Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 1 of 20 PageID #: 30452
`
`THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF DELAWARE
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`))))))))))))
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff
`
`v.
`
`CATERPILLAR INC.,
`
`Defendant
`
`CATERPILLAR INC.’S OMNIBUS BRIEF IN OPPOSITION TO
`WIRTGEN AMERICA, INC.’S MOTIONS IN LIMINE
`
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, Delaware 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, California 94304
`Telephone: (650) 493-9300
`
`Lucy Yen
`Cassie L. Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, New York 10019
`Telephone: (212) 999-5800
`
`Dated: February 2, 2024
`11306526/11898.00005
`
`

`

`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 2 of 20 PageID #: 30453
`
`TABLE OF CONTENTS
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`PAGE
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`I. MIL No. I: Caterpillar Is Not Presenting New Opinions ...............................................1
`
`A.
`
`B.
`
`C.
`D.
`
`E.
`
`Caterpillar Timely Disclosed Expert Opinions on Lifting Position Sensors
`in the ’530 Patent .........................................................................................1
`Caterpillar Should Not Be Precluded from Presenting Its Non-
`Infringement Defense to the ’309 Patent .....................................................2
`Caterpillar Disclosed Its Hypothetical Negotiation Date Months Ago .......3
`There Are No Undisclosed Opinions on Non-Infringement of the ’972
`Patent............................................................................................................5
`Caterpillar Timely Disclosed Its Collateral Estoppel and Intervening
`Rights Defenses ...........................................................................................6
`
`II. MIL No. II: Caterpillar Is Entitled to Show Its Good-Faith Belief of Non-
`Infringement .............................................................................................................6
`
`III. MIL No. III: Dr. Klopp’s Opinions Constitute Proper and Admissible Expert
`Testimony ................................................................................................................9
`
`IV. MIL Nos. IV and V: Discussion of Other Claims and Patents Is Relevant and
`Necessitated by Wirtgen America’s Allegations ........................................................12
`
`A.
`
`B.
`
`C.
`
`Caterpillar’s Patents Related to Its Milling Machines Are Relevant to
`Damages and Willfulness ..........................................................................12
`Caterpillar’s Filing of Petitions Before the Patent Office Is Relevant to
`Rebut Willfulness.......................................................................................13
`Patents and Claims That Have Been Dropped by Wirtgen America Are
`Relevant Background and Rebut Willfulness ............................................14
`
`i
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`

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`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 3 of 20 PageID #: 30454
`
`TABLE OF AUTHORITIES
`
`PAGE
`
`CASES
`Advanced Tech. Incubator, Inc. v. Sharp Corp.,
`2010 WL 11451797 (E.D. Tex. Mar. 31, 2010) ................................................................13
`Boehringer Ingelheim Int’l GMBH v. Barr Lab’ys, Inc.,
`2008 WL 2756127 (D. Del. July 15, 2008) .........................................................................4
`Bos. Sci. Corp. v. Cook Med. LLC,
`2023 WL 2411277 (S.D. Ind. Feb. 2, 2023) ......................................................................13
`Canon, Inc. v. Color Imaging, Inc.,
`227 F. Supp. 3d 1303 (N.D. Ga. 2016) ..............................................................................13
`Cirba Inc. v. VMware, Inc.,
`2023 WL 3151853 (D. Del. Apr. 18, 2023) .......................................................................10
`Deckers Outdoor Corp. v. Romeo & Juliette, Inc.,
`2017 WL 5634993 (C.D. Cal. Oct. 6, 2017) ........................................................................8
`EMC Corp. v. Pure Storage, Inc.,
`154 F. Supp. 3d 81 (D. Del. 2016) .....................................................................................11
`EMC Corp. v. Pure Storage, Inc.,
`2016 WL 775742 (D. Del. Feb. 25, 2016) ...............................................................9, 10, 11
`Enova Tech. Corp. v. Initio Corp.,
`2013 WL 12156023 (D. Del. Jan. 31, 2013) ........................................................................9
`Ericsson, Inc. v. D-Link Sys., Inc.,
`773 F.3d 1201 (Fed. Cir. 2014)..............................................................................12, 14, 15
`Exmark Mfg. Co. Inc. v. Briggs & Stratton Power Prod. Grp., LLC,
`879 F.3d 1332 (Fed. Cir. 2018)............................................................................................9
`EZ Dock, Inc. v. Schafer Sys., Inc.,
`2003 WL 1610781 (D. Minn. Mar. 8, 2003) .....................................................................14
`G.W. Lisk Co., Inc. v. Power Packer N. Am., Inc.,
`2023 WL 3680079 (S.D. Iowa Apr. 13, 2023) ..................................................................14
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`579 U.S. 93 (2016) .............................................................................................................14
`Helios Software, LLC v. SpectorSoft Corp.,
`2015 WL 3653182 (D. Del. June 11, 2015) .....................................................................2, 3
`Hillman Grp., Inc. v. KeyMe, LLC,
`2021 WL 1248180 (E.D. Tex. Mar. 30, 2021) ............................................................13, 14
`
`ii
`
`

`

`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 4 of 20 PageID #: 30455
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`ICU Med., Inc., v. RyMed Techs., Inc.,
`752 F. Supp. 2d 486 (D. Del. 2010) .............................................................................14, 15
`McKesson Info. Sols. LLC v. Trizetto Grp., Inc.,
`2006 WL 940543 (D. Del. Apr. 11, 2006) .......................................................................2, 3
`Ohio Willow Wood Co. v. Alps S.., LLC,
`735 F.3d 1333 (Fed. Cir. 2013)..........................................................................................15
`Paone v. Microsoft Corp.,
`2013 WL 4048503 (E.D.N.Y. Aug. 9, 2013) .....................................................................14
`Retractable Techs. Inc. v. Becton, Dickinson & Co.,
`2009 WL 8725107 (E.D. Tex. Oct. 8, 2009) .....................................................................13
`Shopify Inc. v. Express Mobile, Inc.,
`2021 WL4288113 (D. Del. Sept. 21, 2021) .......................................................................10
`Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC,
`778 F.3d 1311 (Fed. Cir. 2015)..........................................................................................15
`Wesley Jessen Corp. v. Bausch & Lomb, Inc.,
`209 F. Supp. 2d 348 (D. Del. 2002), aff’d, 56 F. App’x 503 (Fed. Cir.
`2003) ....................................................................................................................................8
`Withrow v. Spears,
`967 F. Supp. 2d 982 (D. Del. 2013) .....................................................................................5
`Xodus Medical, Inc. v. Prime Medical, LLC,
`2022 WL 407090 (E.D. Tenn. Feb. 9, 2022) .....................................................................13
`RULES
`FED. R. CIV. P. 26 .................................................................................................................2, 3, 4, 6
`FED. R. CIV. P. 37(c) ....................................................................................................................3, 4
`Fed. R. Evid. 403 .............................................................................................................................9
`
`iii
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`

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`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 5 of 20 PageID #: 30456
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`Caterpillar objects to Wirtgen America’s motions in limine (“MILs”), which are grouped
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`into five categories, but include over a dozen sub-motions. Wirtgen America’s motions violate
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`the Court’s Policies and Procedures, Section V.A., which limits each of the parties to five (5)
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`motions in limine. Wirtgen America should be required to elect only five (5) motions in limine on
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`which to proceed. Caterpillar’s responses herein should not be deemed a waiver of this objection.
`
`Further, Caterpillar reserves the right to file additional motions in limine (Caterpillar previously
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`filed only three) in light of the Court’s forthcoming order excluding Dr. Pallavi Seth’s reasonable
`
`royalty analysis.
`
`I.
`
`MIL No. I: Caterpillar Is Not Presenting New Opinions
`
`A.
`
`Caterpillar Timely Disclosed Expert Opinions on Lifting Position Sensors in
`the ’530 Patent
`
`Caterpillar disclosed that it intended to argue that it does not meet the “lifting position
`
`sensors” limitation of claim 1 of the ’530 Patent over six years ago. In 2017, Caterpillar’s
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`engineering manager for the Accused Products, Eric Engelmann, submitted a written witness
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`statement where he specifically discussed the components at issue as being distinct and different:
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`

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`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 6 of 20 PageID #: 30457
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`D.I. 221-20 (RX-0993C at Q. 51). Wirtgen America cannot feign surprise about this defense,
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`which both parties have heavily litigated throughout the ITC and the instant Action. Id.; cf. D.I.
`
`283 at 7 (noting that production of ITC record and reference thereto is sufficient to satisfy Rule
`
`26”).
`
`Moreover, as a fact witness, Mr. Engelmann can provide fact testimony regarding the
`
`design and operation of the accused cold planer machines. See Helios Software, LLC v. SpectorSoft
`
`Corp., 2015 WL 3653182, at *1 (D. Del. June 11, 2015) (designer “may testify about the design
`
`and configuration of the accused products, and whether customers are told to configure them in
`
`certain ways”); see also McKesson Info. Sols. LLC v. Trizetto Grp., Inc., 2006 WL 940543, at *1
`
`(D. Del. Apr. 11, 2006) (“fact witnesses may testify as to their knowledge of whether the accused
`
`products perform a stated function”). There is no basis to limit Mr. Engelmann’s right to do so.
`
`Nor can Wirtgen America prematurely seek to limit Dr. Rakow’s testimony. Caterpillar
`
`does not intend to elicit opinions from Dr. Rakow that exceed the scope of his expert reports. But
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`contrary to Wirtgen America’s suggestion, Dr. Rakow already opined that the diagram above
`
`labels two separate components: a “sensor” and a “magnet (ring).” See Ex. 8 (Rakow Reb. Rept.)
`
`at 40-41. Consequently, Dr. Rakow already opined that Wirtgen America’s expert, Dr. Lumkes,
`
`failed to show how these two components satisfy the claim element given the stipulated
`
`construction. If Wirtgen America believes that Caterpillar’s experts are testifying outside the
`
`scope of their reports, then Wirtgen America’s objection should be addressed at the time of the
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`allegedly objectionable testimony.
`
`B.
`
`Caterpillar Should Not Be Precluded from Presenting Its Non-Infringement
`Defense to the ’309 Patent
`
`Wirtgen America seeks to exclude all testimony (fact and expert) about certain documents
`
`relating to a “4-sided stability pattern,” including fact testimony from Caterpillar’s own employees
`
`-2-
`
`

`

`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 7 of 20 PageID #: 30458
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`about Caterpillar’s own documents. D.I. 287 at 3-4.
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`At issue here are two Caterpillar documents relied upon by Wirtgen America’s expert (Dr.
`
`Lumkes) to show that the Accused Products have a “four-sided stability pattern.” Wirtgen
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`America illogically claims that although its own expert failed to meet its burden of proof on
`
`infringement, Caterpillar’s own employees cannot provide percipient knowledge about
`
`Caterpillar’s own documents, designs, and machines. Wirtgen America cites no legal authority—
`
`because it cannot—providing that a fact witness cannot testify about the contents of documents
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`for which foundation has been properly established. See Helios, 2015 WL 3653182, at *1;
`
`McKesson, 2006 WL 940543, at *1. With respect to Wirtgen America’s objection to “affirmative
`
`non-infringement opinions” (whatever that may mean), that appears to be a premature Rule 26
`
`objection, which Wirtgen America can preserve and make at trial.
`
`C.
`
`Caterpillar Disclosed Its Hypothetical Negotiation Date Months Ago
`
`Wirtgen America moves, under FED. R. CIV. P. 37(c), to preclude Caterpillar’s expert, Brett
`
`Reed, from offering an opinion from his expert report as to the date of the parties’ hypothetical
`
`negotiation. D.I. 287 at 6. Wirtgen America’s sole argument is its incorrect contention that
`
`Caterpillar did not disclose the existence of a 2014 prototype during fact discovery. Caterpillar
`
`did so, repeatedly.
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`During fact discovery, Wirtgen America deposed a Caterpillar engineering manager for the
`
`accused PM-600 machines (Bud Rife) on the subject of prototype machines. Mr. Rife testified
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`that he first saw a PM-600 prototype in 2015, sometime after it was first manufactured. See Ex. 9
`
`(Rife 2023 Dep. Tr.) at 145:21-148:17. Mr. Rife further testified that the prototype was built
`
`during a design phase known as “Gateway 4,” the produced report for which expressly depicts the
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`PM-600’s prototype being manufactured and tested in 2014. See id. at 95:16-18; Ex. 10
`
`(CAT_00009208 at slide 5) (produced to Wirtgen America in 2022) (PM600 “Proto Build Unit”
`
`-3-
`
`

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`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 8 of 20 PageID #: 30459
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`timeline in 2014). Likewise, additional documents produced in discovery in 2022 expressly
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`disclose the importation date of the 2014 PM-600 prototype. See Ex. 11 (CAT0099697) at -701,
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`-703 (7/8/14 meeting minutes discussing timing of prototype shipment). Thereafter, Caterpillar’s
`
`expert Brett Reed referenced this 2014 prototype date in his June 16, 2023 rebuttal expert report.
`
`See D.I. 292-1, Ex. A. at 66. Wirtgen America deposed Mr. Reed on August 11, 2023, questioning
`
`him extensively on the details of the 2014 prototype PM-600. See Ex. 12 (Reed Dep. Tr.) at 115:9-
`
`143:21.
`
`Wirtgen America had more than sufficient notice of the 2014 PM-600 prototype during
`
`discovery and a fair opportunity to examine Caterpillar’s fact witnesses and experts. Thus, Rule
`
`37 does not apply because Caterpillar did not withhold information regarding the 2014 prototype,
`
`given that Wirtgen America had full opportunity to conduct discovery and make rebuttal
`
`arguments. See Boehringer Ingelheim Int’l GMBH v. Barr Lab’ys, Inc., 2008 WL 2756127, at *2
`
`(D. Del. July 15, 2008) (finding compliance with Rule 26(e), even though infringement and
`
`invalidity contentions were not disclosed in interrogatory responses, when documents providing
`
`notice of such contentions—including expert reports—“were filed before the close of discovery”).
`
`As this Court has already held in this case, striking evidence is an “extreme sanction.” See
`
`D.I. 283 at 8. This is especially the case because the opinions at issue are critical to supporting
`
`Caterpillar’s damages theory. See id. at 9. Analyzing a motion under Rule 37(c) requires assessing
`
`the “Pennypack” factors: (1) prejudice or surprise, (2) ability to cure the prejudice, (3) disruption
`
`of the trial, (4) bad faith, and (5) importance of the excluded evidence. See id. at 8.
`
`Here, Wirtgen America makes no effort to assess any of the Pennypack factors. Even if it
`
`had, these factors weigh heavily against exclusion. Caterpillar disclosed the details of its 2014
`
`prototype during discovery, and Wirtgen America had a full opportunity to examine Caterpillar
`
`-4-
`
`

`

`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 9 of 20 PageID #: 30460
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`and its experts on this subject. See D.I. 279 at 4 (denying motion to exclude expert testimony
`
`because, inter alia, “Caterpillar had the opportunity to recross Drs. Giles and Meyer about the
`
`documents that they disclosed during their depositions”); see also D.I. 283 at 9 (citing Withrow v.
`
`Spears, 967 F. Supp. 2d 982, 1005 (D. Del. 2013) (noting that opportunity to depose expert can
`
`cure prejudice)). Wirtgen America’s damages expert, Dr. Seth, also responded to Mr. Reed’s
`
`opinions about the 2014 prototype in her July 7, 2023, reply expert report. See Ex. 13 (Seth Reply
`
`Rept.) ¶¶ 38, 83. In short, both parties’ respective witnesses and experts will be able to offer
`
`testimony on this subject. As for Caterpillar’s Interrogatory responses, which Wirtgen America
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`criticizes as deficient, Caterpillar in good faith reasonably provided dates of first shipments to
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`customers in response to an Interrogatory focusing on dates of sales and offers for sales—not dates
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`of first importation or use in the United States. There is, therefore, no prejudice, no need to cure
`
`any prejudice, and no bad faith. See D.I. 283 at 9 (“There’s no need to re-open discovery and
`
`delay the trial because Caterpillar had Dr. Lumkes’s report when he was deposed. There’s no bad
`
`faith on Wirtgen’s part, and this evidence is important because it impacts Wirtgen’s damages
`
`theory.”). As such, the Pennypack factors weigh against excluding Mr. Reed’s opinions.
`
`D.
`
`There Are No Undisclosed Opinions on Non-Infringement of the ’972 Patent
`
`Wirtgen America’s purported basis for its motion is that the Court construed “only when”
`
`to include “in the event that”—not just “during.” Wirtgen America then uses its self-serving
`
`interpretation of the Court’s Order (D.I. 272 at 14) to effectively seek a summary judgment ruling
`
`that because Caterpillar’s expert, Dr. Andrew Smith, allegedly failed to offer opinions based on
`
`the Court’s construction at summary judgment, Caterpillar cannot demonstrate that it does not
`
`meet claim 13 of the ’972 Patent.
`
`The entire premise of Wirtgen America’s improper motion in limine is flawed. Dr. Smith
`
`expressly opined that the Accused Products did not infringe, even under Wirtgen’s interpretation
`
`-5-
`
`

`

`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 10 of 20 PageID #: 30461
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`of the claim. See Ex. 14 (Smith Reb. Rept.) ¶¶ 166-67 (“[E]ven if one assumes arguendo that Dr.
`
`Lumkes’ interpretation . . . is supported . . . .”). At trial, Dr. Smith will testify consistently with
`
`his expert report. The Court should deny Wirtgen America’s belated summary judgment motion.
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`Even if it were viewed as a Rule 26 objection, Wirtgen America’s motion should be denied or
`
`deferred so that the Court can assess Dr. Smith’s opinions in context.
`
`E.
`
`Caterpillar Timely Disclosed Its Collateral Estoppel and Intervening Rights
`Defenses
`
`Wirtgen America falsely claims that Caterpillar did not disclose its collateral estoppel and
`
`intervening rights defenses. In fact, Caterpillar expressly disclosed both defenses in its pleadings
`
`and during fact discovery. See D.I. 62 (First Amended Answer) at 45 (“Intervening Rights” and
`
`“Other Equitable Defenses – Estoppel”); see also Ex. 15 (4/7/23 Suppl. Resps.) at 12 (response to
`
`Interrog. No. 25, explaining contention as to intervening rights) and 13 (response to Interrog. No.
`
`26, explaining contention as to collateral estoppel). Since these defenses were timely disclosed,
`
`Wirtgen America’s motion should be denied.1
`
`II.
`
`MIL No. II: Caterpillar Is Entitled to Show Its Good-Faith Belief of Non-
`Infringement
`
`Wirtgen America wrongly believes that in the absence of opinions of counsel, Caterpillar
`
`cannot demonstrate good-faith belief of non-infringement. Caterpillar intends to do so in a variety
`
`of ways, including through the testimony of supervising engineers who independently developed
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`Caterpillar products and who believe that their designs do not infringe any valid claims of Wirtgen
`
`America’s patents. Without citing a single legal authority in support, Wirtgen America seeks to
`
`exclude evidence on the personal views of the very engineers who are in charge of designing the
`
`1 Wirtgen America’s motion refers to intervening rights in the context of the ’530 Patent. However,
`Caterpillar has already informed Wirtgen America that the defense applies only to the ’268 Patent,
`not the ’530 Patent. This portion of Wirtgen America’s motion should be denied as moot.
`
`-6-
`
`

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`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 11 of 20 PageID #: 30462
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`Accused Products in this case. D.I. 287 at 8. Wirtgen America’s motion is meritless for the
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`following reasons: (1) Caterpillar consistently asserted its good-faith defense throughout this
`
`litigation; (2) testimony of Caterpillar witnesses is the type of evidence courts rely on when
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`assessing claims of willful and intentional infringement, even when defendants assert attorney-
`
`client privilege; and (3) a blanket prohibition on testimony related to “views of noninfringement”
`
`and “beliefs” is overbroad and premature. Wirtgen America can object at trial to any testimony or
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`evidence it deems inadmissible due to Caterpillar’s assertion of the attorney-client privilege, which
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`cannot be evaluated in a vacuum in the manner Wirtgen America proposes.
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`First, Wirtgen America contends that, prior to summary judgment briefing, Caterpillar
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`“had never previously advanced” a good-faith defense to willful infringement or specific intent to
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`infringe. See D.I. 287 at 8. This is simply false. Caterpillar has consistently denied Wirtgen
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`America’s claims of willful and intentional infringement. D.I. 62 ¶¶ 86, 117, 137, 180, 209, 229,
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`244, 269, 284, 299, 326, 366, 389. In its March 13, 2023 interrogatory response, Caterpillar set
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`forth its basis for “a good faith belief that it did not infringe any valid claim of Wirtgen America’s
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`Asserted Patents.” Ex. 16 (Resp. to Interrog. No. 29) at 17-24 (describing independent
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`development of accused features, differences between accused features and Wirtgen America’s
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`features, Caterpillar’s legacy machines with the same or similar features, and company-wide
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`compliance with the code of ethics). Caterpillar’s April 7, 2023 supplemental interrogatory
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`response further provides: “Caterpillar witnesses have testified that they personally had a good
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`faith belief that (1) the accused Caterpillar designs were different than what is claimed in Wirtgen
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`America’s Asserted Patents, and (2) Caterpillar complied with its IP policy and culture of
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`respecting the intellectual property of others.” Ex. 15 (Suppl. Resps. to Interrog. No. 29) at 23.
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`Caterpillar witnesses testified consistently during their depositions. Indeed, Wirtgen
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`-7-
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`

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`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 12 of 20 PageID #: 30463
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`America’s attorneys elicited testimony from Mr. Engelmann on his view of infringement, despite
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`now claiming that the testimony is irrelevant and should be precluded. D.I. 271-2, Ex. B at 278:18–
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`282:2. Caterpillar’s positions were timely disclosed, and Wirtgen American had an opportunity,
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`and did, pursue discovery on them.
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`Second, Wirtgen America’s claim that the views of individual witnesses on non-
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`infringement are “irrelevant” is similarly unfounded. Courts often rely on “employee testimony
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`provided by [defendant that] indicates that it did not believe that its materials infringed” to rebut
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`willfulness, even when the company maintains attorney-client privilege. Wesley Jessen Corp. v.
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`Bausch & Lomb, Inc., 209 F. Supp. 2d 348, 391 (D. Del. 2002), aff’d, 56 F. App’x 503 (Fed. Cir.
`
`2003) (finding infringement not willful based on employee witness testimony concerning
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`development of accused product and belief that accused product fell outside scope of the invention,
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`even though defendant “assert[ed] the attorney-client privilege”).
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`Finally, Wirtgen America’s motion to preclude any and all witness testimony on “views of
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`noninfringement” and “beliefs” is overbroad and premature. Caterpillar does not intend to present
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`testimony or evidence related to advice of counsel. Wirtgen America will have the opportunity to
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`object at trial to any testimony or evidence it believes improperly puts advice of counsel at issue.
`
`Deckers Outdoor Corp. v. Romeo & Juliette, Inc., 2017 WL 5634993, at *5 (C.D. Cal. Oct. 6,
`
`2017) (denying motion to preclude willfulness testimony as vague and overbroad because
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`“motions in limine should ‘rarely seek to exclude broad categories of evidence, as the court is
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`almost always better situated to rule on evidentiary issues in their factual context during trial’”).
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`Although it does not agree to a similar limitation, Wirtgen America seeks to impose a
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`premature, overbroad, and blanket prohibition on Caterpillar’s reliance on evidence related to other
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`proceedings. Wirtgen America’s use of the phrase “litigation-inspired positions” is ambiguous
`
`-8-
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`

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`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 13 of 20 PageID #: 30464
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`and overbroad. Caterpillar has confirmed that it does not intend to raise testimony or evidence
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`concerning advice of counsel. Otherwise, evidence of prior proceedings and their outcomes bears
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`on Caterpillar’s “state of mind at the time of the accused infringement,” which is highly relevant
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`to the question of willfulness and cannot be excluded. Exmark Mfg. Co. Inc. v. Briggs & Stratton
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`Power Prod. Grp., LLC, 879 F.3d 1332, 1353 (Fed. Cir. 2018). This is particularly true here,
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`where Wirtgen America has stated that it intends to rely on prior proceedings, including the ITC
`
`proceeding, to establish post-suit willful infringement. As such, rebuttal evidence, including that
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`Caterpillar designed around certain accused features and sought the CBP’s confirmation that such
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`design-arounds were non-infringing, unquestionably goes to Caterpillar’s state of mind at the time
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`of alleged post-suit infringement.
`
`III. MIL No. III: Dr. Klopp’s Opinions Constitute Proper and Admissible Expert
`Testimony
`
`Dr. Richard Klopp’s opinions in this matter are entirely proper. The law is clear that an
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`expert may testify as to the plain and ordinary meaning of patent language that has not been
`
`construed by the court; such testimony does not constitute “improper claim construction.” Dr.
`
`Klopp’s opinions at issue thus constitute proper and admissible expert opinions.2
`
`Dr. Klopp’s opinion concerning the definition of “deviation” relates to its plain and
`
`ordinary meaning and applies that definition to the facts of the case. Such testimony is routinely
`
`admitted by courts, especially when, as here, there is no suggestion that any of the opinions are
`
`inconsistent with any court-ordered construction. See, e.g., EMC Corp. v. Pure Storage, Inc., 2016
`
`2 To the extent Wirtgen America argues that Dr. Klopp is not qualified to offer opinions
`interpreting certain claim terms, it is effectively raising a Daubert motion, whose grounds Wirtgen
`America waived by failing to address them when it had an opportunity to do so. See, e.g., Enova
`Tech. Corp. v. Initio Corp., 2013 WL 12156023, at *1 (D. Del. Jan. 31, 2013) (denying motion in
`limine as “untimely Daubert motion” and on FRE 403 grounds).
`
`-9-
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`

`

`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 14 of 20 PageID #: 30465
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`WL 775742, at *4 (D. Del. Feb. 25, 2016) (“[P]arties may introduce evidence as to the plain and
`
`ordinary meaning of terms not construed by the Court to one skilled in the art.”); Cirba Inc. v.
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`VMware, Inc., 2023 WL 3151853, at *8 (D. Del. Apr. 18, 2023) (“While an expert witness is not
`
`allowed to deviate from the Court’s claim construction, that expert is allowed to provide opinions
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`reflecting the application of the Court’s claim construction to the facts of this case.”).
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`After reviewing Dr. Meyer’s opinions that were inconsistent with the plain and ordinary
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`meaning of the claim terms, Dr. Klopp testified that he “applied the claim construction according
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`to the plain and ordinary meaning of the words.” Ex. 17 (Klopp Dep. Tr.) at 185:20-186:14. He
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`further testified that after applying the Court’s construction of the claim language, it was his
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`opinion that a person of ordinary skill would understand, through the plain and ordinary meaning
`
`of the words, that any “deviation” would have to be expressed in a unit of length. See id. at 189:7-
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`17 (“So the Court construed deviation as a change, difference, or departure. So we can say
`
`detecting that -- the difference falls below a pre-determined distance. Below means less than…
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`[I]t’s asking for a number to be less than a distance and that’s what the words say”); see also, e.g.,
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`Shopify Inc. v. Express Mobile, Inc., 2021 WL4288113, at *29-30 (D. Del. Sept. 21, 2021)
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`(declining to exclude expert testimony regarding additional limitations to court’s claim
`
`construction, where additional limitations constituted factual premise of court’s construction).
`
`Dr. Klopp’s opinions regarding the claim language (1) “the milling drum is raised by a pre-
`
`determined amount” in the ’641 Patent; (2) “a sensing device . . . takes a lower limit position” in
`
`the ’641 Patent; and (3) “attached to” in the ’268 Patent (D.I. 287 at 10-12) are also proper. Dr.
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`Klopp applies the literal language of the claims, and opines on whether Accused Products fall
`
`within the relevant construction.
`
`These claim terms were not construed by the Court. See D.I. 168, 182. While Dr. Klopp
`
`-10-
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`

`

`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 15 of 20 PageID #: 30466
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`could have “introduce[d] evidence as to the plain and ordinary meaning of terms not construed by
`
`the Court” (EMC, 2016 WL 775742, at *4), Dr. Klopp does far less than that – he simply applies
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`the literal language of the claims:
`
`Patent Language
`“[T]he milling drum is raised by a pre-
`determined amount[.]” ’641 Patent 8:44-45.
`
`“[A] sensing device measuring towards the
`ground surface [] takes a lower limit position
`which corresponds
`to a pre-determined
`distance or to a minimum distance to be
`maintained between the milling drum [] and
`the ground surface[.]” ’641 Patent 8:46-51.
`
`“[T]he first subset includes at least the drive
`engine; and . . . wherein the first subset is
`attached to the machine frame[.]” ’268 Patent
`9:20-32.
`
`Dr. Klopp’s Opinion
`this
`“Dr. Meyer
`has
`not
`identified
`predetermined raise amount” – i.e., the claim
`requires a predetermined raise amount. Ex. 18
`(Klopp Reb. Rpt.) ¶ 193.
`Dr. Meyer “has not identified the ‘lower limit
`position’ at all”; and even the “fully lowered
`position” of the side plates or moldboard “has
`nothing to do with a minimum distance to be
`maintained between the drum and the ground”
`– i.e., the claim requires a specific lower limit
`position. Ex. 18 (Klopp Reb. Rpt.) ¶ 199.
`“[T]he engine in the Accused Products is
`attached to the pump drive gearbox, and not
`the machine frame” – i.e., the engine is not
`directly attached to the frame. Ex. 18 (Klopp
`Reb. Rpt.) ¶ 145.
`
`Furthermore, Dr. Klopp’s opinions at issue addressing “whether an accused device falls
`
`within the scope of a court’s claim construction are appropriate and raise a factual issue for the
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`jury to resolve.” EMC Corp. v. Pure Storage, Inc., 154 F. Supp. 3d 81, 109 (D. Del. 2016); see,
`
`e.g., Ex. 18 (Klopp Reb. Rpt.) ¶ 145 (“The Accused Products do not have a drive engine attached
`
`to the machine frame elastically with a lower spring stiffness. This is because the engine in the
`
`Accused Products is attached to the pump drive gearbox, and not the machine frame”); id. ¶ 193
`
`(“the operator typically would raise the Accused Products by a random amount that is not
`
`predetermined”); id. ¶ 198 (“an operator can raise or lower the moldboard to any position between
`
`the fully extended and the fully raised position (unless it hits the ground while being extended),
`
`and I fail to see how the choice of stopping point is ‘predetermined’”). For these reasons, Wirtgen
`
`America’s motion in limine should be denied.
`
`-11-
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`

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`Case 1:17-cv-00770-JDW Document 307 Filed 02/02/24 Page 16 of 20 PageID #: 30467
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`IV. MIL Nos. IV and V: Discussion of Other Claims and Patents Is Relevant and
`Necessitated by Wirtgen America’s Allegations
`
`Wirtgen America