Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 1 of 31 PageID #: 33305
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`THE UNITED STATES DISTRICT COURT
`FOR 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-JDW
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`DECLARATION OF DR. ANDREW W. SMITH, P.E. IN SUPPORT OF CATERPILLAR,
`INC.’S COLLATERAL ESTOPPEL BRIEF RE U.S. PATENT NO. 7,946,788
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 2 of 31 PageID #: 33306
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`I, Andrew W. Smith, declare as follows:
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`I have been retained in this matter by counsel for Caterpillar Inc. (“Caterpillar”) to provide
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`analysis and testimony about certain issues in the above-captioned action filed by Plaintiff
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`Wirtgen America, Inc. (“Wirtgen America” or “Plaintiff”) in the United States District
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`Court, District of Delaware. I understand that the trial portion of the current action has
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`now concluded with a jury finding that Caterpillar has infringed Claim 5 of U.S. Patent
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`No. 7,946,788 (“the ’788 Patent”) by making, using, selling, and/or offering to sell the PM-
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`300, PM-600, and PM-800 series road milling machines in the United States (herein, “the
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`Accused Products”).1
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`I submitted an opening report in this matter on May 19, 2023 (“Opening Report”);2 a
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`rebuttal report in this matter on June 16, 2023 (“Rebuttal Report”);3 and a reply report in
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`this matter on July 7, 2023 (“Reply Report”).4 In those reports, among other things, I
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`provided analysis in support of my opinions that:
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`(1) Claim 5 of the ’788 Patent is invalid because it was obvious in view of the prior
`art and the knowledge of a person having ordinary skill in the art (“PHOSITA”);
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`(2) the Accused Products do not practice each and every limitation of Claim 5 of
`the ’788 Patent;
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`(3) Wirtgen America’s technical expert Dr. Christopher Rahn failed to demonstrate
`that the Accused Products practiced each and every limitation of Claim 5 of the
`’788 Patent, and failed to demonstrate that Claim 5 of the ’788 was not invalid in
`view of prior art and the knowledge of a PHOSITA.
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`1 D.I. 346.
`2 Opening Expert Report of Dr. Andrew W. Smith, P.E.
`3 Rebuttal Expert Report of Dr. Andrew W. Smith, P.E.
`4 Reply Expert Report of Dr. Andrew W. Smith, P.E.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 3 of 31 PageID #: 33307
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`Since I submitted these reports, I have provided both deposition5 and trial6 testimony in
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`support of the opinions contained therein. I incorporate the entirety of my previously
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`submitted reports by reference and stand by the opinions stated in those reports, as well as
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`the statements provided in my deposition and trial testimony, regarding Claim 5 of the ’788
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`Patent.
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`Additionally, in my Opening Report I provided analysis of certain claims of U.S. Patent
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`No 8,308,395 (herein, “the ’395 Patent”). As I discussed in my Opening Report, the ’395
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`Patent shares a specification, title, and inventor list with the ’788 Patent.7 I also discussed
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`that certain claims of the ’788 Patent “family”—specifically U.S. Patent Nos. 7,946,788
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`and 8,690,474—are substantially similar to claims of the ’395 Patent found to be invalid
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`by the Patent Trial and Appeal Board (PTAB) in a successful inter partes review (IPR)
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`challenge (IPR2018-01091).89 Specifically, in IPR2018-01091 the PTAB found that
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`claims 1, 3, 6-8, 10, 11, 13, 16, 17, 19, 20, 22, 24, 26, and 27 of the ’395 Patent were invalid
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`because they would have been obvious to a PHOSITA in view of prior art.10
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`In this declaration, I have been asked to review the analysis of the ’395 and ’788 Patents
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`in view of the results of IPR2018-01091, as well as the testimony and analysis provided by
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`Wirtgen America’s technical experts, Drs. Christopher Rahn and Ricardo Valerdi. I have
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`further been asked to provide perspective on how this analysis applies to Claim 5 of the
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`’788 Patent.
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`5 Videotaped Deposition of Andrew Smith, August 4, 2023.
`6 D.I. 355, Official Transcript of Jury Trial, February 16, 2024.
`7 The ’395 Patent is a continuation of the ’788 Patent.
`8 All exhibit citations reference the exhibits listed in the Declaration of Naoya Son in Support of Caterpillar’s
`Opening Brief on Equitable Defenses, filed concurrently herewith.
`9 Ex. 31, Opening Report, ¶¶ 38, 331-339
`10 See Ex. 23, IPR2018-01091, Final Written Decision.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 4 of 31 PageID #: 33308
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`The opinions I provide are my own and are based on my independent review of the
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`documents and information referenced in this declaration and on my education, experience,
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`and training. Between now and such time as I am asked to provide further testimony in
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`relation to this matter, I expect to continue my review, evaluation, and analysis.
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`For my work in this matter, my employer, Exponent, is being compensated at my standard
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`hourly consulting rate in calendar year 2024 of $450 per hour. Neither my compensation
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`nor Exponent’s compensation is contingent on the substance of my opinions or on the
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`outcome of this matter.
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`Neither Exponent nor I have a conflict of interest with respect to Caterpillar or Wirtgen
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`America.
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`I.
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`Background and Qualifications
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` My background and qualifications were presented in my Opening Report and are
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`incorporated by reference. My curriculum vitae remains the same as attached to that report,
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`while an updated list of cases from the past four years in which I have testified as an expert
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`at trial or by deposition which is attached herein as Appendix A.
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` My Rebuttal Report provides an overview of the technology at issue and the Accused
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`Products.11
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`II.
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`Information Considered and Summary of Opinions
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`In addition to the items cited in my Opening Report, Rebuttal Report, and Reply Report,
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`the documents listed in Appendix B attached hereto, and any other references cited in this
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`declaration, in reaching my opinions I have considered and continue to consider the
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`viewpoint of a PHOSITA at the time of the alleged inventions of the Asserted Patents.12
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`11 See Ex. 32, Rebuttal Report ¶¶ 32-72.
`12 See Ex. 31, Opening Report ¶¶ 54-57.
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`Given my level of education, experience, and licensure, I am a person of more than ordinary
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`skill in the art.
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`I independently reviewed Claims 1 and 5 of the ’395 Patent and Claims 1 and 5 of the ’788
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`Patent. It is my opinion that:
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`• The device recited in Claim 1 of the ’788 Patent is substantially the same and/or an
`obvious variation of the device recited in invalidated Claim 1 of the ’395 Patent.
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`• The PTAB’s findings regarding the novelty of Claim 5 of the ’395 Patent are
`inapplicable to Claim 5 of the ’788 Patent.
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`• Wirtgen America’s positions regarding the Accused Products’ infringement of Claim
`5 of the ’788 render this claim indistinguishable from Claim 1 of the ’788 Patent.
`Accordingly, Claim 5 of the ’788 also recites a device which is substantially the same
`and/or an obvious variation of the device recited in invalidated Claim 1 of the ’395
`Patent.
`III. Legal Standards
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`I am an engineer and not a lawyer. However, my analysis has been guided by legal
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`principles as explained to me by counsel for Caterpillar, as well as my prior experience
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`with intellectual property matters. I presented my understanding of the legal principles
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`pertaining to persons of ordinary skill in the art and invalidity in my Opening Report and
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`infringement in my Rebuttal Report. In this declaration, I explain my understanding of the
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`operative legal principles where that applies.
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`I understand that the collateral estoppel doctrine bars a patent owner from asserting
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`infringement of a patent claim if a substantially similar patent claim was invalidated in an
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`IPR proceeding. I understand that collateral estoppel may apply even if the patent claims
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`use different language to describe substantially the same invention so long as the
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`differences between an unadjudicated patent claim and previously adjudicated patent claim
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`do not materially alter the question of invalidity. For example, I understand that collateral
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`estoppel may apply to a patent claim if it merely claims an obvious variation of a
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`previously-invalidated claim.
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`IV. Claim Construction
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`In the matter at issue, the Court has issued claim constructions of certain claim terms in the
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`Asserted Patents and adopted constructions of terms to which the parties in this matter have
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`agreed, which are set forth in the table below.13
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`Court’s Construction
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`“switch over from a first selected subset of
`sensors that are controlling at the time of
`switchover to a second selected subset”
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`“An electronic controller”
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`Proposed Claim Term
`“switch over from control based upon a first
`selected subset of the plurality of selectable
`sensors to control based upon a second
`selected subset”
`’788 Patent, Claim 1
`“A controller”
`’788 Patent, Claim 1
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`“Indication and setting devices”
`’788 Patent, Claim 1
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`“Without interruption of [/interrupting] the
`milling operation”
`’788 Patent, Claim 1
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`“Current actual value”
`“Currently measured actual value”
`’788 Patent, Claim 1
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`“Switchover device” / “switchover
`system”
`’788 Patent, Claim 1
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`“Operating parameter input and display
`devices”
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`“Without stopping the act of milling”
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`“Controller input and output switch”
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`I have applied these claim constructions in my analyses.
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`13 D.I. 168, 182.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 7 of 31 PageID #: 33311
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`V.
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`The Device Recited in Claim 1 of the ’788 Patent is Substantially the Same and/or
`an Obvious Variation of the Device Recited in Invalidated Claim 1 of the ’395
`Patent
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`As discussed above, in IPR2018-01091 the PTAB found that claims 1, 3, 6-8, 10, 11, 13,
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`16, 17, 19, 20, 22, 24, 26, and 27 of the ’395 Patent were invalid because they would have
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`been obvious to a PHOSITA in view of prior art.14
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`As stated above, the ’395 Patent shares a common specification, title (“Road Construction
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`Machine, Levelling Device, As Well as Method for Controlling the Milling Depth or
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`Milling Slope in a Road Construction Machine”), and inventor list with the ’788 Patent.
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`Both patents also share a specification, title, and inventor list with U.S. Patent No.
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`8,690,474 (“the ’474 Patent).
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`In my Opening Report, I provided an invalidity analysis of Claims 19 and 21 of the ’474
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`Patent. For each of those claims, my analysis relied on the substantial similarities between
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`the claim and Claim 1 of the ’788 Patent.15 In particular, I explained that the elements of
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`each of Claims 19 and 21 of the ’474 Patent were substantially similar to those of Claim 1
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`of the ’788 Patent, and thus my invalidity analysis for Claim 1 of the ’788 Patent applied
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`to Claims 19 and 21 of the ’474 Patent as well.
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`I further showed that those same claims (19 and 21 of the ’474 Patent) were substantially
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`similar and/or obvious variations of Claim 1 of the ’395 Patent.16 Transitively, my analysis
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`in my Opening Report alone forms a basis to conclude that Claim 1 of the ’788 Patent is
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`substantially similar and/or an obvious variation of Claim 1 of the ’395 Patent.
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`14 Ex. 23 (Case No. IPR2018-01091-49, Final Written Decision).
`15 See, e.g., Ex. 31, Opening Report, ¶¶ 223-237.
`16 Ex. 31, Opening Report, ¶¶331-339.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 8 of 31 PageID #: 33312
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`Additionally, as explained in more detail below, from a limitation-by-limitation analysis
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`(using the Court’s claim construction), the device recited in Claim 1 of the ’788 Patent is
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`substantially the same and/or an obvious variation of the device recited in invalidated
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`Claim 1 of the ’395 Patent.
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`To start, each of the ’788 Patent, Claim 1 and ’395 Patent, Claim 1 recite the same preamble
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`and (covering road construction machines) and the same components: a milling drum, a
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`leveling system, a plurality of selectable sensors, a plurality of indication and setting
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`devices, a controller, and a switchover device. In Figure 1 below, I draw a box around
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`each limitation of Claim 1 of the ’395 Patent and map the limitation to a corresponding
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`limitation of Claim 1 of the ’788 Patent to show the similar limitations.
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`Figure 1: Claim 1 of the ’395 Patent and Claim 1 of the ’788 Patent have a nearly one-to-one
`mapping of claim elements.
`I provide below a more detailed analysis of the similarities between claim elements.
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`Claim 1:
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`’395 Patent 1[pre]: A road construction machine for the treatment of road surfaces,
`comprising:
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`’788 Patent 1[pre]: A road construction machine for the treatment of road surfaces,
`comprising:
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`As can be seen, the preamble to Claim 1 of the ’395 Patent and the preamble to Claim 1 of
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`the ’788 Patent are identical.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 10 of 31 PageID #: 33314
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`’395 Patent Claim 1[a]: a milling drum, the milling drum being position adjustable with
`regard to at least one position characteristic selected from the group consisting of
`milling depth of the drum and slope of the drum; and
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`’788 Patent Claim 1[a]: a milling drum being height adjustable with regard to milling
`depth and/or slope; and
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`Claim 1[a] of the ’395 Patent differs from its counterpart in the ’788 Patent in that it refers
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`to being “position adjustable” as opposed to “height adjustable.” A PHOSITA would
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`recognize that in the context of the road milling machinery at issue, altering the height of
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`the milling rotor would be synonymous with altering the position of the milling drum, as
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`the height of the drum is the only relevant position which could be adjusted in modifying
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`the desired grade and/or slope of the machine. For example, in my Opening Report, I show
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`materials for the PM-465 and PM-565 prior art milling machines which describe the
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`adjustment of the grade and slope of the milling drum.17
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`Furthermore, the ’788 Patent limitation of “with regard to milling depth and/or slope” is
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`simply another way of stating the limitation including in the ’395 Patent of “at least one
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`position characteristic selected from the group consisting of milling depth of the drum and
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`slope of the drum.”
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`Accordingly, a PHOSITA would view the limitations of Claim 1[a] of the ’395 Patent and
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`Claim 1[a] of the ’788 Patent as reciting the same device.
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`’395 Patent Claim 1[b]: a leveling system configured to control the at least one position
`characteristic, the leveling system including:
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`’788 Patent Claim 1[b]: a leveling system operable to control the milling depth and/or
`the slope of the milling drum, the leveling system including:
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`17 Ex. 31, Opening Report, ¶ 161.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 11 of 31 PageID #: 33315
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`A PHOSITA would understand a leveling system “configured” to control (as in the ’395
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`Patent) to be synonymous with a leveling system “operable” to control (as in the ’788
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`Patent) as the words convey the same meaning. Furthermore, “the at least one position
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`characteristic” in the ’395 Patent, Claim 1[b] is “selected from the group consisting of
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`milling depth of the drum and slope of the drum” (Claim 1[a]) and is therefore synonymous
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`with “the milling depth and/or the slope of the milling drum” as in the ’788 Patent Claim
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`1[b]. For example, in my Opening Report, I show materials for the PM-465 and PM-565
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`prior art milling machines describing the levelling systems for those machines controlling
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`the milling depth and/or slope of the milling drum.18
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`Accordingly, a PHOSITA would view the limitations of Claim 1[b] of the ’395 Patent and
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`Claim 1[b] of the ’788 Patent as reciting the same device.
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`’395 Patent Claim 1[c]: a plurality of selectable sensors, each sensor configured to sense a
`current actual value of an operating parameter corresponding to at least one of the milling
`depth of the drum and the slope of the drum:
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`’788 Patent Claim 1[c]: a plurality of selectable sensors for sensing current actual values
`of operating parameters including the milling depth and/or the slope of the milling
`drum relative to a reference surface:
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`The Court construed the term “current actual value” to mean “currently measured actual
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`value”; a PHOSITA would not interpret any difference between the limitation of the ’395
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`Patent disclosing that each sensor is “configured to sense a current actual value of an
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`operating parameter” and the disclosure in the ’788 Patent that the sensors (en masse) are
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`for “sensing current actual values of operating parameters;” in other words, if each sensor
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`18 Ex. 31, Opening Report, ¶ 163.
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`has the purpose of sensing current actual values (as in the ’395 Patent), then the plurality
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`of sensors is used for “sensing current actual values of operating parameters,” as in the
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`’788 Patent.
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`A PHOSITA would also understand that “at least one of the milling depth and the slope”
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`is technically the same as “including the milling depth and/or the slope.” Both mean one
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`of, or both of, milling depth and slope.
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`Furthermore, in the context of road milling machinery, both the milling depth and slope
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`are measured with respect to some surface (either physical or projected), making the
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`disclosure of “relative to a reference surface” in ’788 Patent Claim 1[c] redundant with
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`respect to Claim 1[c] of the ’395 Patent. For example, the common specifications of the
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`’788 and ’395 Patents teach that the recited milling machine “register[s] the current actual
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`value of the milling depth and/or slope of the milling drum relative to a reference surface”19
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`and that “the road surface or a defined horizontal plane pre-determined, for instance, by a
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`laser, or any other freely definable pre-selected surface can be used as a reference
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`surface.”20 The common specification does not teach any means for determining the grade
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`and/or slope without reference to a surface.
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`As but one example of a machine disclosing both Claim 1 of the ’395 and Claim 1 of the
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`’788 Patent, in my Opening Report I show materials for the PM-465 and PM-565 prior art
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`milling machines describing a variety of on-board sensors on those machines, all of which
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`use the ground surface as the reference to determine grade and slope.21
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`19 Ex. 33, ’788 Patent, 3:10-12.
`20 Ex. 33, ’788 Patent, 3:31-33.
`21 Ex. 31, Opening Report, ¶ 168.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 13 of 31 PageID #: 33317
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`Accordingly, a PHOSITA would view the limitations of Claim 1[b] of the ’395 Patent and
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`Claim 1[b] of the ’788 Patent as reciting the same device.
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`’395 Patent Claim 1[d]: a plurality of indication and setting devices, each of the indication
`and setting devices being associatable with at least one of the plurality of selectable sensors,
`each indicating and setting device being operable to indicate the current actual value of and
`to set a set value for each operating parameter sensed by its associated sensor or sensors;
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`’788 Patent Claim 1[d]: a plurality of indication and setting devices, each of the indication
`and setting devices being associatable with at least one of the plurality of selectable sensors,
`each indicating and setting device being operable to indicate the current actual value of and
`to set a set value for each operating parameter sensed by its associated sensor;
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`The Court construed “indication and setting devices” to mean “operating parameter input
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`and display devices.” The only difference in the limitations of Claim 1[d] of the ’395
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`Patent and Claim 1[d] of the ’788 Patent is the disclosure that the indication and setting
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`device indicates and sets values for each operating parameter “sensed by its associated
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`sensor or sensors” (i.e., singular or plural sensor, ’395 Patent) versus “sensed by its
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`associated sensor” (singular, ’788 Patent). However, other limitations of the ’788 Patent
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`recite “at least one of the plurality” of sensors and “each operating parameter sensed” by
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`the sensors. These additional limitations convey that the indication and setting devices
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`disclosed by the ’788 Patent indeed display and set values for operating parameters of at
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`least one sensor (i.e., sensor or sensors). Thus, a PHOSITA would understand that the
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`limitations are the same or at least substantially the same.
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`Given that this is the only difference in wording between the ’395 Patent and ’788 Patent
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`versions of the claim, a PHOSITA would interpret the two limitations as reciting the same
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`device.
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`’395 Patent Claim 1[e]: a controller and switchover system configured to control the
`at least one position characteristic conditioned on set value or values and sensed
`current actual value or values of the operating parameters sensed by a selected subset of
`the plurality of selectable sensors by returning at least one adjustment value to adjust the
`at least one position characteristic so that the sensed current actual value or values of
`the operating parameter or parameters approach the set value or values for the selected
`subset of the plurality of selectable sensors; and
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`’788 Patent Claim 1[e]: a controller operable to control the milling depth and/or
`the slope of the milling drum conditioned on set values and sensed current actual
`values of the operating parameters sensed by a selected subset of the plurality
`of selectable sensors by returning at least one adjustment value to adjust the milling depth
`and/or slope of the milling drum so that the sensed current actual values of the
`operating parameters approach the set values for the selected subset of the plurality of
`selectable sensors
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`The Court construed “controller” to mean “an electronic controller” and “switchover
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`device” to mean “controller input and output switch.” Claim 1[e] of the ’395 Patent recites
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`a “controller and switchover system configured to,” whereas Claim 1[e] of the ’788 Patent
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`recites only a “controller operable to.” In addition to recognizing “configured to” and
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`“operable to” to be synonymous, a PHOSITA would also recognize that each of ’788 Patent
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`and ’395 Patent versions of Claim 1[e] recite the same “controller.” As each version of the
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`claim language only refers to types of “controlling” that the “controller and switchover
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`system” (’395 Patent) carries out, a PHOSITA would interpret the language of the ’395
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`Patent as discussing the controller and switchover system as a group, but only reciting the
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`functionality of the controller, as in the ’788 Patent. For example, in my Opening Report,
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`I show materials for the PM-465 and PM-565 prior art milling machines which describe
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`only the controller as performing the control of the milling depth and/or slope.22
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`Next, while the ’395 Patent recites that the device is conditioned on “set value or values
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`and sensed current actual value or values” (i.e., singular or plural) while the ’788 Patent
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`22 Ex. 31, Opening Report, ¶¶183-187.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 15 of 31 PageID #: 33319
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`recites “set values and sensed current actual values” (only plural), there is nothing
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`significant about this difference. A PHOSITA would have understood the devices recited
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`by the ’395 Patent and the ’788 Patent, respectively, as identical because both the set and
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`measured value that are used by the controller can change over time, leading to multiple
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`“values.” Aside from this, a PHOSITA viewing the specification of the ’395 and ’788
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`Patents would not have interpreted any significant difference between a controller using a
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`single value (of, e.g., slope) as opposed to a controller using two or more values (e.g., grade
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`and slope) for control. The same principle applies to other facial differences between the
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`’395 and ’788 Patent Claim 1[e] language of “current actual value or values of the operating
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`parameter or parameters approach the set value or values” (’395 Patent) as compared to
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`“current actual values of the operating parameters approach the set values” (’788 Patent);
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`a PHOSITA would not recognize a substantial difference (if any difference at all) in the
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`two recitations. At a minimum, a PHOSITA would interpret that the device recited in the
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`’788 Patent Claim 1 is at least included in the ’395 Patent description as, e.g., “value or
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`values” and “parameter or parameters” could be interpreted as broader than simply
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`“values” and “parameters.”
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`A final facial difference between Claim 1[e] in the ’395 Patent and the ’788 Patent is “at
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`least one position characteristic” (’395 Patent) versus “the milling depth and/or
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`the slope of the milling drum” (’788 Patent), which are merely different ways of expressing
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`the same thing. See, e.g., analysis above.
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`Accordingly, a PHOSITA would view the limitations of Claim 1[e] of the ’395 Patent and
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`Claim 1[e] of the ’788 Patent as reciting the same device.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 16 of 31 PageID #: 33320
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`’395 Patent Claim 1[f]: a controller and switchover system configured to switch over
`from control based upon a first selected subset of the plurality of selectable sensors to
`control based upon a second selected subset during milling operation and without any
`erratic alteration of the at least one adjustment value, the second selected subset exchanging
`at least one replacement sensor not in the first subset for at least one replaced sensor that
`was in the first subset.
`
`’788 Patent Claim 1[f]: a switchover device operable to switch over from control based
`upon a first selected subset of the plurality of selectable sensors to control based upon a
`second selected subset, the second selected subset exchanging at least one replacement
`sensor not in the first subset for at least one replaced sensor that was in the first subset; and
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`and
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`’788 Patent Claim 1[g]: the controller being operable to effect switchover from control
`based upon the first selected subset of selectable sensors to control based upon the second
`selected subset of selectable sensors during milling operation without interruption of the
`milling operation and without any erratic alteration of the at least one adjustment value
`for adjusting the milling depth and/or slope of the milling drum.
`
`
`The Court construed the phrase “switch over from control based upon a first selected
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`subset of the plurality of selectable sensors to control based upon a second selected
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`subset” to “switch over from a first selected subset of sensors that are controlling at the
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`time of switchover to a second selected subset.”
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`Claim 1[f] of the ’395 Patent effectively presents a consolidated version of what is
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`disclosed in Claims 1[f] and 1[g] of the ’788 Patent; as can be seen, while the ’395 Patent
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`version recites “a controller and switchover system configured to switch over,” the ’788
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`Patent recites “a switchover device operable to switch over” and a “controller being
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`operable to effect switchover.” In other words, the ’395 Patent describes both the controller
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`and switchover system as being configured to provide the sensor switching functionality
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`while the ’788 Patent recites that the switchover device is “operable” to switch over
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`whereas the controller is “operable to effect” switchover.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 17 of 31 PageID #: 33321
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`
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`As I explained in my Opening Report,23 the common specification of the ’788 and ’395
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`Patents provide little guidance as to what difference lies in being “operable” versus “being
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`operable to effect,” and a PHOSITA would meet a significant challenge in interpreting the
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`limitation of Claim 1 of the ’788 Patent. However, Wirtgen America’s technical expert for
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`the ’788 Patent, Dr. Christopher Rahn, opined:
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`“A skilled artisan would understand the plain and ordinary meaning of these
`terms to indicate that both the switchover device/system and the controller
`are used to switch over control.”24
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`and
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`“This is also consistent with my opinion that any component that performs
`a step of Caterpillar’s hot-swap switchover process is ‘operable to
`switchover,’ ‘operable to effect switchover,’ or ‘configured to switchover,’
`as recited in the Asserted Claims.”25
`
`
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`Accordingly, Wirtgen America has taken the position that the terms “operable to” and
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`“operable to effect” are synonymous. Under that position, then, the limitations of Claim
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`1[f] and Claim 1[g] of the ’788 Patent recite the same device functionality as recited in
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`Claim 1[f] of the ’395 Patent.
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`
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`Claim 1[f] of the ’395 Patent also recites that the switchover occurs “during milling
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`operation and without any erratic alteration of the at least one adjustment value,” whereas
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`Claim 1[g] of the ’788 Patent recites that the switchover occurs “during milling operation
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`without interruption of the milling operation and without any erratic alteration of the at
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`least one adjustment value for adjusting the milling depth and/or slope of the milling drum”
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`(emphasis added). The Court construed the phrase “without interruption of the milling
`
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`23 See Ex. 31, Opening Report, ¶¶ 133-150.
`24 Ex. 34, Reply Expert Report of Dr. Christopher Rahn, ¶56.
`25 Ex. 34, Reply Expert Report of Dr. Christopher Rahn, ¶63.
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`Case 1:17-cv-00770-JDW Document 367 Filed 04/12/24 Page 18 of 31 PageID #: 33322
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`operation” to mean “without stopping the act of milling” and a PHOSITA would
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`understand that the entire function of the switchover functionality is to provide a
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`switchover without stopping the act of milling. Accordingly, a PHOSITA would
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`understand that the ’395 Patent disclosures that the switchover both occurs during milling
`
`and occurs “without any erratic alteration of the at least one adjustment value” means that
`
`the act of milling is not stopped; e.g. the limitations of Claim 1 of the ’788 Patent do not
`
`add anything that was not already recited by Claim 1 of the ’395 Patent.
`
`
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`A final difference in wording between the language of the two patent claims is that the ’395
`
`Patent Claim 1 recites “without any erratic alteration of the at least one adjustment value”
`
`whereas the ’788 Patent Claim 1 recites “without any erratic alteration of the at least one
`
`adjustment value for adjusting the milling depth and/or slope of the milling drum.”
`
`However, a PHOSITA would understand in the context of road milling machinery, the
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`recited adjustment values are used for controlling both milling depth and/or slope.
`
`Accordingly, a PHOSITA would view the limitations of Claim 1[f] of the ’395 Patent and
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`Claims 1[f] and 1[g] of the ’788 Patent as reciting the same device.
`
`Therefore, as has been shown above, the device recited by Claim 1 of the ’395 Patent is at
`
`least substantially the same (if not identical) to the device recited by Claim 1 of the ’788
`
`Patent.
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`Alternatively, to the extent that the Court finds that the devices recited by Claim 1 of the
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`’395 Patent and Claim 1 of the ’788 Patent are not identical or substantially the same, the
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`device recited by the ’395 Patent would certainly have been obvious to a PHOSITA in view