Case 1:17-cv-00770-RGA-MPT Document 33 Filed 09/02/21 Page 1 of 136 PageID #: 2365
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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,
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`v.
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`CATERPILLAR INC.,
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`Defendant.
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`C.A. No. 17-770-RGA
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`JURY TRIAL DEMANDED
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`AMENDED COMPLAINT
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`Wirtgen America, Inc. (“Wirtgen America”) files this Amended Complaint for patent
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`infringement against Caterpillar, Inc. (“Defendant” or “Caterpillar”). Wirtgen America filed a
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`Complaint against Caterpillar and four other Caterpillar subsidiaries in the United States District
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`Court for the District of Minnesota on June 15, 2017. Wirtgen America then filed its original
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`Complaint in this Court on June 16, 2017, asserting infringement of twelve patents belonging to
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`six patent families. Wirtgen America filed suit in this District where Caterpillar resides due to
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`venue considerations arising from the recent decision in TC Heartland LLC v. Kraft Foods Group
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`Brands LLC. Wirtgen America states as follows:
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`1.
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`THE PARTIES
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`Wirtgen America, Inc. is a Tennessee corporation with its principal place of
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`business at 6030 Dana Way, Antioch, Tennessee 37013-3116. Wirtgen distributes, inter alia, cold
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`milling machines throughout the United States.
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`2.
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`Caterpillar, Inc. is a Delaware corporation with its principal place of business at
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`100 NE Adams Street, Peoria, Illinois 61629.
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`3.
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`Caterpillar Inc. is the parent company of Caterpillar Prodotti Stradali S.r.L and
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`Caterpillar Paving Products, Inc.
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`4.
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`JURISDICTION AND VENUE
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`This Amended Complaint for patent infringement arises under the patent laws
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`of the United States, Title 35, United States Code, and this court has jurisdiction over those claims
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`pursuant to 28 U.S.C. § 1338, which directs that United States District Courts shall have original
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`jurisdiction of any civil action arising under any Act of Congress relating to patents, and pursuant
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`to 28 U.S.C. § 1331, which pertains to civil actions arising under the laws of the United States.
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`5.
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`Personal jurisdiction and venue over Caterpillar are proper in this District
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`because Caterpillar, a Delaware corporation, resides in this district.
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`FACTS
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`Overview
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`6.
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`Since opening its headquarters in the Nashville, Tennessee area in 1985,
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`Wirtgen America has been an innovator in the heavy equipment sector and has established itself
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`as “a powerhouse of economic input” in both the local and national economies. (See D.I. 1-1 at 10,
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`Exhibit 1, 2016 Nashville Chamber of Commerce Article, “Wirtgen America Contribution and
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`Impact Analysis”.)1 For over thirty years, Wirtgen America’s business has centered around the
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`advancement, education, and implementation of road construction machines, including milling
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`machines, recyclers, and stabilizers, as well as cold milling technology within the United States.
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`7.
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`Wirtgen America’s road construction machines offer solutions for quickly and
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`efficiently rehabilitating road surfaces. Wirtgen America’s road construction machines have been
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`overwhelmingly adopted in the road resurfacing industry because of their superior performance
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`and unrelenting innovation. For example, Wirtgen-brand road milling machine sales have long
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` Citations to page numbers in previously filed exhibits reference the page number found in the
`Court’s stamp in header of the document.
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`since accounted for a large majority of the U.S. market.
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`8.
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`The market success and superior performance of Wirtgen America’s road
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`construction machines are byproducts of the technological innovations of Wirtgen America and
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`its related entities over the past several decades. These innovations began with Wirtgen America’s
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`affiliated company, Wirtgen GmbH, developing its first cold milling machine for road resurfacing
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`in 1979, and have been continued by Wirtgen America through today.
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`9.
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`Wirtgen America owns several patents covering various aspects of its innovative
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`road construction machines, including those asserted in this Complaint (“Asserted Patents”). The
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`Asserted Patents are directed towards key features that have been incorporated into Wirtgen
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`America’s road construction machines that include, for example, Wirtgen’s road milling machines,
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`including the Wirtgen W 200i, W 200 Hi, W 210i, W 220, W 220i, W 250i, W 2200, W 50, W 50
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`Dci, W 50 Ri, W 60 Ri, W 60i, W 100i, W 100 Fi, W 120 Fi, W 100 CFi, W 120 CFi, W 130 CFi,
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`W 150i, and W 150 Cfi, and Wirtgen’s recyclers, including the WR 200 XLi, WR 240i, WR 250.
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`These features have contributed to Wirtgen America’s success and have allowed Wirtgen America
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`to establish itself as not only a market leader, but also as a respected educator within the road
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`resurfacing industry. The Wirtgen model W 200i pictured below is exemplary of the Wirtgen road
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`milling machines.
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`The Wirtgen model WR 240i pictured below is exemplary of the Wirtgen recyclers.
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`In contrast to Wirtgen America, Caterpillar has historically been at best a minor
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`10.
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`player in the U.S. road construction industry. For example, Caterpillar has never had more than a
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`10% share of the road milling machine market. But Caterpillar decided to refocus its efforts and
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`emphasize the U.S. road construction machine market. On information and belief, Caterpillar’s
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`shift in philosophy was sparked by a desire to capture Wirtgen America’s market share.
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`11.
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`Caterpillar’s decision coincided with Caterpillar’s purchase, and subsequent
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`analysis, of two Wirtgen-brand road milling machines, a Wirtgen W 210i and a Wirtgen W 120.
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`12.
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`Following Caterpillar’s meticulous dissection of the Wirtgen-brand road milling
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`machines, Caterpillar began importing certain road milling machines in 2016 or 2017, defined as
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`large milling machines based on the width of their milling drums (also called rotors), that included
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`Wirtgen America’s patented technology, the PM600 Series (e.g., PM620 and PM622 models) and
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`the PM800 Series (e.g., PM820, PM822, and PM825 models) into the United States. Such
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`Caterpillar road milling machines, supported on two pairs of wheels or tracks and corresponding
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`legs, including a rotor such as a milling drum for working a road surface mounted between the
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`pairs of wheels or tracks, and which incorporate Wirtgen America’s patented technology are,
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`collectively, “Large Infringing Products”.
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`13.
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`On further information and belief, since that time, Caterpillar began importing
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`certain road milling machines, defined as compact milling machines based on the width of their
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`milling drums, that included Wirtgen America’s patented technology, the PM300 Series (e.g.,
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`PM310, PM312, and PM313 models) (collectively, the “Compact Infringing Products”), into the
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`United States. For example, on information and belief, Caterpillar imported a PM312 Compact
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`Infringing Product on May 26, 2016.
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`Wirtgen America’s Patents
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`14.
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`Wirtgen America is the owner of seven patent families comprising thirteen
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`patents being asserted in this action.
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`Count
`1
`2
`3
`4
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`Family
`Four-way Full Floating
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`Driving Backwards
`Path Measurement
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`U.S. Patent
`7,828,309
`8,118,316
`7,530,641
`8,113,592
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`5
`6
`7
`8
`9
`10
`11
`12
`13
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`Sensor Switching
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`Vibration Mounting
`Parallel to Surface
`Smart Side Plates
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`9,010,871
`9,656,530
`7,946,788
`8,511,932
`8,690,474
`RE48,268
`8,424,972
`9,879,390
`9,879,391
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`15.
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`Wirtgen America has marked its products embodying the inventions claimed in
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`these patents with the relevant patent numbers through its virtual marking process. Each machine
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`delivered to a customer carries the following sticker:
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`16.
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`Wirtgen America is the owner of U.S. Patent No. 7,828,309, (“the ’309 patent”)
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`entitled “Road-building machine.” The ’309 patent is generally directed to road-building machines
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`that have a chassis with four ground engaging supports and four working cylinders connecting the
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`ground engaging supports whereby coordinated height adjustment of the ground engaging supports
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`provides improved stability and improves milling quality. A copy of the ’309 patent was previously
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`filed as Exhibit 2 to Wirtgen’s original Complaint. (D.I. 1-1 at 11-29.)
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`17.
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`The inventions disclosed and claimed in the ’309 patent are road-building
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`machines as described above wherein the working cylinders are positively coupled to one another
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`such that, for example, the left front wheel or track and the right rear wheel or track are adjusted
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`in height in the opposite direction to the right front wheel or track and left rear wheel or track, the
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`left front wheel or track and the right rear wheel or track being adjusted in height in the same
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`direction. Thus, these machines essentially operate using a floating mount of both the front and
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`rear axle, thereby improving the compensation of both transverse inclination of the road-building
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`machines and unevenness in their longitudinal direction. Consequently, the permissible height of
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`an obstacle which can be driven over by only one wheel of the machine is significantly increased.
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`18.
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`Wirtgen America is the owner of U.S. Patent No. 8,118,316 (“the ’316 patent”),
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`entitled “Operational methods for a road-building machine.” The ’316 patent is a continuation of
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`the ’309 patent and is generally directed to methods of operating the road-building machines
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`described in the ’309 patent. A copy of the ’316 patent was previously filed as Exhibit 3 to
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`Wirtgen’s original Complaint. (D.I. 1-1 at 30-48.)
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`19.
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`Wirtgen America is the owner of U.S. Patent No. 7,530,641 (“the ’641 patent”),
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`entitled “Automotive construction machine, as well as method for working ground surfaces.” The
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`’641 patent is generally directed to road-building machines with a monitoring device that senses
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`the distance between the milling drum and the ground surface and, when the machine is traveling
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`in the same direction of the rotation of the milling drum, triggers a safety mechanism to prevent
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`contact of the milling drum with the ground surface. A copy of the ’641 patent was previously
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`filed as Exhibit 4 to Wirtgen’s original Complaint. (D.I. 1-1 at 49-59.)
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`20.
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`The inventions disclosed and claimed in the ’641 patent are road-building
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`machines as described above wherein the monitoring device, upon sensing potential engagement
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`of the ground surface by the rotating milling drum while raised, uncouples the raised milling drum
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`from the drive engine and/or uncouples the traveling devices from the drive engine and/or raises
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`the machine frame and/or generates an alarm signal. Thus, the milling drum can remain coupled
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`with the drive engine throughout an operation, even when not working the ground surface, without
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`risk of the milling drum being damaged or the road-building machine being accelerated suddenly
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`and uncontrollably upon inadvertent engagement of the milling drum with the ground surface. This
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`reduces the time required for working a pre-determined ground space by avoiding the need to
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`uncouple the milling drum from the drive engine before traveling in reverse, bring the drive engine
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`down to idle speed to recouple the milling drum, and then bring the drive engine back to operating
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`speed after recoupling.
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`21.
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`Wirtgen America is the owner of U.S. Patent No. 8,113,592 (“the ’592 patent”),
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`entitled “Automotive construction engine and lifting column for a construction engine.” The ’592
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`patent is generally directed to road-building machines with measuring devices that determine the
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`height of the machine frame relative to the ground engaging supports by measuring the lifting state
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`of the lifting columns connecting the machine frame to the ground engaging supports. A copy of
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`the ’592 patent was previously filed as Exhibit 5 to Wirtgen’s original Complaint. (D.I. 1-1 at 60-
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`70.)
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`22.
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`The inventions disclosed and claimed in the ’592 patent are road-building
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`machines as described above wherein each height-adjustable lifting column is provided with a
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`measuring device for measuring the current lifting state of the lifting column, the measuring device
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`is coupled with elements of the lifting column in such a manner that a path signal pertaining to the
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`lifting position of each column is continuously detectable by the measuring device, and that a
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`controller receiving the measured path signals from the measuring devices regulates the lifting
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`state of the lifting columns. Thus, the invention provides for positions of the lifting columns to be
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`adjusted in a regulated manner.
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`23.
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`Wirtgen America is the owner of U.S. Patent No. 9,010,871 (“the ’871 patent”),
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`entitled “Automotive construction machine, as well as lifting column for a construction machine.”
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`The ’871 patent claims priority to the ’592 patent and is generally directed to the same subject
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`matter. The inventions of the ’871 patent include both automotive construction machines and
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`methods of using such machines. A copy of the ’871 patent was previously filed as Exhibit 6 to
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`Wirtgen’s original Complaint. (D.I. 1-1 at 71-82.)
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`24.
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`Wirtgen America is the owner of U.S. Patent No. 9,656,530, entitled
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`“Automotive construction machine, as well as lifting column for a construction machine.” The
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`’530 patent claims priority to the ’592 patent and is generally directed to the same subject matter.
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`The inventions of the ’530 patent are directed to automotive construction machines. A copy of the
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`’530 patent was previously filed as Exhibit 7 to Wirtgen’s original Complaint. (D.I. 1-1 at 83-93.)
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`25.
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`Wirtgen America is the owner of U.S. Patent No. 7,946,788 (“the ’788 patent”),
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`entitled “Road construction machine, leveling device, as well as method for controlling the milling
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`depth or milling slope in a road construction machine.” The ’788 patent is generally directed to
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`road construction machines with a leveling device provided with an indication and setting device
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`capable of indicating and altering the data of a current or pre-selected sensor of milling depth or
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`slope and a switchover device capable of switching over from the current sensor to the pre-selected
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`sensor during the milling operation without any repercussion on the work result. It is also directed
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`to methods of using the same. A copy of the ’788 patent was previously filed as Exhibit 8 to
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`Wirtgen’s original Complaint. (D.I. 1-1 at 94-109.)
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`26.
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`The inventions disclosed and claimed in the ’788 patent are road-building
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`machines as described above wherein the leveling system comprises a plurality of selectable
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`sensors for sensing milling depth and/or slope, a controller operable to control the milling depth
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`and/or slope based on set values and sensed current actual values, and a switchover device operable
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`to switch over from control based upon a first subset of sensors to a second, different subset of
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`sensors without affecting the milling operation. This avoids faults in the work result or,
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`alternatively, the need to halt the milling operation to switch the sensors being used to maintain a
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`particular milling depth and/or slope, which itself can cause an adverse effect when the milling
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`drum cuts clear while standing.
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`27.
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`Wirtgen America is the owner of U.S. Patent No. 8,511,932 (“the ’932 patent”),
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`entitled “Automotive construction machine, as well as method for working ground surfaces.” The
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`’932 patent claims priority to the ’788 patent and is generally directed to the same subject matter.
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`A copy of the ’932 patent was previously filed as Exhibit 10 to Wirtgen’s original Complaint. (D.I.
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`1-1 at 126-143.)
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`28.
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`Wirtgen America is the owner of U.S. Patent No. 8,690,474 (“the ’474 patent”),
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`entitled “Automotive construction machine, as well as method for working ground surfaces.” The
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`’474 patent claims priority to the ’788 and ’932 patents and is generally directed to the same subject
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`matter. A copy of the ’474 patent was previously filed as Exhibit 11 to Wirtgen’s original
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`Complaint. (D.I. 1-1 at 144-160.)
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`29.
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`Wirtgen America is the owner of U.S. Patent No. RE48,268 (“the ’268 patent”),
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`entitled “Construction machine, in particular road milling machine, recycler or stabilizer, as well
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`as drive train for construction machines of this type.” The ’268 patent is generally directed to road
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`construction machines with a particular drive train mounting and arrangement that reduces
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`transmission of vibrations from components of the drive train, such as the drive engine, to the
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`machine frame. It is also directed to methods of using the same. A copy of the ’268 patent is
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`attached hereto as Exhibit 27.
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`30.
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`The inventions disclosed and claimed in the ’268 patent are road-building
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`machines as described above wherein the drive train is divided into two groups such that the groups
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`can be supported with different degrees of rigidity on the machine frame. An articulated coupling
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`device, for example an elastomeric coupling, between the two groups can balance the different
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`vibrational behavior of the two groups due to its articulation, without impeding a high transmission
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`of power. This makes it possible to easily achieve a configuration where, on the one hand, the one
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`group that comprises the drive engine is supported in a relatively soft manner at the machine frame,
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`by way of which the vibrations from the drive engine that are transmitted to the machine frame are
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`damped considerably, and, on the other hand, the other group can be supported at the machine
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`frame with high spring stiffness or in a nearly rigid or rigid manner, by way of which higher forces
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`are supported and higher outputs are transmittable as a result.
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`31.
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`Wirtgen America is the owner of U.S. Patent No. 8,424,972 (“the ’972 patent”),
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`entitled “Road milling machine and method for positioning the machine frame parallel to the
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`ground.” The ’972 patent is generally directed to road milling machines comprising sensors and
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`control systems that automatically control the lifting condition of one or more lifting columns to
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`position the machine frame parallel to the ground or traffic surface or to position the machine
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`frame at a predetermined milling level. It is also directed to methods of using the same. A copy of
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`the ’972 patent is attached hereto as Exhibit 28.
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`32.
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`The inventions disclosed and claimed in the ’972 patent are road milling
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`machines wherein a controller uses data from one or more various ground-engaging sensors, such
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`as lifting position sensors, lifting plate sensors, track angle sensors, and stripping plate sensors, to
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`control the extension and retraction of one or more lifting columns of the machine to maintain the
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`machine frame parallel to the ground or traffic surface or to position the machine frame at a
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`predetermined milling level. This solution allows a controller to automatically set and/or maintain
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`a parallel orientation of the machine frame automatically so that the operator does not have to
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`continuously make adjustments to inclination.
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`33.
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`Wirtgen America is the owner of U.S. Patent No. 9,879,390 (“the ’390 patent”),
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`entitled “Road milling machine and method for measuring the milling depth.” The ’390 patent is
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`generally directed to road milling machines comprising sensors and control systems that
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`automatically control milling depth and/or transverse or longitudinal inclination of the machine
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`frame. A copy of the ’390 patent is attached hereto as Exhibit 29.
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`34.
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`The inventions disclosed and claimed in the ’390 patent include road milling
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`machines provided with one or more sensors, such as side-plate sensors (and, more specifically,
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`position-sensing hydraulic cylinders) spaced apart in the traveling direction of the machine. These
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`sensors may permit determination of milling depth and/or transverse or longitudinal inclination of
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`the machine frame, and, in combination with a controller, the sensor data can be used to control
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`the extension and retraction of one or more lifting columns of the machine. This solution improves
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`the accuracy of measuring the milling depth during the operation of a road milling machine and
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`thereby minimizes deviations from a predetermined milling depth.
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`35.
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`Wirtgen America is the owner of U.S. Patent No. 9,879,391 (“the ’391 patent”),
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`entitled “Automotive construction machine, as well as method for working ground surfaces.” The
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`’391 patent claims priority to the ’390 patent and is generally directed to methods of operating the
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`road-building machines described in the ’390 patent. A copy of the ’391 patent is attached hereto
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`as Exhibit 30.
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`Caterpillar’s Infringing Products
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`36.
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`Since the introduction of the Large Infringing Products, Caterpillar has
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`coordinated the importation of at least one hundred fifty-four (154) units of the Large Infringing
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`Products into the United States.
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`37.
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`U.S. Customs import records indicate that at least seventy-five (75) PM622
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`machines have been imported into the United States between May 8, 2016, and the present. Those
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`records further indicate that at least twenty-eight (28) PM620 machines have been imported into
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`the United States between April 29, 2016, and the present.
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`38.
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`U.S. Customs import records indicate that at least thirty-eight (38) PM 822
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`machines have been imported into the United States between January 13, 2018, and the present.
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`Those records further indicate that at least twelve (12) PM 825 machines have been imported into
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`the United States between April 2, 2018, and the present, as well as one (1) PM 820 machine on
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`April 13, 2019.
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`39.
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`Since the introduction of the Compact Infringing Products, Caterpillar has
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`coordinated the importation of at least fifty-four (54) units of the Compact Infringing Products into
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`the United States.
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`40.
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`Upon information and belief, Caterpillar Prodotti Stradali S.r.L. (“Caterpillar
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`Prodotti Stradali”) manufactures and sells the Large Infringing Products and Compact Infringing
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`Products for importation into the United States. For example, Caterpillar Prodotti Stradali
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`manufactures cold planer machines and is based in Minerbio, Italy. (See D.I. 1-1 at 217, Exhibit
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`15, Bloomberg.com company overview of Caterpillar Prodotti Stradali.)
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`41.
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`Caterpillar Prodotti Stradali imports the Large Infringing Products and Compact
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`Infringing Products into the United States.
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`42.
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`Caterpillar Paving Products, Inc. (“Caterpillar Paving Products”) facilitates
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`importation of the Large Infringing Products. U.S. customs import records identify Caterpillar
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`Paving Products as the consignee of thirty-eight (38) PM 622 machines, five (5) PM 620 machines,
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`twenty-six (26) PM 822 machines, and six (6) PM 825 machines.
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`43.
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`Caterpillar Paving Products also facilitates importation of the Compact
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`Infringing Products. U.S. customs import records identify Caterpillar Paving Products as the
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`consignee of four (4) PM 312 machines and one (1) PM313 machine.
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`44.
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`Caterpillar Prodotti Stradali sells the machines to Caterpillar Paving Products
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`upon importation.
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`45.
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`Caterpillar Paving Products then transfers title to the machines to Caterpillar Inc.
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`46. Caterpillar Inc. directs and coordinates the activities of Caterpillar Prodotti Stradali
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`and Caterpillar Paving Products, including the importation into the United States of the Large
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`Infringing Products and Compact Infringing Products. U.S. import records identify Caterpillar Inc.
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`as the global headquarters for each importation discussed above.
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`47.
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`Caterpillar Inc. enters into agreements with local dealers around the country,
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`whereby Caterpillar Inc. permits the local dealers to purchase the Large Infringing Products and
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`Compact Infringing Products at wholesale prices. On further information and belief, Caterpillar
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`Inc. has agreements with at least two Delaware dealers, Carter CAT: Felton, with a brick-and-
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`mortar location at 13074 S. Dupont Highway, Felton, Delaware 19943, and Foley CAT, with a
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`brick-and-mortar location at 720 Pulaski Highway, Bear, Delaware 19701. Both dealers’ websites
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`advertise the PM620, PM622, PM820, PM822, and PM825 machines as new machines available
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`for purchase. Carter CAT also advertises the PM310 machine as a new machine available for
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`purchase.
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`48.
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`On information and belief, Caterpillar Inc. also distributes the Infringing
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`Products in the United States after importation. The badge on a PM822 observed in the United
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`States indicated that the PM822 was made in Italy and distributed by Caterpillar Inc.
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`49.
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`On further information and belief, Caterpillar Inc. directs or controls pricing of
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`the products-at-issue in this case. For example, price lists for the Large Infringing Products and
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`the Compact Infringing Products bear the name Caterpillar Inc. (See Exhibit 31, Caterpillar Inc.
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`Pricelist (Nov. 1, 2018).)
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`50.
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`Caterpillar Inc. also owns several trademark registrations for trademarks
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`associated with infringing products either through display directly on infringing products or in
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`video and print advertisements for infringing products. For example, Caterpillar Inc. owns U.S
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`Trademark Registration No. 4,804,266 for:
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`U.S. Trademark Registration No. 3,750,812 for:
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`;
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`Case 1:17-cv-00770-RGA-MPT Document 33 Filed 09/02/21 Page 16 of 136 PageID #: 2380
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`U.S. Trademark Registration No. 2,448,848, for:
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`and U.S. Trademark Registration No. 4,676,117, for:
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`;
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`;
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`On information and belief, the goodwill associated with these trademarks is
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`
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`51.
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`being used to advertise and sell the Infringing Products at the direction of Caterpillar Inc. For
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`example, a Caterpillar brochure, dubbed a “specalog”, advertising the PM620 and PM622
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`machines bears a copyright to Caterpillar Inc. (See D.I. 1-1 at 262.)
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`52.
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`Caterpillar’s Infringing Products include functionality that infringes Wirtgen
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`America’s patented technology. For example, each of the Large Infringing Products includes one
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`or more of: (1) a stabilized chassis that infringes the four-way full floating patents; (2) milling
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`drum uncoupling functionality that infringes the driving backwards patent; (3) height-adjustable
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`lifting columns that infringe the path measurement patents; (4) a grade and slope control system
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`that infringes the sensor switching patents; (5) a drive-train arrangement that infringes the vibration
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`mounting patents; (6) height-adjustable lifting columns combined with a controller that infringe
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`the parallel-to-surface patents; and (7) position-sensing side-plate cylinders that infringe the smart
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`side plate patents. And each of the Compact Infringing products includes at least one or more of:
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`(1) milling drum uncoupling functionality that infringes the driving backwards patent; and (2)
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`position-sensing side-plate cylinders that infringe the smart side plate patents.
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`The Section 337 Investigation at the International Trade Commission
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`53.
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`On July 19, 2017, Wirtgen America filed a complaint pursuant to 19 U.S.C.
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`§ 1337 with the United States International Trade Commission (“ITC”) alleging that Caterpillar
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`Inc., Caterpillar Paving Products, Inc., Caterpillar Prodotti Stradali S.r.L., and Caterpillar
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`Americas CV unlawfully imported certain road milling machines, including the Large Infringing
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`Products, and components thereof. That complaint asserted U.S. Patent Nos. 7,530,641 (“the ’641
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`patent”); 7,828,309 (“the ’309 patent”); 9,624,628 (“the ’628 patent”); 9,644,340 (“the ’340
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`patent”); and 9,656,530 (“the ’530 patent”).
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`54.
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`On August 25, 2017, the ITC instituted a Section 337 investigation,
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`Investigation No. 337-TA-1067 (“the 1067 Investigation”), to determine whether there was a
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`violation of subsection (a)(1)(B) of 19 U.S.C. § 1337 by the importation into the United States, the
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`sale for importation, or the sale within the United States after importation of Caterpillar’s milling
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`machines and components thereof by infringement of one or more of claims 1, 2, 4, 6-8, 11, 12,
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`and 15-17 of the ’641 patent; claims 1-3, 5-24, and 26-36 of the ’309 patent; claims 1, 2, 5, 6, 9-
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`22, and 27-29 of the ’628 patent; claims 1-5, 7-12, and 14-17 of the ’340 patent; and claims 1-7,
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`13-24, and 26 of the ’530 patent.
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`55.
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`After institution, this Court stayed the instant action as to the patents asserted in
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`the 1067 Investigation as required by 28 U.S.C. § 1659 and exercised its discretion to stay the case
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`as to the other patents asserted in the Complaint. (See D.I. 9.)
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`56.
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`Throughout the 1067 Investigation, pursuant to ITC ground rules, Wirtgen
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`Case 1:17-cv-00770-RGA-MPT Document 33 Filed 09/02/21 Page 18 of 136 PageID #: 2382
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`sought to narrow the asserted claims to streamline the investigation.
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`57.
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`On January 29, 2018, Wirtgen filed an unopposed motion seeking to terminate
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`the 1067 Investigation as to multiple claims from the ’641, ’309, ’628, ’340, and ’530 patents,
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`which the administrative law judge granted on February 5, 2018. The ITC did not review that
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`decision.
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`58.
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`On March 14, 2018, Wirtgen again filed an unopposed motion seeking to
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`terminate the 1067 Investigation as to multiple claims from the ’641, ’309, ’628, ’340, and ’530
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`patents, which the administrative law judge granted on March 15, 2018. The ITC did not review
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`that decision.
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`59.
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`During the 1067 Investigation, Caterpillar asserted non-infringement of the
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`’309, ’340, and ’628 patents by PM600 and PM800 machines that contained so-called 2018
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`product updates. Caterpillar alleged that these machines included certain design changes to the
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`machines-at-issue that were not covered by the asserted claims. The administrative law judge
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`declined to adjudicate whether the 2018 product updates infringed.
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`60.
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`On October 1, 2018, the administrative law judge issued a Final Initial
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`Determination (“FID”) concluding (1) that Caterpillar failed to show that claims 10, 29, and 36 of
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`the ’309 patent are invalid; (2) that the PM600 and PM800 series machines (i.e., the Large
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`Infringing Products) infringe claims 29 and 36 of the ’309 patent; (3) that Caterpillar failed to
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`show that claims 11, 15, and 17 of the ’641 patent are invalid; (5) that, “[a]ssuming that the PM620
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`and PM312 are used in the United States, the evidence shows that the PM620 and PM312 practice
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`limitations 11[a]-11[g] when they are driven in reverse” and “practice the steps of claims 15 and
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`17 when the milling drum is raised and they are driven in reverse;” (5) that Caterpillar failed to
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`show that claims 2, 5, 16, and 23 of the ’530 patent are invalid; and (6) that the PM600 and PM800
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`Case 1:17-cv-00770-RGA-MPT Document 33 Filed 09/02/21 Page 19 of 136 PageID #: 2383
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`series machines (i.e., the Large Infringing Products) infringe claims 2, 5, 16, and 23 of the ’530
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`patent. A copy of the FI