`Case 1:17-cv-00770-JDW Document 338 Filed 02/13/24 Page 1 of 2 PagelD #: 31060
`
`IN THE UNITED STATESDISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`) )
`
`) )
`
`) )
`
`) )
`
`)
`
`WIRTGEN AMERICA,INC.,
`
`Plaintiff,
`
`v.
`
`CATERPILLAR INC.,
`
`Defendant.
`
`ORDER REGARDINGIPR ESTOPPEL
`
`WHEREAS, on February 6, 2024, the Patent Trial and Appeal Board (“PTAB”) issued a
`
`Final Written Decision in IPR2022-01310 (“the 1310 IPR”) in which Caterpillar Inc.
`
`(“Caterpillar”) challenged claims 1, 12, 15, 16, 22, 23, and 26 of U.S. Patent No. 8,424,972 (“the
`
`“972 Patent’).
`
`WHEREAS,the PTAB determined that Caterpillar proved that claims 1, 15, 16, 22, and
`
`26 are unpatentable, and that Caterpillar did not prove that claims 12 or 23 of the ‘972 Patent are
`
`unpatentable.
`
`WHEREAS,Wirtgen America,Inc. (“Wirtgen”) is currently asserting claims 12 and 13
`
`of the ‘972 Patent in this litigation.
`
`WHEREAS,Wirtgen, in connection with the asserted ‘530 and ‘309 patents, previously
`
`moved for summary judgment that Caterpillar is estopped from raising invalidity grounds based
`
`on references that could have been reasonably raised in its IPRs on those patents. D.I. 217.
`
`WHEREAS,this Court concluded that “[w]hen a party relies on a printed publication
`
`before the PTAB andthenrelies on a physical device in court, it relies on the same ‘ground’ if
`
`the printed publication and the physical device provide the same information.” D-I. 272 at 23.
`
`
`
`Case 1:17-cv-00770-JDW Document 338 Filed 02/13/24 Page 2 of 2 PageID #: 31061
`Case 1:17-cv-00770-JDW Document 338 Filed 02/13/24 Page 2 of 2 PagelD #: 31061
`
`WHEREAS,this Court found that “Wirtgen has shown that the physical products on
`
`which Caterpillar seeks to rely are ‘entirely cumulative’ of the printed publications,” and
`
`accordingly granted Wirtgen’s motion for summary judgment that IPR estoppel applies. D.I. 272
`
`at 25.
`
`WHEREAS,with regards to claim 12 of the ‘972 Patent, Caterpillar’s position is that
`
`every limitation of that claim is disclosed in the Caterpillar PM-565 and PM-465 cold planar
`
`machines.
`
`WHEREAS, without waivingits right to appeal, Caterpillar does not dispute that
`
`pursuant to the grounds set forth in the Court’s summary judgement decision, IPR estoppel
`
`applies against Caterpillar with regards to claim 12 of the ‘972 Patent.
`
`IT IS HEREBY ORDEREDTHAT,for the reasonsset forth in the Court’s prior
`
`summary judgement decision (D.I. 272), IPR estoppel applies with regard to claim 12 of the ‘972
`
`Patent.
`
`11318956
`
`IT IS SO ORDERED,this
`
`13th
`
`day of _February
`
`, 2024.
`
`/s/ Joshua D. Wolson
`
`U.S.D.J.
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
