`references. Mr. Schmidt does know (and was prepared to be deposed on) extensive technical
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`information about the patented technology and the benefits of Wirtgen’s innovations over the
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`competition and the prior art. Caterpillar chose not to ask him any questions about that subject
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`matter in his deposition. Mr. Schmidt should not now be precluded from testifying about the
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`patented technology and its benefits on the ground that Wirtgen GmbH employees invented that
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`technology.
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`2
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`Case 1:17-cv-00770-JDW Document 306 Filed 02/02/24 Page 6 of 13 PageID #: 30444
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`B.
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`The parties’ stipulation regarding Dr. Hahn’s testimony has nothing to do with
`Caterpillar’s broad motion to exclude other evidence.
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`In support of its motion, Caterpillar quotes a stipulation about Dr. Hahn’s testimony in
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`which both parties agreed to limit the subject matter of his testimony. Id. at 5–6. Caterpillar
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`speculates that Wirtgen will violate this stipulation (it will not) and seeks to remedy that
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`hypothetical violation by seeking even broader preclusion on the introduction of any design and
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`development information about the patented technology. Id. at 6. Caterpillar’s attempt to over-
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`enforce an existing stipulation between the parties is improper and premature for a motion in
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`limine. If Wirtgen elicits testimony at trial that violates the parties’ stipulation regarding the
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`scope of Dr. Hahn’s testimony (it will not), then Caterpillar can object on that basis. But the
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`mere existence of a stipulation does not require enforcement by a motion in limine now, and it
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`does not support Caterpillar’s broader request to preclude all information about Wirtgen GmbH
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`or its role in developing the patented technology.
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`To the extent any of Wirtgen’s trial witnesses purportedly deviate from their prior
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`testimony, that is a credibility matter for cross-examination. It is inappropriate to blindly preempt
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`Wirtgen from offering any technological backstory based solely on the premise that Wirtgen’s
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`witnesses did not know every answer to every Caterpillar question during discovery. This is
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`particularly true when Caterpillar never once raised any discovery dispute regarding Wirtgen’s
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`preparation of its 30(b)(6) designees. But that is exactly what Caterpillar’s motion seeks to do.
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`Id. (seeking to preclude all of Wirtgen’s witnesses from “offering any evidence, testimony, or
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`making reference to” the “development” of the technology underlying the asserted patents,
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`Wirtgen GmbH’s research and development investments, and Wirtgen GmbH’s IP strategies—
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`despite Wirtgen having provided extensive testimony and evidence of these topics in discovery
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`3
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`already) (emphasis added). Caterpillar’s motion is overbroad, based on a false premise, and
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`would be disproportionate to the stated basis even if the premise were true. It should be denied.
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`II. Wirtgen Should Not Be Precluded from Presenting Relevant Evidence Regarding
`Certain Road Milling Machines and Components Thereof, ITC-337-TA-1067.
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`This Court has already found that the related ITC proceeding is relevant to this case. See,
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`e.g., D.I. 283 at 5 (“the ITC litigation is relevant”); see also id. (observing that objective facts,
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`like the outcome of the ITC investigation on certain issues, can be evidence of Caterpillar’s
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`subjective state of mind relevant to willfulness). Indeed, courts have found that ITC
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`investigations are relevant and admissible for the purpose of showing willfulness and the scienter
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`requirement for inducement. See Ingevity Corp. v. BASF Corp., No. 18-1391-RGA, 2020 WL
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`8458071, at *1 (D. Del. Aug. 26, 2020) (observing in order on motions in limine that ITC
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`proceedings were potentially relevant to willfulness); ICU Med., Inc. v. RyMed Techs Inc., 752
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`F.Supp.2d 486, 490 (D. Del. 2010) (denying motion in limine to exclude evidence of prior
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`litigations where the findings and rulings in those litigations was relevant to willful
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`infringement); 28 U.S.C. § 1659(b) (“the record of the proceeding before the United States
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`International Trade Commission shall be transmitted to the district court and shall be admissible
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`in the civil action”).
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`Nonetheless, Caterpillar seeks to preclude broad categories of evidence from the ITC that
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`would exclude evidence the Court has already found relevant, as well as prohibit Wirtgen from
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`using inconsistent witness testimony or exhibits from the ITC for impeachment purposes. MIL at
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`7. Caterpillar cites no authority for such a broad exclusion under circumstances similar to the
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`present. Instead, Caterpillar cites authority for the proposition that ITC investigations and
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`determinations are not binding and preclusive, id. at 8–9 (collecting cases), or examples of courts
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`excluding irrelevant ITC proceedings under very different circumstances, id. at 9–10 (citing
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`4
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`cases excluding copending ITC investigations where no determination was rendered, or ITC
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`investigations involving different patents).
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`But Caterpillar cites nothing to suggest that ITC proceedings are per se inadmissible,
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`especially where there are continuing accused sales following a final determination of
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`infringement at the ITC and a resulting allegation of willfulness in the district court. See id.at 10
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`(acknowledging that Checkpoint Sys., Inc. v. All-Tag Sec. S.A., No. 01-CV-2223, 2007 WL
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`4730861, at *1 (E.D. Pa. Jan. 31, 2007), admitted “evidence regarding the general ITC outcome”
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`as relevant and admissible).1 As discussed above, courts have held otherwise.
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`Caterpillar’s motion identifies three remedies that it seeks in connection with this motion.
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`First, Caterpillar seeks to exclude any written decisions from the ITC. Id. at 9–10. This remedy
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`appears largely moot. Wirtgen does not intend to introduce the ITC’s underlying opinions as
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`evidence, provided the relevant facts are established and not contested: Wirtgen sued Caterpillar
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`at the ITC alleging that the same machines accused here infringed the same ’530, ’309, and ’641
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`patents asserted here, Caterpillar continued selling the accused products during the pendency of
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`that investigation, the ITC determined that Caterpillar’s accused products infringed the asserted
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`patents, Caterpillar continued selling the accused products notwithstanding that finding, and the
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`Federal Circuit affirmed the ITC’s determination. These facts are admissible, and directly
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`relevant to willfulness.
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`Second, Caterpillar seeks to preclude characterization of source evidence from the ITC
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`proceeding. Id. at 10–11. In other words, Caterpillar has designated certain witness testimony
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`1 Checkpoint excluded evidence regarding some details of why the ITC outcome was as it was
`because the patent at issue in the ITC was a different patent than the one asserted in Checkpoint
`and because details beyond the general outcome were therefore likely to cause confusion. Here,
`evidence of the ITC outcome and certain details as to why the outcome was what it was are
`relevant because they relate to Caterpillar’s infringement of the same patents at issue here, and
`they do not present the same risk of confusion associated with different patents being at issue.
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`5
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`and exhibits from the ITC investigation as relevant evidence in this case, but does not want the
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`jury to know that this evidence came from the ITC investigation. Caterpillar provides no
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`rationale or justification for withholding this source of information from the jury. Indeed, it is
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`important for the jury to know the context and origins of the evidence, in order to assess the
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`credibility of and weight due to that evidence. The source of the evidence is also necessary for
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`laying foundation in the event that the evidence is relevant for impeachment purposes.
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`Finally, Caterpillar requests the opportunity to collaborate with Wirtgen to agree on a
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`stipulation of facts and preliminary and final jury instructions that explain the ITC proceeding
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`and limit the language that can be used at trial to explain the proceeding. The parties have
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`already worked together to prepare proposed jury instructions, and Caterpillar did not need a
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`motion in limine to obtain this collaboration. To the extent that Caterpillar wishes to develop an
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`additional stipulation of facts regarding the ITC, Caterpillar has not reached out to Wirtgen with
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`any request or proposal. If Caterpillar believes that the parties can reach a mutually agreeable
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`stipulation, then Wirtgen will of course consider Caterpillar’s proposal. But a motion in limine
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`ordering a collaborative stipulation that Caterpillar has not previously requested is premature and
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`improper. Thus, the motion to limit ITC-Related Evidence should be denied.
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`III. Wirtgen Should Not be Precluded from Discussing the Purpose and Benefits of the
`Patented Technology.
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`It is undisputed and clearly substantiated that milling machines are known in the art to be
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`top heavy and therefore at risk for tipping over, especially when operated on uneven ground. See
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`’309 patent at 2:4-16. The ’309 patent identifies this risk as the impetus for the claimed
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`invention:
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`The positive coupling according to the invention ensures that the road-building
`machine according to the invention has high stability, this being particularly
`important in a roadbuilding machine having a narrow track . . . .. The road-
`building machine according to the invention puts into practice virtually a floating
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`6
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`Case 1:17-cv-00770-JDW Document 306 Filed 02/02/24 Page 10 of 13 PageID #: 30448
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`mount of both the front axle and the rear axle, with the result that stability is
`decisively improved. The building machine is therefore capable of driving safely
`over surfaces with a relatively high inclination, without the risk of the machine
`overturning.
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`Id. at 3:1-11 (emphases added). Wirtgen’s expert, Dr. Lumkes, and Caterpillar’s own internal
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`documentation also acknowledge this risk and the recognized need in the art for improved
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`stability. See MIL at 12. Caterpillar’s desire for technology that promotes stability in milling
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`machines is relevant to infringement, willfulness, and damages.2
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`Caterpillar’s motion argues that because Wirtgen cannot prove specific instances where
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`Caterpillar’s machines would have tipped over but for Wirtgen’s patented technology, evidence
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`of tip overs in general is therefore irrelevant and prejudicial. Id. Not so. The value of the patented
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`technology and its desirability in the marketplace (which informs infringement, willfulness, and
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`damages) does not depend on direct evidence of actual tip-over prevention. Like any technology,
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`much of the value of the technology in milling machines comes from more general perceptions,
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`desires, and beliefs, even if the evidence supporting those perceptions, desires, and beliefs is
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`circumstantial or indirect. There is evidence in this case of Caterpillar’s own perceptions of the
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`value, as Caterpillar documented its analysis of tip-over events involving its machines, and the
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`role that four-sided stability (like that claimed in Wirtgen’s ’309 patent) plays in preventing tip
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`over. See, e.g., Wirtgen Trial Ex. 0274A.0005 (CAT_00055857 at 5).
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`At bottom, Caterpillar’s motion disputes the extent to which Wirtgen’s evidence
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`regarding tip overs supports the proposition for which Wirtgen’s expert cites it. Caterpillar
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`2 Caterpillar lumps together multiple potential purposes for evidence of tip over, only one of
`which is the purpose of unfairly prejudicing the jury into believing that the “accused products”
`were “unsafe or defective.” MIL at 12. But Caterpillar’s own argument debunks this purported
`purpose, because the accused products incorporate the ’309 patent. Whether they do so in a way
`that is unsafe or defective does not matter and there is no indication Wirtgen would suggest
`otherwise. The other identified purposes for evidence of tip over—to show that the ’309 patent
`has value and that Caterpillar desired it—are relevant, proper, and not unduly prejudicial. Id.
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`7
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`suggests that the evidence shows user error more than a problem with the machines themselves,
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`and that the patented technology did not fix the problem. MIL at 12. Those arguments go to the
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`weight to be afforded the evidence and its persuasiveness in supporting Dr. Lumkes’ opinions,
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`not its admissibility. Caterpillar should explore these alleged weaknesses of Wirtgen’s evidence
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`on cross examination of Wirtgen’s expert.
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`Finally, Caterpillar’s accusation that the only purpose of tip-over evidence is to unfairly
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`suggest that the accused machines are unsafe is incorrect on its face. Id. As discussed above, tip-
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`over evidence has numerous proper purposes, and stability against tip overs is identified in the
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`patent itself as a benefit of the claimed technology. Wirtgen should not be broadly precluded
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`from presenting evidence that providing improved stability against tip over was a benefit of the
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`’309 patent that had value in the industry generally and value to Caterpillar specifically.
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`IV.
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`Conclusion
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`For the foregoing reasons, the Court should deny Caterpillar’s three motions in limine.
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`8
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`Case 1:17-cv-00770-JDW Document 306 Filed 02/02/24 Page 12 of 13 PageID #: 30450
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
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`Attorneys for Wirtgen America, Inc.
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`Dated: February 2, 2024
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`OF COUNSEL:
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Dominic A. Rota
`Mark A. Kilgore
`PATTERSON INTELLECTUAL
`PROPERTY LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`dar@iplawgroup.com
`mak@iplawgroup.com
`
`
`- and -
`
`
`Daniel E. Yonan
`Paul A. Ainsworth
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
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`9
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`Case 1:17-cv-00770-JDW Document 306 Filed 02/02/24 Page 13 of 13 PageID #: 30451
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`CERTIFICATE OF SERVICE
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`I, Adam W. Poff Esquire, hereby certify that on February 2, 2024, I caused the foregoing
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`document to be served by email upon the following counsel:
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`Bindu A. Palapura
`Andrew L. Brown
`POTTER ANDERSON & CORROON, LLP
`1313 N. Market Street, 6th Floor
`Wilmington, DE 19801
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`James C. Yoon
`Ryan R. Smith
`Christopher Mays
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`jyoon@wsgr.com
`rsmith@wsgr.com
`cmays@wsgr.com
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`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI
`1301 Avenue of the Americas
`40th Floor
`New York, NY 10019
`lyen@wsgr.com
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`caterpillar@wsgr.com
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`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
`Attorneys for Plaintiff
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`