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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`CATERPILLAR INC.,
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`C.A. No. 17-770-JDW
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`Defendant/Counterclaim-Plaintiff.
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`DECLARATION OF JOSEPH H. KIM IN SUPPORT OF 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
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`
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`I, Joseph H. Kim, declare as follows:
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`1.
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`I am an attorney at the law firm of Sterne, Kessler, Goldstein & Fox P.L.L.C. and
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`serve as counsel for Plaintiff Wirtgen America, Inc. (“Wirtgen”) in this action. I submit this
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`Declaration in support of Wirtgen’s Response To Caterpillar Inc.’s Brief Regarding Estoppel
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`Defenses and Cross Motion to Strike Untimely New Expert Opinions.
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`2.
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`Unless otherwise indicated, I have personal knowledge of the facts related herein
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`and could testify to them competently if called upon to do so.
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`3.
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`Attached to this Declaration as Exhibit A is a true and correct excerpted copy of
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`the transcript of the Videotaped Deposition of Dr. Joseph F. Rakow, conducted August 16, 2023.
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`4.
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`Attached to this Declaration as Exhibit B is a true and correct excerpted copy of
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`Wirtgen’s Supplemental Responses and Objections to Caterpillar Inc.’s Interrogatory Nos. 1, 3–
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`5, 9–12, 14, dated April 7, 2023.
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`
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`Case 1:17-cv-00770-JDW Document 383 Filed 05/10/24 Page 2 of 3 PageID #: 34718
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`5.
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`Attached to this Declaration as Exhibit C is a true and correct excerpted copy of
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`the Initial Expert Report of Dr. John H. Lumkes Regarding Infringement and the Domestic
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`Industry Technical Prong of U.S. Patent Nos. 9,656,530 and 7,828, 309 and Appendix D
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`appended thereto, served in ITC Inv. No. 337-TA-1067, dated January 31, 2018.
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`6.
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`Attached to this Declaration as Exhibit D is a true and correct excerpted copy of
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`the Initial Expert Report of Dr. John H. Lumkes and Appendix C appended thereto, served in the
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`above-captioned litigation, dated May 18, 2023.
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`7.
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`Attached to this Declaration as Exhibit E is a true and correct copy of a web
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`printout of the Patent Term Adjustment tab of U.S. Patent No. 8,113,592 from the USPTO Patent
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`Center.
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`8.
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`Attached to this Declaration as Exhibit F is a true and correct copy of the Issue
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`Notification, dated February 14, 2012 (WA-0002553), from the file history of U.S. Patent
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`No. 8,113,592, which was produced in this litigation as WA-0002080–573.
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`9.
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`Attached to this Declaration as Exhibit G is a true and correct copy of the Issue
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`Notification, dated April 21, 2015 (WA-0003960), from the file history of U.S. Patent
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`No. 9,010,871, which was produced in this litigation as WA-0003575–979.
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`10.
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`Attached to this Declaration as Exhibit H is a true and correct copy of a
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`document identified as, “Caterpillar Design Change Impact,” which was produced in this
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`litigation as CAT-770_092522 and was admitted as Trial Exhibit 1625.
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`11.
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`Attached to this Declaration as Exhibit I is a true and correct copy of a document
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`identified as, “Updated Caterpillar Financial Information,” which was produced natively in this
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`litigation as CAT-770_092540 and was admitted as Trial Exhibit 3322.
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`- 2 -
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`Case 1:17-cv-00770-JDW Document 383 Filed 05/10/24 Page 3 of 3 PageID #: 34719
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`12.
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`Attached to this Declaration as Exhibit J is a true and correct excerpted copy of
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`Wirtgen’s Final Infringement Contentions and Appendix A appended thereto, served in the
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`above-captioned litigation, dated March 10, 2023.
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`13.
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`Attached to this Declaration as Exhibit K is a true and correct copy of a web
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`printout of the Patent Term Adjustment tab of U.S. Patent No. 9,656,530 from the USPTO Patent
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`Center.
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`14.
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`Attached to this Declaration as Exhibit L is a true and correct excerpted copy of
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`Wirtgen’s Initial Claim Charts on Infringement by Defendant Pursuant to Paragraph 4(C) of the
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`Default Standard for Discovery and Appendix A appended thereto, served in the above-
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`captioned litigation, dated December 2, 2021.
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`15.
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`Attached to this Declaration as Exhibit M is a true and correct excerpted copy of
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`the Response and Amendment, dated September 28, 2010, from the file history of U.S. Patent
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`No. 8,113,592.
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`I declare under penalty of perjury that the foregoing is true and correct and that this
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`Declaration is executed in Washington, D.C. this 10th day of May, 2024.
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`/s/ Joseph H. Kim
`Joseph H. Kim
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1101 K Street NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`josephk@sternekessler.com
`
`Attorney for Plaintiff Wirtgen America, Inc.
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`- 3 -
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