Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 1 of 32 PageID #: 34520
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff/Counterclaim-Defendant,
`
`v.
`
`C.A. No. 17-770-JDW
`
`CATERPILLAR INC.,
`
`Defendant/Counterclaim-Plaintiff.
`
`WIRTGEN AMERICA’S ANSWERING BRIEF IN OPPOSITION TO
`CATERPILLAR INC.’S MOTION REGARDING ESTOPPEL
`DEFENSES AND OPENING BRIEF IN SUPPPORT OF ITS
`CROSS MOTION TO STRIKE UNTIMELY NEW EXPERT OPINIONS
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 2 of 32 PageID #: 34521
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ........................................................................................................................ iii
`
`Opposition to Caterpillar’s Motion for Equitable Relief .................................................... 3
`
`A.
`
`There is no judicial estoppel as to claim 29 of the ’309 patent. .............................. 3
`
`1.
`
`2.
`
`Caterpillar did not preserve its judicial estoppel argument. ....................... 4
`
`Caterpillar’s judicial estoppel defense fails on the merits. ......................... 6
`
`B.
`
`Prosecution laches does not render the ’530 patent unenforceable. ....................... 9
`
`1.
`
`2.
`
`Prosecution laches does not apply as a matter of law because
`Wirtgen did not extend its patent term. ..................................................... 10
`
`Even if prosecution laches were available as a defense, Caterpillar
`fails to show its application is warranted here. ......................................... 11
`
`C.
`
`D.
`
`The ’268 patent is not subject to intervening rights. ............................................. 16
`
`There is no collateral estoppel of claim 5 of the ’788 patent. ............................... 19
`
`Cross Motion to Strike Caterpillar’s Untimely New Expert Opinions ............................. 23
`
`Conclusion ........................................................................................................................ 25
`
`
`
`III.
`
`IV.
`
`
`
`
`ii
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 3 of 32 PageID #: 34522
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Basista v. Weir,
`340 F.2d 74 (3d Cir. 1965).........................................................................................................5
`
`In re Bogese,
`303 F.3d 1362 (Fed. Cir. 2002)................................................................................................13
`
`Caterpillar Inc. v. Wirtgen America, Inc.,
`IPR2017-02185 ......................................................................................................................6, 8
`
`Comair Rotron, Inc. v. Nippon Densan Corp.,
`49 F.3d 1535 (Fed. Cir. 1995)..................................................................................................19
`
`Cordance Corp. v. Amazon.com, Inc.,
`631 F. Supp. 2d 484 (D. Del. 2009) .............................................................................10, 11, 12
`
`Elm 3DS Innovations, LLC v. Samsung Elecs. Co., Ltd.,
`2021 WL 2070338 (D. Del. May 24, 2021) ...............................................................................9
`
`Glick v. White Motor Co.,
`458 F.2d 1287 (3d Cir. 1972).....................................................................................................5
`
`Hyatt v. Hirshfeld,
`998 F.3d 1347 (Fed. Cir. 2021)................................................................................................10
`
`IOENGINE, LLC v. PayPal Holdings, Inc.,
`607 F. Supp. 3d 464 (D. Del. 2022) (Bryson, J.) .....................................................................20
`
`Jean Alexander Cosms., Inc. v. L’Oreal USA, Inc.,
`458 F.3d 244 (3d Cir. 2006).....................................................................................................19
`
`John Bean Techs. Corp. v. Morris & Assocs., Inc.,
`988 F.3d 1334 (Fed. Cir. 2021)..........................................................................................17, 18
`
`Konstantopoulos v. Westvaco Corp.,
`112 F.3d 710 (3d Cir. 1997).....................................................................................................23
`
`Meyers v. Pennypack Woods Home Ownership Ass’n,
`559 F.2d 894 (3d Cir. 1977)...............................................................................................23, 24
`
`Miller v. Bridgeport Brass Co.,
`104 U.S. 350 (1881) .................................................................................................................10
`
`Montrose Med. Grp. Participating Sav. Plan v. Bulger,
`243 F.3d 773 (3d Cir. 2001).......................................................................................................9
`
`iii
`
`

`

`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 4 of 32 PageID #: 34523
`
`Natera, Inc. v. ArcherDX, Inc.,
`2023 WL 5705962 (D. Del. Sept. 5, 2023) ..................................................................10, 11, 12
`
`Nomadix, Inc. v. Hosp. Core Servs. LLC,
`2015 WL 3948804 (C.D. Cal. June 29, 2015) .........................................................................12
`
`Ohio Willow Wood v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013)................................................................................................19
`
`Oneida Motor Freight, Inc. v. United Jersey Bank,
`848 F.2d 414 (3d Cir. 1988).......................................................................................................9
`
`Ordos City Hawtai Autobody Co., Ltd. v. Dimond Rigging Co., LLC,
`695 Fed.Appx. 864 (6th Cir. 2017) ............................................................................................5
`
`PAR Pharm., Inc. v. TWI Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014)..................................................................................................6
`
`Reiffin v. Microsoft Corp.,
`270 F. Supp. 2d 1132 (N.D. Cal. 2003) ...................................................................................11
`
`Shire Orphan Therapies LLC v. Fresenius Kabi USA, LLC,
`2018 WL 2684097 (D. Del. June 5, 2018) ...............................................................................12
`
`Shockley v. Arcan, Inc.,
`248 F.3d 1349 (Fed. Cir. 2001)..................................................................................................1
`
`Sonos Inc. v. Google LLC,
`2023 WL 6542320 (N.D. Cal. Oct. 6, 2023)............................................................................15
`
`Symbol Techs., Inc. v. Lemelson Med., Educ. & Rsch. Found.,
`422 F.3d 1378 (Fed. Cir. 2005)................................................................................................10
`
`TQ Delta, LLC v. 2Wire, Inc.,
`2021 WL 2671296 (D. Del. June 29, 2021) .............................................................................19
`
`United Therapeutics Corp. v. Liquidia Techs., Inc.,
`2022 WL 823521 (D. Del. Mar. 18, 2022) ..............................................................................20
`
`Webster Elec. Co. v. Splitdorf Elec. Co.,
`264 U.S. 463 (1924) .................................................................................................................10
`
`Statutes
`
`35 U.S.C. § 120 ..............................................................................................................................12
`
`35 U.S.C. § 154(b) .........................................................................................................................13
`
`35 U.S.C. § 252 ..............................................................................................................................16
`
`iv
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 5 of 32 PageID #: 34524
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`Other Authorities
`
`Fed. R. Civ. P. 37(c)(1) ..................................................................................................................23
`
`Fed. R. Civ. P. 26(a) ......................................................................................................................23
`
`v
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 6 of 32 PageID #: 34525
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`I.
`
`Introduction
`
`After years of litigation, Wirtgen and Caterpillar presented their evidence and arguments
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`and a jury rendered a decision: Caterpillar willfully infringed five Wirtgen patents, including the
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`’309 patent, ’530 patent, and ’788 patent at issue in Caterpillar’s motion. The jury thus found
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`that Caterpillar knew about these patents and deliberately incorporated Wirtgen’s technology
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`into its own products. Caterpillar defiantly continued to sell its infringing products even after
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`Wirtgen disclosed all of its infringement theories and filed a Complaint. It even continued to
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`infringe after the ITC found that Wirtgen’s patents were valid and that Caterpillar infringed.
`
`Caterpillar now suggests that, despite its willful disregard of the law and Wirtgen’s
`
`exclusive rights, the equities somehow demand that Wirtgen should be precluded from enforcing
`
`its patents. The law does not countenance such a request. See Shockley v. Arcan, Inc., 248 F.3d
`
`1349, 1361 (Fed. Cir. 2001) (“The record, with its finding of willful infringement, amply
`
`supports the district court’s discretion to deny [defendant] access to equity.”). The Court should
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`not award an extraordinary remedy nullifying the jury’s verdict and allowing Caterpillar to
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`continue its willful infringement. All of Caterpillar’s equitable defenses can be denied on this
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`basis alone. Furthermore, while Caterpillar accuses Wirtgen of bad faith, predatory behavior, and
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`abuse of the patent system, it fails to back up these serious allegations. On the contrary, each of
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`Caterpillar’s equitable defenses suffers from fatal factual and legal flaws.
`
`For the ’309 patent, Caterpillar has expressly admitted that its machines have a four-sided
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`stability pattern—the very fact that Caterpillar now claims Wirtgen is estopped from proving.
`
`See D.I. 212, Statement of Undisputed Material Facts at 78–79 (SUMF 108 and 110 admitting
`
`the 4-sided stability pattern). And Caterpillar never suggested estoppel precluded Wirtgen’s
`
`infringement theory for the ’309 patent before this motion. The argument is therefore forfeited. It
`
`is also legally baseless. Caterpillar ignores that claim 29 requires a milling machine with a four-
`
`1
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 7 of 32 PageID #: 34526
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`sided stability pattern in a specific location—namely, with a widest transverse dimension falling
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`within the footprint of the machine’s rotor. Caterpillar’s prior IPR validity challenge to claim 29
`
`failed because Caterpillar failed to present any evidence that a four-sided stability pattern with
`
`that specific location would be inherent in Caterpillar’s hypothetical combination of two prior-art
`
`patents. In contrast, Wirtgen—relying on expert testimony and a detailed CAD model—proved
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`at trial that Caterpillar’s accused machines actually do have a four-sided stability pattern in that
`
`location. There is no inconsistency between those two findings.
`
`For the ’530 patent, Caterpillar is wrong on the record that the claims asserted here are
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`unique in lacking the “individually adjustable leg” limitation. Contra D.I. 365 (“Br.”) 13.
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`Wirtgen has disclosed and claimed machines with hydraulically coupled legs since the original
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`parent application, and has recited claims not limited to individually adjustable legs since the
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`filing date of the ’530 patent, before Caterpillar’s infringing machines even launched. See Ex.
`
`4570A.0410 (Preliminary Amendment claim 23). Second, Caterpillar’s motion presents no
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`evidence of any “unreasonable delays” in prosecution attributable to Wirtgen. Wirtgen did not
`
`seek any extensions, and Caterpillar makes no attempts to show that the duration of the
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`application’s pendency was in any way unusual. The application that issued to become the ’530
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`patent followed a typical timeline and prosecution history for a continuation application. Indeed,
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`because Wirtgen did not seek to extend the term of the ’530 patent at all—reasonably or
`
`otherwise—prosecution laches should not apply as a matter of law.
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`For the ’268 patent, Caterpillar presents no equitable rationale for why it is entitled to
`
`intervening rights. The reissue claims are not broader than the original claims, so Caterpillar had
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`no basis to believe its machines did not infringe the original claims. Caterpillar tacitly concedes
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`as much, and instead suggests that the Court should apply equitable intervening rights because
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`Caterpillar believed the original claims were invalid. But Caterpillar presented no evidence of its
`
`2
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 8 of 32 PageID #: 34527
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`subjective beliefs on invalidity, and there is no precedent for establishing equitable intervening
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`rights on that basis even if it did. Caterpillar’s theory appears to be that, as long as it started
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`infringing before the reissue, then it should be allowed to infringe forever. Br. 18–19. But parties
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`frequently invest in products and activities before patents issue, and are later found to infringe.
`
`Caterpillar presents no facts unique to this case that warrant treating Caterpillar differently.
`
`For the ’788 patent, Caterpillar’s attempt to assert collateral estoppel is off the mark. The
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`validity issue that Caterpillar tries to estop was not litigated or decided in the IPR proceeding.
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`The applicable standards of proof are different in the PTAB and the district court, making
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`collateral estoppel unavailable as matter of law. Furthermore, the scope of the claims at issue are
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`different, as the claims asserted here have significantly narrower limitations than the claims
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`previously found unpatentable. The legal requirements for collateral estoppel are not met.
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`Finally, in a tacit admission that its estoppel defenses lack support in the factual record,
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`Caterpillar attaches to its Motion two new expert declarations purporting to provide new expert
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`opinions on issues that were never raised before in this case. These new expert opinions are
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`untimely and procedurally improper. Accordingly, Wirtgen moves the Court to strike them.
`
`II.
`
`Opposition to Caterpillar’s Motion for Equitable Relief
`
`There is no judicial estoppel as to claim 29 of the ’309 patent.
`
`A.
`Judicial estoppel does not preclude enforcement of claim 29 of the ’309 patent, which the
`
`jury found valid and infringed. Caterpillar’s contrary argument is both forfeited and meritless.
`
`As a preliminary matter, it is important to be clear what claim 29 requires. Claim 29
`
`depends from claim 26, which requires a “road-building machine” with (i) four tracks, (ii)
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`adjustable cylinders connecting each track to the machine frame, (iii) a working rotor, and (iv)
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`hydraulic coupling lines connecting the adjustable cylinders in such a way that the left front track
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`and the right rear track are adjusted in height in the same direction and in the opposite direction
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`3
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 9 of 32 PageID #: 34528
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`to the right front track and the left rear track. Ex. 0001.0018 (13:58–14:25). Claim 29 adds that
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`the machine “has a four sided stability pattern having a widest transverse dimension, transverse
`
`to the forward direction of the chassis, which widest transverse dimension falls within a footprint
`
`of the working roller or rotor.” Ex. 0001.0018 (14:33–37).
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`In other words, while Caterpillar’s brief labors to obscure the point, claim 29 requires not
`
`only a four-sided stability pattern but also that the pattern be located in a specific place. Namely,
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`the widest part of the pattern when looking at the machine from above (the line D–B in the figure
`
`below) must fall within the rotor footprint (labeled W in the figure below).
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`
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`Ex. 0001.0011. As discussed below, Caterpillar’s estoppel arguments fail in large part because it
`
`ignores this requirement of claim 29.
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`Caterpillar did not preserve its judicial estoppel argument.
`
`1.
`Caterpillar contends that Wirtgen is estopped from arguing that the accused machines
`
`have a four-sided stability pattern. Caterpillar has forfeited that argument several times over.
`
`When Wirtgen moved for summary judgment of infringement of claim 29, D.I. 217,
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`Caterpillar expressly conceded that the accused machines have a four-sided stability pattern. See
`
`D.I. 219, Response to SUMF 108, 110. Caterpillar did not argue that any factual or legal basis
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`4
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 10 of 32 PageID #: 34529
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`(including estoppel) precluded Wirtgen from satisfying its burden of proof for this element. See
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`id. Caterpillar disputed only whether Wirtgen had shown that the four-sided stability pattern is in
`
`the location required by the claims. See id., Response to SUMF 111 (arguing that “there is no
`
`evidence that the resulting four-sided stability pattern’s widest dimension transverse to the
`
`forward direction of the chassis falls within a footprint of the rotating milling drum”).
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`Caterpillar has therefore made a judicial admission that its machines have the required
`
`four-sided stability pattern. See Glick v. White Motor Co., 458 F.2d 1287, 1291 (3d Cir. 1972)
`
`(“[J]udicial admissions are binding for the purpose of the case in which the admissions are
`
`made.”); Handbook of Fed. Evid. § 801:26 (“Judicial admissions . . . have the effect of
`
`withdrawing a fact from contention[, i]nclud[ing] admissions . . . in motions for summary
`
`judgment”). It cannot now contest that fact through an estoppel defense or otherwise.
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`Nor did Caterpillar argue that its machines lacked the four-sided stability pattern in its
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`interrogatory responses or the pretrial order. Indeed, it could not have, as its expert admitted that
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`the limitation was satisfied. Kim Decl. Ex. A (Rakow Dep. 145:20–146:1). Caterpillar similarly
`
`never raised judicial estoppel in its answer, in its interrogatory responses, or in the pretrial order.
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`These arguments are therefore waived. See Ordos City Hawtai Autobody Co., Ltd. v. Dimond
`
`Rigging Co., LLC, 695 Fed.Appx. 864, 875 (6th Cir. 2017) (“[P]arties generally forfeit claims or
`
`defenses not raised in the final pretrial order.”); Basista v. Weir, 340 F.2d 74, 85 (3d Cir. 1965)
`
`(same). The PTAB decision on which Caterpillar relies for its estoppel argument issued in 2019,
`
`and the infringement theory that Caterpillar now asserts is inconsistent with that decision was
`
`disclosed years ago, see Caterpillar Inc. v. Wirtgen America, Inc., IPR2017-02185, Final Written
`
`Decision (P.T.A.B. July 17, 2019); Kim Decl. Exs. B, C, D, J, L. Caterpillar has no excuse for its
`
`delay. For these reasons, too, Caterpillar’s judicial estoppel defense is not preserved.
`
`5
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 11 of 32 PageID #: 34530
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`Caterpillar’s judicial estoppel defense fails on the merits.
`
`2.
`In addition to being forfeited, Caterpillar’s estoppel defense is wholly baseless. There is
`
`no inconsistency between the validity positions Wirtgen advanced at the Board and the
`
`infringement positions Wirtgen advanced in this Court. And there is zero evidence of bad faith.
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`As Caterpillar acknowledges (at 5), it challenged claim 29 as obvious over a road-milling
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`machine (Swisher) and a loading machine with positively coupled cylinders (Neumeier). Neither
`
`reference mentions a four-sided stability pattern, much less its location (indeed, Neumeier does
`
`not even have a rotor). So Caterpillar was forced to rely on an inherency theory. Caterpillar
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`argued that incorporating Neumeier’s positively coupled cylinders into Swisher’s milling
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`machine would have inherently resulted in a milling machine with a four-sided stability pattern
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`in the location required by claim 29. Caterpillar Inc. v. Wirtgen America, Inc., IPR2017-02185,
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`Petition at 49 (P.T.A.B. Oct. 19, 2017).
`
`Wirtgen disputed that Caterpillar had made the required showing. Caterpillar, Wirtgen
`
`explained, had merely asserted that the hypothetical Swisher-Neumeier machine would have a
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`four-sided stability pattern with a widest transverse dimension “disposed about halfway between
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`the front [tracks] . . . and the rear [tracks].” D.I. 369-1 at 48. Merely because the pattern would
`
`be located in “about” a certain location does not establish that the pattern’s widest transverse
`
`dimension would necessarily fall within the footprint of the hypothetical machine’s rotor. See
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`PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (“[I]n order to
`
`rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness
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`analysis—the limitation at issue necessarily must be present, . . . [in] the combination of
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`elements explicitly disclosed by the prior art.”). Wirtgen further pointed out, relying on
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`Caterpillar’s own prior-art patents, that “the location of a stability pattern’s apex between two
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`coupled cylinders is not inherent.” D.I. 369, Ex. 1 at 48 (emphasis added); see Br. 6 n.3.
`
`6
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 12 of 32 PageID #: 34531
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`The Board agreed with Wirtgen. Caterpillar, the Board explained, has not “establish[ed]
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`that the stability pattern of the combined Swisher/Neumeier structure ‘falls within a footprint of
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`the working roller or rotor.’” D.I. 369, Ex. 12 at 53; see also id. at 53–54 (“The conclusion based
`
`on the evidence before us as to whether the four-sided stability pattern is inherent in the
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`Swisher/Neumeier combination proposed by Petitioner, and whether the widest transverse
`
`direction of the pattern necessarily falls within the milling drum’s footprint, is that the evidence
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`is uncertain in an area where the law urges caution and clarity.”). The Board therefore found
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`claim 26 not unpatentable over Caterpillar’s Swisher-Neumeier combination.
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`Wirtgen’s argument here—that Caterpillar’s accused machines have a four-sided stability
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`pattern in the required place—is entirely consistent with Wirtgen’s IPR position. At trial,
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`Wirtgen’s expert Dr. Lumkes explained that a machine configured with the ride-control feature
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`of the accused products—where cylinders of equal value are interconnected and one has to move
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`up when the adjacent ones move down—has a certain identifiable four-sided stability pattern. Tr.
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`595:14–22. He analyzed a detailed CAD model of Caterpillar’s machines to precisely determine
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`that the widest transverse dimension of that pattern would intersect the rotor. Tr. 595:23–601:10;
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`Ex. 391A; contra Br. 6–7 (incorrectly stating that the block-quote in its brief constituted
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`Wirtgen’s “entire infringement case” on claim 29). He also took measurements of the actual
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`machines “to confirm that the dimensions that were on the CAD file” accurately reflected the
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`machines themselves. Tr. 601:11–17. Caterpillar did not rebut this evidence.
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`Wirtgen therefore presented ample evidence that a jury could have credited to find
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`infringement of claim 29. There is no inconsistency between that finding (which was based on
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`Dr. Lumkes’s analysis of the actual accused machines) and the Board’s conclusion that
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`Caterpillar’s speculation about the approximate location of the stability pattern in the
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`hypothetical Swisher-Neumeier combination was insufficient to show inherency.
`
`7
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 13 of 32 PageID #: 34532
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`Caterpillar’s contrary argument completely ignores the requirement of claim 29 that the
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`four-sided stability pattern have a widest transverse dimension in a specific place. Its use of
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`excerpted quotes from the Board’s decision is misleading: for example, Caterpillar omits via
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`ellipsis (at 6) the words “having a widest transverse dimension, transverse to the forward
`
`direction of the chassis, which widest transverse dimension falls within a footprint of the
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`working roller or rotor, as required by claims 17 and 29” to falsely imply that the inherency issue
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`before the Board was limited to four-sided stability itself. Caterpillar’s block quote of Wirtgen’s
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`argument (at 5–6) is similarly misleading. Wirtgen simply said that—contrary to the contention
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`in Caterpillar’s petition—the ’309 patent specification does not acknowledge that the pattern is
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`inherent, meaning it was Caterpillar’s burden to adduce actual evidence that shows inherency—
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`which Caterpillar failed to do. See D.I. 369, Ex. 12 at 50 (finding that Caterpillar’s expert
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`testimony with respect to claim 29 was “unsupported by any facts or data” and “provide[d] no
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`analysis”).
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`Indeed, Caterpillar tried to leverage in the IPR the same purported tension that it now
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`calls an inconsistency, contending that “Dr. Lumkes admitted that a four-legged machine with
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`the positively coupled hydraulic system of Figure 1 of the ’309 patent ‘would produce the four-
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`sided stability pattern,’” despite his conclusion that the limitation was not found in the prior art.
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`Caterpillar Inc. v. Wirtgen America, Inc., IPR2017-02185, Petitioner’s Reply at 17 (P.T.A.B.
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`Nov. 29, 2018). The Board rejected Caterpillar’s argument, explaining that, “[t]o meet the claim
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`limitation there must be some evidence of the ‘footprint of the working roller,’ as recited in
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`claim[] 29”—evidence that Caterpillar failed to present. D.I. 369, Ex. 12 at 53. Caterpillar’s
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`suggestion (at 8) that Wirtgen could not prevail on both infringement and validity without taking
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`inconsistent positions is further belied by Wirtgen’s victory on both at the U.S. International
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`Trade Commission. See FID at 111–15. Caterpillar’s conflation of four-sided stability with the
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`8
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`

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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 14 of 32 PageID #: 34533
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`location of the widest transverse dimension fares no better on its third try before this Court.
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`In short, Caterpillar has flatly misconstrued the requirements of claim 29, Wirtgen’s
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`arguments in the IPR, the Board’s decision agreeing with those arguments, and Wirtgen’s
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`infringement proof at trial. There is no inconsistency. Judicial estoppel does not apply.
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`Caterpillar’s motion also does nothing to establish bad faith. See Elm 3DS Innovations,
`
`LLC v. Samsung Elecs. Co., Ltd., 2021 WL 2070338, at *2 (D. Del. May 24, 2021) (affirming
`
`magistrate’s order that judicial estoppel did not apply due to no showing of bad faith) (citing
`
`Montrose Med. Grp. Participating Sav. Plan v. Bulger, 243 F.3d 773, 780–81 (3d Cir. 2001)
`
`(“Inconsistencies are not sanctionable unless a litigant has taken one or both positions in bad
`
`faith.”)). Caterpillar relies (at 7–8) entirely on an assumption that, if Wirtgen changed position to
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`gain an unfair advantage, then it did so in bad faith. But there is no evidence of ill intent.
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`Wirtgen’s positions are not inconsistent, and it did not gain any unfair advantage.
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`Finally, even if Wirtgen’s positions were inconsistent (they are not), judicial estoppel is
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`not tailored to the harm. See Bulger, 243 F.3d at 778–80 (“[U]se of judicial estoppel” must be
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`“‘tailored to address the harm identified’ and no lesser sanction would adequately remedy the
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`damage done.”). Rather, the alleged harm would have been properly redressed through cross-
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`examination of Wirtgen’s expert before the jury. Caterpillar chose not to test this alleged
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`inconsistency at trial—likely because it knew there was never any inconsistency to begin with. It
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`should not now be heard to ask the Court to levy against Wirtgen a sanction so harsh it is
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`reserved for those who act in bad faith. See Oneida Motor Freight, Inc. v. United Jersey Bank,
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`848 F.2d 414, 419 (3d Cir. 1988).
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`Prosecution laches does not render the ’530 patent unenforceable.
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`B.
`Caterpillar does not meet its burden of showing the requirements for prosecution laches
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`with respect to the ’530 patent. The doctrine of prosecution laches was created to punish an
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`9
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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 15 of 32 PageID #: 34534
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`applicant that engages in egregious dilatory tactics, lying in wait while others “produced new
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`forms of improvement,” and thereafter “enlarging” his claim to “embrace these new forms.”
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`Miller v. Bridgeport Brass Co., 104 U.S. 350, 355 (1881). Caterpillar has identified no dilatory
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`tactics here, nor did Wirtgen enlarge its claim, nor are the infringing machines “improved forms”
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`not previously embraced by Wirtgen’s pending application.
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`1.
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`Prosecution laches does not apply as a matter of law because Wirtgen
`did not extend its patent term.
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`Before 1995, patent terms ran 17 years from the date of patent issuance, rather than 20
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`years from filing. See Hyatt v. Hirshfeld, 998 F.3d 1347, 1352 (Fed. Cir. 2021). Prosecution
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`laches developed under the pre-1995 regime to prevent patentees from securing an “undue
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`extension of the patent monopoly.” Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463, 466
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`(1924). For example, in Hyatt (cited at Br. 9), the patentee “bulk-filed” 381 “atypically long and
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`complex” applications claiming priority to the 1970’s and 1980s, shortly before the 1995 change
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`took effect. 998 F.3d at 1353. The patentee then delayed prosecution for years, ultimately
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`claiming a priority date 60 years earlier. See id. at 1353–54. See also Symbol Techs., Inc. v.
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`Lemelson Med., Educ. & Rsch. Found., 422 F.3d 1378, 1380, 1386 (Fed. Cir. 2005) (filing
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`applications in the 1950s and then delaying patent issuance for nearly 40 years).
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`That same potential for abuse is not present today, because a patentee can no longer
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`extend its monopoly by delaying prosecution: the 20-year clock keeps ticking as long as
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`prosecution progresses. Prosecution laches thus rarely applies to applications filed after 1995.
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`See generally Natera, Inc. v. ArcherDX, Inc., 2023 WL 5705962, at *8 (D. Del. Sept. 5, 2023);
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`Cordance Corp. v. Amazon.com, Inc., 631 F. Supp. 2d 484, 490–92 (D. Del. 2009). Wirtgen is
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`aware of no case (Caterpillar cites none) in which any appellate court affirmed prosecution
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`laches absent an improper extension of patent term. It is undisputed that Wirtgen secured no such
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`10
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`Case 1:17-cv-00770-JDW Document 379 Filed 05/10/24 Page 16 of 32 PageID #: 34535
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`extension here. The crucial factor animating the doctrine is therefore absent.
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`2.
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`Even if prosecution laches were available as a defense, Caterpillar
`fails to show its application is warranted here.
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`Even under its own articulation of the law, Caterpillar’s prosecution laches argument
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`fails. Caterpillar makes no attempt to show that Wirtgen deviated from “how a reasonable patent
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`applicant would prosecute his patent under [Wirtgen]’s circumstances.” Br. 9–10 (citing Reiffin
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`v. Microsoft Corp., 270 F. Supp. 2d 1132, 1155 (N.D. Cal. 2003)). Reiffin considered whether (1)
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`the prosecution history of the plaintiff’s patents was typical of the field or patents generally; (2)
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`any unexplained gaps exist in the prosecution history; (3) the plaintiff took any unusual steps to
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`speed or delay the application process; (4) the PTO or other reviewing body took any unusual
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`steps to speed or delay the application process; (5) the plaintiff took any steps during prosecution
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`to limit public awareness of his pending applications or the inventions he sought to patent; (6)
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`any changes in the plaintiff’s prosecution of the application coincided with or directly followed
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`evolutions in the field that relate to the claimed invention; and (7) legitimate grounds exist for
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`the abandonment of prior applications. 270 F. Supp. 2d at 1155.
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`Caterpillar does not present any evidence relevant to considerations 1, 3, 4, 5, or 7. All
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`these considerations weigh against laches in view of the prosecution history here, as explained
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`below. Caterpillar’s arguments on considerations (2) and (6) are belied by the record.
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`For consideration (2), Caterpillar observes (at 11) that Wirtgen filed the original parent
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`application of the ’530 patent 15 years ago. Caterpillar omits the fact that the ’530 patent issued
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`seven years ago, only eight years after the earliest priority date. That overall timeline is not an
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`“unexplained gap” in prosecution, nor is it an unusual pendency for a continuation application.
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`See Natera, 2023 WL 5705962, at *9 (finding a 10-year delay not unreasonable); Cordance, 631
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`F. Supp. 2d at 491 (finding 7 years of prosecution not an unreasonabl