Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 1 of 10 PageID #: 33336
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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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`JURY TRIAL
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`DECLARATION OF RICHARD W. KLOPP, Ph.D., P.E., F.A.S.M.E. IN SUPPORT OF
`DEFENDANT CATERPILLAR INC.’S OPENING BRIEF RE EQUITABLE DEFENSES
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`Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 2 of 10 PageID #: 33337
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`I.
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`Introduction
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`1.
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`I, Richard W. Klopp, have been retained in this matter by counsel for Defendant
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`Caterpillar Inc. (“Caterpillar” or “Defendant”). I am aware that Plaintiff Wirtgen America, Inc.
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`(“Wirtgen America” or “Plaintiff”) filed suit in the United States District Court, District of
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`Delaware alleging, among other things, that Caterpillar infringes U.S. Reissued Patent No.
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`RE48,268 (the “’268 Patent”).1
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`I submitted an Opening Expert Report of Richard W. Klopp, Ph.D., P.E., F.A.S.M.E.
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`(“the Klopp Opening Report”) on May 19, 2023, in which I presented background, my
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`qualifications, my investigations, the operative claim constructions, and, among other things, my
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`analysis and conclusions regarding the invalidity of the ’268 Patent asserted by Wirtgen America.
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`I also submitted a Rebuttal Expert Report of Richard W. Klopp, Ph.D., P.E., F.A.S.M.E. (“the Klopp
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`Rebuttal Report”) on June 16, 2023, in which I presented, among other things, my analysis, rebuttal,
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`and conclusions regarding alleged infringement of the ’268 Patent asserted by Wirtgen America. I
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`further submitted a Reply Expert Report of Richard W. Klopp, Ph.D., P.E., F.A.S.M.E. (“the Klopp
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`Reply Report”) on July 7, 2023 in which I presented, among other things, my responses to Wirtgen
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`America’s experts’ rebuttal opinions to my opening expert report.
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`I attended and testified in a seven-day jury trial held in this case, which began on
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`February 12, 2024, and concluded on February 21, 2024. Relevant to the ’268 Patent, Wirtgen
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`America accused, among other things, Caterpillar’s PM600 and PM800 Series cold planer
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`1 I referred to RE48,268 as the RE268 patent in my prior reports but opt to call it the ’268
`Patent herein to be consistent with other writings that reference this declaration.
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`Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 3 of 10 PageID #: 33338
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`machines (the “Accused Machines” herein) of infringing Claim 32. The jury found that Claim 32
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`of the ’268 Patent was both invalid as obvious and was not infringed by the Accused Machines.2
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`I have been asked to submit this declaration in support of Caterpillar’s opening brief
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`regarding equitable defenses, specifically with respect to Caterpillar’s equitable defense of
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`intervening rights on the ’268 Patent. I understand the issue of intervening rights arises because
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`Wirtgen filed for and was issued the ’268 Patent only after Caterpillar developed and introduced
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`the PM600 and PM800 Series machines. Furthermore, I understand that the ’268 Patent was a re-
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`issue of U.S. Patent No. 8,408,659 (“the ’659 Patent”). I understand that the European counterpart
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`of the ’659 Patent, namely European Patent No. 1,875,004 (the “EP ’004 Patent”) was found to be
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`invalid by a neutral court appointed expert in an Italian court of law. I have been asked to consider
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`the similarities, if any, between the ’659 Patent Claim 14 and EP ’004 Patent Claim 1.
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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, and
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`training. Between now and such time as I am asked to testify at a deposition or another trial, I
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`expect to continue my review, evaluation, and analysis.
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`My employer Exponent, Inc. (“Exponent”) is being compensated at my standard
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`hourly consulting rate in calendar year 2024 of $695 per hour. Neither my compensation nor
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`Exponent’s compensation is contingent on the substance of my opinions or on the outcome of this
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`matter.
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`Neither Exponent nor I have a conflict of interest with respect to the Plaintiff or
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`Defendant.
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`2 D.I. 246 (Jury Verdict).
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`Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 4 of 10 PageID #: 33339
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`II.
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`Background
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`The ’268 Patent is a reissued patent, reissued on October 20, 2020. The ’268 Patent
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`is a re-issue of the ’659 Patent, which was issued on April 2, 2013.
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`The EP ’004 Patent was issued on July 14, 2010. The EP ’004 Patent is the European
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`counterpart to the ’659 Patent – both patents are national phase entries spawning from the same
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`Patent Cooperation Treaty application, PCT/EP2006/060907.
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`III. The Italian Action (Milan)
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`On July 12, 2017, Wirtgen GmbH (Wirtgen America’s German sister entity)
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`initiated an action in the Court of Milan, accusing certain of Caterpillar’s machines of violating
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`certain patents, including the EP ’004 Patent.3 , 4 On January 10, 2018, Caterpillar responded,
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`asserting, amongst other things, that Claim 1 of the EP ’004 Patent was invalid as anticipated by
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`Caterpillar’s PM-565 cold planer, which had been manufactured and commercialized since 1993.5
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`Claim 1 of the EP ’004 Patent reads as follows:6
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`A drive train with a machine frame for a construction machine comprising a
`working device configured as a working drum (6), said drive train (8)
`comprising the following elements:
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`- a drive engine (10),
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`3 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.
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`4 Ex. 21 (’268 Patent File History Excerpts) (Milan Action – Court Appointed Expert’s Final
`Opinion) (WA-0013562) at -564.
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`5 Ex. 21 (’268 Patent File History Excerpts) (Milan Action – Caterpillar’s Statement of
`Defense) (WA-0007204) at -232.
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`6 Ex. 21 (’268 Patent File History Excerpts) (EP ’004 Patent) (WA-0007131) at -136-137.
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`Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 5 of 10 PageID #: 33340
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`- a traction mechanism (12) for the mechanical drive of the working drum (6)
`with a drive element and an output element (11, 13) and a traction element
`(30),
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`- a device (14) for switching the torque between the drive engine (10) and the
`working drum (6), and
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`- a device (16) for driving at least one hydraulic pump,
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`wherein
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`- the elements of the drive train (8) are divided into at least two groups,
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`- the first group (3) shows at least the drive engine (10),
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`- the second group (5) shows at least the drive element (11) of the traction
`mechanism (12),
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`- where the first and the second groups (3, 5) are connected to one another via
`an articulated coupling device (20),
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`characterized in that
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`the first group is attached to the machine frame (4) elastically with low spring
`stiffness for the purpose of reducing the transmission of vibrations to the
`machine frame (4), and that the second group is attached to the machine frame
`(4) with high spring stiffness or in a rigid manner.
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`The numbered items point to the following figures in the EP ’004 Patent, which are
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`also figures in the ’659 and ’268 Patents:7
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`7 Compare Ex. 21 (’268 Patent File History Excerpts) (EP ’004 Patent) (WA-0007131) at -
`140, -142 with Ex. 30 (’659 Patent) at Figs. 1, 5 with Ex. 20 (’268 Patent) at Figs. 1, 5.
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`Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 6 of 10 PageID #: 33341
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`In the proceedings before the Court of Milan, a neutral court-appointed engineer
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`technical expert, Mr. Paolo Piovesana, concluded that the EP ’004 Patent was invalid as anticipated
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`by the PM-565.8 Mr. Piovesana assessed Claim 1 of the EP ’004 Patent for: (1) lack of novelty;
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`and (2) lack of inventive step.9 I understand that lack of novelty is equivalent to anticipation in
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`U.S. patent law and that lack of inventive step is equivalent to obviousness. Mr. Piovesana relied
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`on five pieces of prior art, and I summarize his opinion vis-à-vis Claim 1 of the EP ’004 Patent
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`validity for each:
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` The Caterpillar PM-565 and PM 565B machines — Mr. Piovesana determined that Claim 1 of
`the EP ’004 Patent was anticipated by the PM-565 machine.10 I agree with Mr. Piovesana’s
`opinion — ’004 Patent claim 1 reads directly on the PM-565 machine and there is no question
`that the PM-565 qualifies as prior art.
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`8 Ex. 21 (’268 Patent File History Excerpts) (Court of Milan – Court-Appointed Expert’s
`Final Opinion) (WA-0013562) at -645 (“I believe that the PM-565 machine deprives EP 1 004 of
`novelty.”) (emphasis in original).
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`9 Id. at -645-646.
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`10 Id. at -644-645.
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`Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 7 of 10 PageID #: 33342
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` US 2004/0237490 — Mr. Piovesana determined that Claim 1 of the EP ’004 Patent was
`obvious (“at the very least”)11 in view of this patent application for a mowing machine.
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` US 1445617 — Mr. Piovesana determined that ’004 Patent claim 1 was obvious in view of this
`patent disclosing an electric motor mounted on rubber isolators and connected to a pump by a
`flexible coupling.12
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` EP 0080831 — Mr. Piovesana noted that this patent for an engine powered driveline disclosed
`elements of ’004 Patent claim 1. However, he did not state an opinion on anticipation or
`obviousness.13
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` DE 3149768 — Mr. Piovesana noted this patent for an engine powered driveline disclosed
`elements of ’004 Patent claim 1. However, as with EP 0080831, he did not state an opinion on
`anticipation or obviousness.14
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` Mr. Piovesana also acknowledges and does not dispute Caterpillar’s position that,
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`regardless of these five specific prior art disclosures, Claim 1 of the EP ’004 Patent was obvious
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`in view of the general knowledge of a PHOSITA as of the priority date.15
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`IV. Comparison of the EP ’004 Patent to the ’659 Patent
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`Claim 14 of the ’659 Patent is the U.S. counterpart of Claim 1 of the EP ’004 Patent.
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`Table 1 shows that the claim language is nearly identical between the two:
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`Table 1. Comparison of EP ’004 Claim 1 and ’659 Claim 14.
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`’659 Patent Claim 14
`A construction machine,
`comprising:
`a machine frame carried by a
`chassis;
`a working drum;
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`Analysis
`Substantially identical apart from
`’659 narrowing that the machine
`frame be carried by a chassis.
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`Substantially identical
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`EP ’004 Patent Claim 1
`A drive train with a machine
`frame for a construction
`machine comprising
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`a working device configured as
`a working drum (6),
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`11 Id. at -645-646.
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`12 Id. at -646-647.
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`13 Id. at -647-648.
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`14 Id. at -648-649.
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`15 Id. at -649.
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`Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 8 of 10 PageID #: 33343
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`EP ’004 Patent Claim 1
`said drive train (8) comprising
`the following elements:
`- a drive engine (10),
`- a traction mechanism (12) for
`the mechanical drive of the
`working drum (6) with a drive
`element and an output element
`(11, 13) and a traction element
`(30),
`- a device (14) for switching the
`torque between the drive engine
`(10) and the working drum (6),
`and
`- a device (16) for driving at
`least one hydraulic pump,
`wherein
`- the elements of the drive train
`(8) are divided into at least two
`groups,
`- the first group (3) shows at
`least the drive engine (10),
`- the second group (5) shows at
`least the drive element (11) of
`the traction mechanism (12),
`- where the first and the second
`groups (3, 5) are connected to
`one another via an articulated
`coupling device (20),
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`characterized in that the first
`group is attached to the
`machine frame (4) elastically
`with low spring stiffness for the
`purpose of reducing the
`transmission of vibrations to the
`machine frame (4), and that the
`second group is attached to the
`machine frame (4) with high
`spring stiffness or in a rigid
`manner.
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`’659 Patent Claim 14
`a drive train including at least
`the following elements:
`a drive engine;
`a traction drive assembly for
`mechanically driving the working
`drum, the traction drive
`assembly including a drive
`element, an output element, and
`a traction element;
`a clutch for switching the torque
`between the drive engine and
`the working drum; and
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`Analysis
`Substantially identical
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`Substantially identical
`Substantially identical
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`Substantially identical
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`a hydraulic pump drive; and
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`Substantially identical
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`Substantially identical except
`that the second group (subset)
`in ’004 claim 1 has narrower
`scope – only the drive element
`(drive pulley)
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`Substantially identical
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`wherein the elements of the
`drive train are divided into at
`least a first subset and a second
`subset; and
`wherein the drive train further
`includes an articulated coupling
`connecting the first subset to the
`second subset; and
`wherein the first subset includes
`at least the drive engine; and
`wherein the second subset
`includes at least one element
`selected from the group
`consisting of:
`the hydraulic pump drive;
`the clutch; and
`the drive element of the traction
`drive assembly; and
`wherein the first subset is
`attached to the machine frame
`elastically with a lower spring
`stiffness so that transmission of
`vibrations to the machine frame
`is reduced, and the second
`subset is attached to the
`machine frame with a higher
`spring stiffness or in a rigid
`manner.
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`-8-
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`Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 9 of 10 PageID #: 33344
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`V.
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`Conclusion
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`Based on the nearly identical nature of Claim 1 of the EP ’004 Patent and Claim 14
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`of the ’659 Patent, it is my opinion that the conclusion of the Italian court regarding Claim 1 of the
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`EP ’004 Patent—that it was invalid as anticipated by the PM-565—would apply equally to Claim
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`14 of the ’659 Patent, rendering it invalid.
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`Case 1:17-cv-00770-JDW Document 368 Filed 04/12/24 Page 10 of 10 PageID #: 33345
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`I declare under the penalty of perjury that the foregoing is true and correct.
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`Executed on April 11, 2024 at Menlo Park, California.
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`By:
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`Richard W. Klopp, Ph.D., P.E., F.A.S.M.E.
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