Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 1 of 34 PageID #: 30494
`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 1 of 34 PagelD #: 30494
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`EXHIBIT 12
`EXHIBIT 12
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 1 of 34 PagelD #: 30494
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`EXHIBIT 12
`EXHIBIT 12
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 2 of 34 PageID #: 30495
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
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`Page 1
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` IN THE UNITED STATES DISTRICT COURT
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` FOR THE DISTRICT OF DELAWARE
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`___________________________________
`
`IN RE MATTER OF: )
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`WIRTGEN AMERICA, INC., )
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`Plaintiff/Counterclaim-Defendant, ) C.A. No.:
`
` vs. ) 1:17-cv-00770-JDW-MPT
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`CATERPILLAR, INC., )
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`Defendant/Counterclaim-Plaintiff. )
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`___________________________________)
`
` *** HIGHLY CONFIDENTIAL ***
`
` VIDEOTAPED DEPOSITION OF BRETT L. REED
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` PALO ALTO, CALIFORNIA
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` Friday, August 11, 2023
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`Stenographically Reported by:
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`HEATHER J. BAUTISTA, CSR, CRR, RPR, CLR
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`Realtime Systems Administrator
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`California CSR License #11600
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`Oregon CSR License #21-0005
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`Washington License #21009491
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`Nevada CCR License #980
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`Texas CSR License #10725
`
`______________________________________________________
`
` DIGITAL EVIDENCE GROUP
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` 1730 M Street, NW, Suite 812
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` Washington, D.C. 20036
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` (202) 232-0646
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
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`202-232-0646
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`
`
`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 3 of 34 PageID #: 30496
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
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`Page 6
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`as Mr. Jonathan Lee.
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` MR. LISTON: Good morning. This is Ian
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`Liston of Wilson Sonsini Goodrich & Rosati for the
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`defendant, Caterpillar, Inc., and the witness,
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`Mr. Brett Reed.
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` On the line with me today, I understand
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`Michelle Dang, a -- another attorney with Wilson
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`Sonsini may be joining us during the deposition.
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` THE VIDEOGRAPHER: Would the court reporter
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`please swear in the witness.
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` THE STENOGRAPHER: Good morning. My name
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`is Heather Bautista, and I am a certified
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`stenographer licensed by the State of California.
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`My license number is 11600.
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` This deposition and any transcript produced
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`therefrom will be handled pursuant to Federal Rule
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`of Civil Procedure Section 30.
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` As the deposition officer, I will be
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`retaining my duties and responsibilities under the
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`Code.
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` Please raise your right hand so I can swear
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`you in.
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
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`202-232-0646
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`
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 4 of 34 PageID #: 30497
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
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`Page 7
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` BRETT LAMAR REED,
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` having been first duly sworn, was examined
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`and testified as follows:
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` THE WITNESS: Yes, I do.
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` THE STENOGRAPHER: Thank you.
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` Please state your full name for the record.
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` THE WITNESS: Brett Lamar Reed.
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` THE STENOGRAPHER: Thank you.
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` Counsel, you can begin.
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` DIRECT EXAMINATION
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`BY MS. WELLS:
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` Q. Good morning, Mr. Reed.
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` A. Good morning.
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` Q. I know you've been deposed before, but just
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`to make sure everyone is on the same page, I'd like
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`to go over a couple of ground rules for today, if
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`that's okay.
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` A. Okay.
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` Q. So we have a court reporter here taking
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`down my questions and your answers, so it's
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`important that your answers be verbal, as opposed to
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`head nod or head shake.
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
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`202-232-0646
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
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`Brett L. Reed
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`adjustments you're referring to for the later date
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`would be upward, they would increase the royalty
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`Page 115
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`amount?
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` A. Correct; consistent with the concept of a
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`hold-up where -- where Wirtgen America would be
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`attempting to get larger amounts because of --
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`because of the imminence of the introduction of --
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`of additional PM-600 units around 2016.
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` Q. Why did you use 2014 as the date of your
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`hypothetical negotiation?
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` A. Well, it's addressed in my report, but
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`the -- the date of the hypothetical negotiation, my
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`understanding of -- of the law and my experience in
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`doing this on 30 patent infringement trials and
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`numerous other matters, is that the date of first
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`infringement is the first sell, offer to sell,
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`import, use of a product that -- that embodies the
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`accused functionality. And the -- the record
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`indicated that there was prototype units as well as
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`pilot units, and it was true with the PM-3XX. And
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`Dr. Seth actually pointed to their earliest of the
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`prototype for the PM-3XX, but it was also true with
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 6 of 34 PageID #: 30499
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
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`the PM-6XX, and the record identified that there
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`was -- the first serial number of the first build of
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`Page 116
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`the PM-6XX was imported in mid 2014. It was
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`delivered to Minnesota around July 4th, 2014.
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` Mr. Englemann -- I'm pronouncing that
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`wrong. I'm sorry.
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` Q. Englemann.
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` A. Mr. Englemann was -- was there at the time
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`and was part of the -- the group that received the
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`delivery of this unit. This unit had the capability
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`that's accused in the infringement, and it was used
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`throughout 2014, starting in July 2014, continued to
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`be used in 2015. Additional pilots were brought in
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`in 2015. So the first import was just before July,
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`2014. The first use was occurring in July 2014,
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`continuing.
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` So my understanding is that that would be
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`consistent with the -- with the date of first
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`infringement since these patents, all but two of
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`them, I believe, had previously issued.
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` Q. When you performed your analysis, did you
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`believe that the -- the prototype that had been --
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 7 of 34 PageID #: 30500
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
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`Brett L. Reed
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`Page 117
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`that you say had been imported in 2014 was accused
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`of infringement in this case?
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` A. It sounds like you're asking a legal
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`question, but what I confirmed with -- with -- with
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`Eric Englemann is that it was the first serial of
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`the build. It was built the same as the other
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`units. So it would be part of the products that
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`were accused under the initial build, Build 1A of
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`the PM-6XX.
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` Q. You understand that the prototype was never
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`sold?
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` A. I believe pilots were, but I think the
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`prototype was not sold. But, again, it was
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`imported; it was used.
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` Q. And you understand there were differences
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`between the prototype and the models that were
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`actually sold in the U.S.?
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` MR. LISTON: Object to form.
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` THE WITNESS: I -- I understand there could
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`be some differences. That's why I specifically
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`addressed with Mr. Englemann about the -- about the
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`particular capabilities that were accused by Wirtgen
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 8 of 34 PageID #: 30501
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
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`Page 118
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`America, and he confirmed that the -- and it's
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`addressed in my report; we can point to that, if --
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`if you like, but he confirmed that the capabilities
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`were, in fact, existing in that first serial number
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`of Build 1A.
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` Q. (By Ms. Wells) Sure.
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` If you could turn in your rebuttal report,
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`which is Exhibit 2, to Page 66, please. And if
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`you'll look, in particular, at Footnote 122 on Page
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`66 of your rebuttal report.
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` Four lines down there, you say, "There were
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`some design changes between the PD," which you say
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`in parenthesis, "prove to design which can be called
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`prototype and the pilot units."
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` Do you see that?
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` A. Yes.
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` Q. Is it your understanding that there were
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`differences between the prototype and the models
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`that were actually sold in the U.S.?
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` A. My understanding is, as it's stated right
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`here, there were some design changes between the PD
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`and the pilot units, and then I continue. "However,
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 9 of 34 PageID #: 30502
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
`
`Page 119
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`I understand the prototype had the accused
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`functionality."
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` Q. Yes. If we could pause there, there's no
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`cite for that.
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` What is your understanding that the
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`prototype had the accused functionality based on?
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` A. There is a cite here at the end of this
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`footnote, and it's consistent with what I just
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`testified to a few moments ago. This was confirmed
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`in a conversation with Mr. Eric Engelmann. Just
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`after -- just after the statement, "The serial
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`number for the prototype was JFCV0100," citing the
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`produced document, "the first day" -- "the first of
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`the 01A build" --
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` (Stenographer clarification.)
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` THE WITNESS: -- "of the PM-6XX."
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` Q. (By Ms. Wells) What are you saying was
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`confirmed in a conversation with Mr. Engelmann?
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` A. Well, among other things, the specific
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`question you just asked about. I'll state it again.
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`"However, I understand the prototype had the accused
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`functionality."
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 10 of 34 PageID #: 30503
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
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`Page 120
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` And then we also confirmed the timing of
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`the unit shipment, although I had a document that
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`showed that, but Mr. Engelmann also confirmed he had
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`actually recalled that it was the July 4th weekend
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`when -- when he received that shipment in Minnesota.
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`He -- he was part of the group that -- that received
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`the shipment, so to speak.
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` So part of this is coming from documents
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`that are cited in this footnote and others coming
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`from the last sentence in the footnote, which is the
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`confirmation with -- from my conversation with
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`Mr. Engelmann.
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` Q. The last sentence says it was confirmed in
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`a conversation with Mr. Engelmann.
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` Before you spoke with Mr. Engelmann, did
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`you understand that the prototype had the accused
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`functionality?
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` A. I had an understanding, but I needed
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`confirmation.
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` Q. What was your understanding based on?
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` A. Based on documents from Caterpillar
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`addressing the -- the gateway documents from
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 11 of 34 PageID #: 30504
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
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`Brett L. Reed
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`Page 121
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`Caterpillar addressing the plans for the PM-6XX
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`series and including some of the features that are
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`asserted by Wirtgen America and Dr. Seth to be
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`features that they associate with the accusations of
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`the patents in this case. So my expectation is that
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`these capabilities that were introduced in the
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`machine would have existed in the first serial
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`number, but I needed to confirm that with
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`Mr. Engelmann.
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` Q. When did you speak with Mr. Engelmann?
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` A. I had several conversations with
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`Mr. Engelmann. Many of them, Mr. Rife was -- was on
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`the call at the same time, but I believe -- I
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`believe, overall, I had four or five conversations
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`with Mr. Engelmann. This particular one certainly
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`would be before June 16th, 2023, but I don't
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`remember the particular day.
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` Q. How many conversations did you have with
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`Mr. Engelmann about whether the prototype had the
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`accused functionality?
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` A. I believe -- I believe it was one
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`conversation, and it was likely in the few days to a
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`Wirtgen America Inc. v. Caterpillar Inc.
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`Brett L. Reed
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`Page 122
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`week before this report, and it was after I was
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`aware of the documents that are cited in this page,
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`which -- which revealed that the prototype, and in
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`particular the serial number and the -- the fact it
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`was first of the 01A build that -- that this was all
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`taking place in mid 2014.
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` Q. Which documents are cited on this page that
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`support your understanding that the prototype had
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`the accused functionality?
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` A. I'd have to look at the documents, but --
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`but earlier, you asked a similar question, and I
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`answered that there were a variety of documents that
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`were addressing -- the gateway documents addressing
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`the introduction of the machine and some of the
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`capability of that, and that that was reflected
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`in -- in the prototype.
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` But, again, the confirmation to me -- the
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`key was the confirmation with Mr. Engelmann who --
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`who addressed the capabilities of that -- of that
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`first serial number.
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` Q. Your rebuttal report is 120 pages long.
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`How many pages of your rebuttal report do you
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
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`Brett L. Reed
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`estimate were written before your conversation with
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`Mr. Engelmann about whether the prototype had the
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`Page 123
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`accused functionality?
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` MR. LISTON: Object to the form.
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` THE WITNESS: Probably a very large portion
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`of it was written and -- and I certainly had the --
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`the expectation that the potential for -- for July
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`2014 hypothetical negotiation date would be -- would
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`be applicable. But because Dr. Seth's date was mid
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`2016, I was also evaluating that throughout all of
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`my work.
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` Q. (By Ms. Wells) And prior to your
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`conversation with Mr. Engelmann, your assumption
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`that the prototype had the accused functionality was
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`based on gateway documents?
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` A. That's my recollection; that the gateway
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`documents were addressing the -- the capabilities
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`that are accused in 2012-2013 time period when it
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`was even predicting dates for -- for a prototype and
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`for pilots that followed. So my expectation is
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`that -- that the products would -- would -- that the
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`first serial number of the Build 01A would have that
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 14 of 34 PageID #: 30507
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
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`Brett L. Reed
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`Page 124
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`capability. But, again, I needed to confirm that
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`with Mr. Engelmann.
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` Q. How many gateway documents do you recall
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`reviewing that supported your understanding that the
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`prototype had the accused functionality?
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` MR. LISTON: Object to form.
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` THE WITNESS: That's kind of hard to
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`answer, because there's a lot of similar documents
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`that -- that may be duplicates, but there were a
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`variety of gateway documents that addressed the
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`different features and functionality in the cases;
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`as I mentioned in my report, dozens and dozens of
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`features and functionality. But -- but, generally,
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`the features that Dr. Seth points to that she
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`associates with -- with asserted patents are
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`identified in those documents.
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` Q. (By Ms. Wells) And other than the gateway
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`documents, was there any other evidence that
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`supported your understanding that the prototype had
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`the accused functionality before you had your
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`conversation with Mr. Engelmann?
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` MR. LISTON: Object to the form.
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 15 of 34 PageID #: 30508
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
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`Brett L. Reed
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`Page 125
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` THE WITNESS: I guess the other thing that
`
`I was -- I was aware of that would be responsive to
`
`your question is the knowledge from the document of
`
`the serial number, and the JFC prefix on the serial
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`number is consistent with the first build of the
`
`product, and I wasn't aware of -- of any
`
`documentation addressing a change in -- in that
`
`early period with respect to -- to that 01A build.
`
` Q. (By Ms. Wells) But you are aware there
`
`have been changes between the prototype and the
`
`products that were actually sold in the U.S. market;
`
`right?
`
` MR. LISTON: Object to form. Asked and
`
`answered.
`
` THE WITNESS: Yes, there were -- I'm aware
`
`that there were some changes, but -- but, again,
`
`the -- the capability of these features, at least
`
`some of the features that are pointed to by Wirtgen
`
`America and Dr. Seth, is identified in the early
`
`gateway documents.
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` MS. WELLS: Okay.
`
` MR. LISTON: Counsel, we've been going a
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
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`little bit -- 90 minutes now.
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` MS. WELLS: Sure. Maybe just one last
`
`Page 126
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`question here.
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` MR. LISTON: Okay.
`
` Q. (By Ms. Wells) Do you have any notes from
`
`your discussion with Mr. Engelmann?
`
` A. I may have some notes. Typically, when I
`
`incorporate my notes in -- in my report, I wouldn't
`
`no longer keep them, but I may have some.
`
` Q. You might have destroyed them?
`
` A. I wouldn't say "destroy," but I -- but I
`
`wouldn't keep a note that's reflected in my -- in my
`
`expert report, but I may have some of my notes.
`
` Q. Did you also speak with Mr. Rife about
`
`whether the prototype had the accused functionality?
`
` A. He -- I can't recall if I -- as I sit here,
`
`whether he was on that conversation. I do recall
`
`him in his deposition, he testified that -- about
`
`the prototype and basically said that Mr. Engelmann
`
`was in charge at that point in time, and he saw the
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`prototype later, but I don't believe he saw the
`
`prototype when it first came in in that July 2014
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
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`Brett L. Reed
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`Page 127
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`weekend.
`
` Q. Do you have any notes from your discussion
`
`with Mr. Rife?
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` A. In most of my conversations with Mr. Rife,
`
`they were -- they were together. So to the extent I
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`have notes, I would have the notes relating to
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`Mr. Rife as well.
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` Q. And last question: Do you have a sense of
`
`how long your conversation was with Mr. Engelmann
`
`when you discussed the prototype?
`
` A. I don't recall if it was part of a broader
`
`conversation, but -- but if you're asking about the
`
`particular discussion about the prototype, that was
`
`fairly pinpointed, because I already had the
`
`documents that identified the issue. I -- I was
`
`actually able to confirm that -- from -- from the
`
`documents themselves, that it was mid 2014. He
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`identified July 4th, and -- and I knew from the
`
`documents that that was consistent.
`
` So I -- I believe that portion of the
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`conversation was -- was fairly direct; and,
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`basically, he was confirming the dates, the serial
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
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`Brett L. Reed
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`Page 128
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`number, the build, that the capability existed,
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`and -- and had not been modified in that early
`
`period. The capabilities, I should say, because it
`
`was more than just one feature. It would be all the
`
`features that were ultimately accused in the 01A
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`build.
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` Q. Did you speak with Mr. Engelmann for more
`
`than 5 minutes about whether the prototype had the
`
`accused functionality?
`
` A. Probably, but -- but, again, it was pretty
`
`direct. My estimate would have probably been 10 to
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`15 minutes, because he did -- he did discuss, in
`
`some detail, that -- that early period when the
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`products were -- were imported in the United States,
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`transported to the Minnesota area. He was there
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`July 14th -- July 4th, 2014, to receive them and
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`then addressing the capabilities and how they were
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`all part of this first serial number of the build.
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` MS. WELLS: Okay.
`
` We can take a break.
`
` THE VIDEOGRAPHER: Going off the record.
`
`Time is 12:15.
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
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`Brett L. Reed
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`Page 129
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` (Lunch recess 12:15 p.m. to 1:08 p.m.)
`
` THE VIDEOGRAPHER: Back on the record.
`
`Time is 1:08.
`
` Q. (By Ms. Wells) Welcome back, Mr. Reed.
`
` A. Thank you.
`
` Q. Which patents do you understand that the
`
`2014 prototype infringed?
`
` MR. LISTON: Objection to the form.
`
` THE WITNESS: I believe this is addressed
`
`in -- in my rebuttal report, so if you want me to
`
`try -- try from memory, I can try that.
`
` Q. (By Ms. Wells) You're welcome to look at
`
`your rebuttal report. I believe the prototype is
`
`talked about around Page 66.
`
` A. 66. Thank you for that.
`
` I believe it's addressed in Footnote 123;
`
`perhaps other places in the report, but certainly in
`
`Footnote 123 on Page 66. So I addressed the accused
`
`capabilities associated with at least the '309,
`
`'474/'788; '530 -- although the '530 patent issued
`
`later, I believe, in 2017; and the '641 patent.
`
` And then there's a note here regarding a
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 20 of 34 PageID #: 30513
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
`
`Page 130
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`question on -- on the '972 patent, which is somewhat
`
`unclear in Dr. Seth's reports, because, as I
`
`understand it, the '972 is not raised for the
`
`damages accounting period until after the amended
`
`complaint in 2021. So even though the patent
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`issued, I believe it issued in 2013, it's not clear
`
`if that is asserted against the -- the early build.
`
`And I think -- I think elsewhere in the report,
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`there's a comment about that if it's not asserted,
`
`then that would suggest an alternative with respect
`
`to the '972 that would have existed in the early
`
`build. But if it asserted, then that would be true
`
`at the date of the prototype as well, so the '972
`
`would be included in those circumstances. And
`
`the --
`
` (Stenographer clarification.)
`
` THE WITNESS: -- RE '268 patent did not
`
`issue until 2020 and was not addressed for purposes
`
`of damages under the damage accounting period until
`
`after the -- the amended complaint in 2021.
`
` Q. (By Ms. Wells) Okay.
`
` So your understanding is the prototype did
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`202-232-0646
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 21 of 34 PageID #: 30514
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
`
`Page 131
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`not include the functionality of -- accused of
`
`infringing the RE '268 patent?
`
` A. Well, no, that's not what I said. My
`
`understanding is the functionality would have been
`
`included. It was part of what's accused with the
`
`01A build for the '268, reissued '268, but that
`
`patent hadn't issued yet -- yet.
`
` Q. Where do you say in your report that you
`
`understand the prototype had the functionality
`
`accused of infringing the RE '268 patent?
`
` A. I -- I'm not sure I do. So I don't believe
`
`that's in my report unless you know where it -- it
`
`might exist. Because I -- I know that patent did
`
`not issue until 2020. The reissue took place in
`
`2020.
`
` Q. Okay.
`
` But you're saying today that it is your
`
`understanding -- or for purposes of your analysis,
`
`it was your understanding that the prototype would
`
`have infringed the RE '268 patent?
`
` A. I suppose I do not have that assumption.
`
`It could be the case, but I don't have factual input
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`202-232-0646
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 22 of 34 PageID #: 30515
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
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`Page 132
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`from Mr. Engelmann, for example.
`
` I -- I do note, and I believe it's
`
`elsewhere in my report, that I comment on Dr. Seth's
`
`assessment that all the patents would be covered in
`
`the hypothetical negotiation, even though two of
`
`them would not be applicable for the damages
`
`accounting period until later. And one of them, the
`
`RE '268, didn't issue until 2020.
`
` But -- but I guess I should correct. To
`
`address your question, I -- I don't believe I
`
`address anywhere that the RE '268 patent would be --
`
`you know, would necessarily have been embodied in
`
`that first prototype. It could be, but I don't know
`
`that for a fact. I don't have technical support for
`
`that.
`
` Q. Okay.
`
` And for the '972 patent, you state, in
`
`Footnote 123, that it says "he," I think that's
`
`Mr. Engelmann, "noted that the capability of the
`
`PM-6XX machines may have changed with respect to the
`
`operation associated with Wirtgen's allegations of
`
`infringement of the '972 patent."
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`202-232-0646
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 23 of 34 PageID #: 30516
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
`
`Page 133
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` Do you see that?
`
` A. Yes.
`
` (Stenographer clarification.)
`
` Q. (By Ms. Wells) And that's based on the
`
`phone conversation that you had with Mr. Engelmann?
`
` A. Correct; that's what I'm referring to
`
`there. And it continues on to the point I actually
`
`thought that was elsewhere in the report, it was
`
`this one right here, that -- that if the prototype
`
`did not have accused capability asserted by Wirtgen
`
`America with respect to the '972 patent, then that
`
`particular implementation -- because it did have
`
`capability associated with the -- the asserted
`
`feature, and so the point was, if it's not
`
`accused -- it's either accused; and if it's not
`
`accused, then that would have been another
`
`alternative, because -- because it was -- it was a
`
`successful implementation is what Mr. Engelmann told
`
`me.
`
` Q. Okay.
`
` So for both the RE '268 patent and the '972
`
`patent, you don't know one way or the other whether
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`202-232-0646
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 24 of 34 PageID #: 30517
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
`
`Page 134
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`the 2014 prototype had the accused functionality?
`
` A. I -- I don't have the technical input to
`
`verify with respect to the RE '268.
`
` And for the '972, is as addressed here,
`
`I -- I -- my understanding is it's not clear what --
`
`what -- well, I guess elsewhere in my report, I have
`
`a comment that according to the technical input from
`
`the technical experts for Caterpillar, the belief is
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`that the first build of the 6XX is asserted to
`
`infringe with respect to the '972 patent, and --
`
`but -- but here, what my note indicates is that
`
`Mr. Engelmann noted that the capability may have
`
`changed for the '9- -- with respect to the '972. So
`
`either it would be accused in the prototype, or the
`
`prototype would have an non-infringing alternative
`
`with respect to the '972 patent, was his point.
`
` Q. Okay.
`
` Did you speak with any of Caterpillar's
`
`technical experts about whether the 2014 prototype
`
`infringed any Wirtgen patent?
`
` A. Well, I guess that's somewhat of an odd
`
`question, because my understanding is that the
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`202-232-0646
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`Case 1:17-cv-00770-JDW Document 307-5 Filed 02/02/24 Page 25 of 34 PageID #: 30518
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`8/11/2023
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`Wirtgen America Inc. v. Caterpillar Inc.
`Highly Confidential
`
`Brett L. Reed
`
`technical expert's view -- viewed the patents as not
`
`being -- you know, not infringing in many cases,
`
`Page 135
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`but --
`
` Q. I can ask a different question.
`
` Did you speak with any of Caterpillar's
`
`technical experts about the technical features of
`
`the 2014 prototype?
`
` A. I don't believe so. That conversation was
`
`with Mr. -- Mr. Engelmann.
`
` Q. Okay.
`
` What were the differences Mr. Engelmann
`
`told you existed between the prototype and the
`
`PM-600 series machines that were actually sold in
`
`the U.S.?
`
` MR. LISTON: Object to the form.
`
` THE WITNESS: I guess I can address what I
`
`specifically confirmed is that with respect to the
`
`patents, I identified here that there were not
`
`modifications, so that's the way I address it with
`
`Mr. Engelmann, with respect to the '309 and the
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`'474/'788, the '530, and '641 patents, that there
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`were not modifications from the prototype to the
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2
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