Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 1 of 11 PageID #: 35612
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff,
`
`v.
`
`CATERPILLAR INC.,
`
`Defendant.
`
`CATERPILLAR INC.’S ANSWERING BRIEF IN OPPOSITION TO
`WIRTGEN AMERICA’S CROSS MOTION TO STRIKE
`
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`Cassie Leigh Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`Matthew A. Macdonald
`Neil N. Desai
`Naoya Son
`Alex J. Turner
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`953 E. 3rd St., #100
`Los Angeles, California 90013
`Tel: (323) 210-2900
`
`Dated: May 24, 2024
`11524339/11898.00005
`
`

`

`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 2 of 11 PageID #: 35613
`
`TABLE OF ABBREVIATIONS
`
`Abbreviation
`
`’268 patent
`’395 patent
`’474 patent
`’659 patent
`’788 patent
`EP ’004 patent
`Mot.
`
`Smith Decl.
`
`Klopp Decl.
`
`Smith Op. Rpt.
`
`Smith Rbt. Rpt.
`
`Klopp Op. Rpt.
`Rahn Op. Rpt.
`
`Word or Phrase
`U.S. Patent No. RE48,268
`U.S. Patent No. 8,308,395
`U.S. Patent No. 8,690,474
`U.S. Patent No. 8,408,659
`U.S. Patent No. 7,946,788
`European Patent No. 1,875,004
`Wirtgen America’s Answering Brief in
`Opposition to Caterpillar’s Motion Regarding
`Estoppel Defenses and Opening Brief in
`Support of its Cross Motion to Strike (D.I.
`379)
`Declaration of Dr. Andrew W. Smith in
`Support of Caterpillar’s Collateral Estoppel
`Brief re: U.S. Patent No. 7,946,788 (D.I. 367)
`Declaration of Richard W. Klopp in Support
`of Caterpillar’s Opening Brief re: Equitable
`Defenses (D.I. 368)
`Opening Expert Report of Dr. Andrew W.
`Smith
`Rebuttal Expert Report of Dr. Andrew W.
`Smith
`Opening Expert Report of Richard W. Klopp
`Initital Expert Report of Dr. Christopher Rahn
`
`i
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`

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`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 3 of 11 PageID #: 35614
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`INTRODUCTION
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`In support of its equitable defenses—which the parties expressly agreed to litigate after the
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`jury trial—Caterpillar submitted two declarations from its expert witnesses, Drs. Smith and Klopp.
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`(D.I. 367, 368). Without meeting and conferring as required by the Delaware Local Rules, Wirtgen
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`surprised Caterpillar with a “cross motion,” seeking the extreme sanction of striking the entirety
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`of these declarations because they allegedly contain “new opinions.” Wirtgen does not specify
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`which opinions it considers new and instead indiscriminately seeks to strike all of them.1
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`In fact, the opinions in Drs. Smith and Klopp’s declarations are not new—they are
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`consistent with and elaborate on opinions earlier disclosed in this Action. Moreover, even if some
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`aspects of their opinions were not disclosed verbatim, the Pennypack factors weigh against
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`exclusion: (i) Wirtgen was not surprised or prejudiced by the declarations, (ii) any prejudice could
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`have been cured, (iii) the trial was not disrupted, (iv) Caterpillar did not act in bad faith, and (v)
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`these opinions are important to Caterpillar’s equitable defenses.
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`For these reasons, the Court should deny Wirtgen’s cross motion to strike.
`
`I.
`
`LEGAL STANDARDS
`
`ARGUMENT
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`Federal Rule of Civil Procedure 26(a)(2) requires experts to serve reports that provide
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`notice of their opinions. In determining whether a later-expressed opinion was previously
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`disclosed, this District “has not required verbatim consistency with the report, but has allowed
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`testimony which is consistent with the report and is a reasonable synthesis and/or elaboration of
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`the opinions contained in the expert’s report.” Power Integrations, Inc. v. Fairchild
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`Semiconductor Int’l, Inc., 585 F. Supp. 2d 568, 581 (D. Del. 2008) (denying motion to exclude
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`1 Because of Wirtgen’s failure to meet and confer, Caterpillar submits that the Court need not take
`up Wirtgen’s motion to strike at all.
`
`

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`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 4 of 11 PageID #: 35615
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`allegedly untimely expert opinion); see also Dow Chem. Co. v. Nova Chems. Corp. (Canada),
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`C.A. No. 05-737-JJF, 2010 WL 2044931, at *1–2 (D. Del. May 20, 2010) (same); Vectura Ltd. v.
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`GlaxoSmithKline, LLC, C.A. No. 16-638-RGA, 2019 WL 1436296, at *2 (D. Del. Apr. 1, 2019)
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`(same). In this Action, the Court itself has recognized that experts may provide post-report
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`testimony on “additional . . . evidence” that “corroborates” and/or “elaborate[s]” on their prior
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`opinions. D.I. 279 ¶¶ 3-6 (denying motion to strike expert opinions on brand-new references that
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`were never identified or analyzed in earlier expert reports).
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`Even if an expert provides opinions that were not disclosed in their report, “[t]he exclusion
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`of critical evidence is considered an extreme sanction, not normally to be imposed absent a
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`showing of willful deception or flagrant disregard of a court order by the proponent of the
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`evidence.” In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 749 (3d Cir.1994). Indeed, Federal
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`Rule of Civil Procedure 37(c)(1) specifies that undisclosed opinions should not be excluded if the
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`failure to disclose “was substantially justified or is harmless.” The Third Circuit uses the following
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`Pennypack factors to determine whether the failure to disclose was justified and/or harmless: (1)
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`the prejudice or surprise to the party against whom the evidence is offered; (2) the possibility of
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`curing the prejudice; (3) the potential disruption of an orderly and efficient trial; (4) bad faith or
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`willfulness in failing to disclose; and (5) the importance of the information. Meyers v. Pennypack
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`Woods Home Ownership Ass’n, 559 F.2d 894, 904–05 (3d Cir. 1977).
`
`II.
`
`THE EXPERT DECLARATIONS DO NOT CONTAIN NEW OPINIONS
`
`A.
`
`Dr. Smith’s Opinions Are Not New
`
`Each of Dr. Smith’s opinions in his declaration were previously disclosed. First, as to his
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`opinion that claim 1 of the ’788 patent is “substantially similar to or an obvious variation” of claim
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`1 of the ’395 patent (found by the Patent Office to be unpatentable), Smith Decl. ¶¶ 18-49, 59-63,
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`this opinion was expressly disclosed in Dr. Smith’s opening expert report. In particular, Dr.
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`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 5 of 11 PageID #: 35616
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`Smith’s report noted that the ’788 and ’395 patents belong to the same family and share the same
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`specifications, titles, and inventor lists. Ex. 1, Smith Op. Rpt. ¶ 38. In his report, Dr. Smith then
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`undertook an element-by-element comparison of claim 1 of the ’788 patent with claim 1 of the
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`’395 patent, substantiating his opinion that the former claim is also invalid. See, e.g., Ex. 1, Smith
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`Op. Rpt. ¶¶ 248, 251, 255, 267, 271, 278, 298-300. As demonstrated below for one exemplar
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`claim element, Dr. Smith’s declaration simply repeats and elaborates on the opinions disclosed in
`
`his report:2
`
`Dr. Smith’s May 19, 2023 Opening Report Dr. Smith’s April 2, 2024 Declaration
`[’788 Patent] 1[a] a milling drum, the
`’395 Patent Claim 1[a]: a milling drum, the
`milling drum being height adjustable with
`milling drum being position adjustable with
`regard to milling depth and/or slope; …
`regard to at least one position characteristic
`selected from the group consisting of milling
`depth of the drum and slope of the drum;
`and
`
`… Furthermore, Claim 1 of the ’395 Patent
`(sharing a specification with the ’788 Patent)
`recites “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,” which contains
`the limitation “a milling drum, the milling
`drum being height adjustable with regard to
`milling depth and/or slope” as recited in
`Claim 1[a] of the ’788 Patent. Invalidating
`Claim 1 of the ’395 Patent, the PTAB found
`that “Davis discloses the claimed ‘milling
`drum’.”
`
`Ex. 1, Smith Op. Rpt. ¶¶ 249-251
`
`’788 Patent Claim 1[a]: a milling drum being
`height adjustable with regard to milling
`depth and/or slope; and
`
`Claim 1[a] of the ’395 Patent differs from its
`counterpart in the ’788 Patent in that it refers
`to being “position adjustable” as opposed to
`“height adjustable.” A PHOSITA would
`recognize that in the context of the road
`milling machinery at issue, altering the height
`of the milling rotor would be synonymous
`with altering the position of the milling drum,
`as the height of the drum is the only relevant
`position which could be adjusted in
`modifying the desired grade and/or slope of
`the machine. For example, in my Opening
`
`2 Dr. Smith’s opening report also discussed the ’474 patent (a third member of the patent family
`that includes the ’788 and ’395 patents). He demonstrated that claim 1 of the ’788 patent is
`substantially similar to claims 19 and 21 of the ’474 patent (Ex. 1, Smith Op. Rpt. ¶¶ 223-237),
`which are in turn substantially similar to or obvious variations of claim 1 of the ’395 patent found
`to be unpatentable. Id. at ¶¶ 331-339. This earlier analysis is consistent with Dr. Smith’s opinion
`in his declaration that claim 1 of the ’788 patent is substantially similar to and/or an obvious
`variation of claim 1 of the ’395 patent.
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`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 6 of 11 PageID #: 35617
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`Report, I show materials for the PM-465 and
`PM-565 prior art milling machines which
`describe the adjustment of the grade and slope
`of the milling drum.17
`Furthermore, the ’788 Patent limitation of
`“with regard to milling depth and/or slope” is
`simply another way of stating the limitation
`including in the ’395 Patent of “at least one
`position characteristic selected from the group
`consisting of milling depth of the drum and
`slope of the drum.”
`
`Accordingly, a PHOSITA would view the
`limitations of Claim 1[a] of the ’395 Patent
`and Claim 1[a] of the ’788 Patent as reciting
`the same device.
`
`Smith Decl. ¶¶ 25-28
`
`Second, as to Dr. Smith’s opinion that claim 5 of the ’788 patent is similar to invalidated
`
`claim 1 of the ’395 patent (Smith Decl. ¶¶ 59-73), that opinion was also previously disclosed. In
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`his expert report, Dr. Smith opined that claim 5 of the ’788 patent is obvious over Davis and
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`Brabec, which the PTAB found to be the same invalidating references for claim 1 of the ’395
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`patent. Ex. 1, Smith Op. Rpt. ¶¶ 302-307. The additional details that Dr. Smith provided
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`explaining why claim 5 of the ’788 patent is similar to claim 1 of the ’395 patent are merely
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`“additional piece[s] of evidence that, to him, corroborates his prior opinion” about Davis and
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`Brabec invalidating both the ’788 and ’395 patents. D.I. 279 ¶ 5; Emcore Corp. v. Optium Corp.,
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`No. 6-1202, 2008 WL 3271553, at *4 (W.D. Pa. Aug. 5, 2008).
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`Further, because Caterpillar’s estoppel claims arose out of trial testimony from Wirtgen’s
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`experts, certain details could not have been provided earlier. Smith Decl. ¶¶ 55-56, 67-68 (citing
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`trial testimony of Dr. Valerdi and Dr. Rahn). For example, as Dr. Smith outlines in his rebuttal
`
`expert report, Dr. Rahn took at least three contradictory positions on the meaning of “effecting
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`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 7 of 11 PageID #: 35618
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`[the] switchover” in claim 5 of the ’788 patent. Ex. 6, Smith Rbt. Rpt. ¶¶ 104-109 (“[I]n his
`
`analysis of both Claims 1 and 5, [Dr. Rahn] takes multiple (incorrect) positions as to what is meant
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`by ‘switching over’ and ‘effecting [the] switchover’ . . . Accordingly, his analysis of both Claims
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`1 and 5 of the ’788 Patent is rendered contradictory.”). Dr. Smith did not know how Dr. Rahn
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`would ultimately testify at trial. Only after Wirtgen presented its final infringement theories at
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`trial was Dr. Smith able to elaborate on his previously-disclosed opinions about the invalidity of
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`claim 5 of the ’788 patent.
`
`B.
`
`Dr. Klopp’s Opinions Are Not New
`
`In his short declaration, Dr. Klopp opines that claim 14 of the ’659 patent (which was
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`reissued as the asserted ’268 patent) is nearly identical to claim 1 of EP ’004, which the Italian
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`court invalidated as anticipated by the PM565 and other prior art. Klopp Decl. ¶¶ 10-15. Given
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`their similarities, Dr. Klopp concludes that the Italian Court’s reasoning invalidating EP ’004
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`applies equally to claim 14 of the ’659 patent. Id. ¶ 16.
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`This opinion was disclosed in Dr. Klopp’s Opening Expert Report. In his report, Dr. Klopp
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`described the Italian proceedings on EP ’004; identified it as the “European Counterpart” to the
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`’268 patent; noted that EP ’004 was invalidated in light of prior art, including Caterpillar’s PM565
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`cold planers and other sources; and opined that the ’268 patent, which reissued from the ’659
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`patent and is related to EP ’004, is also obvious over Caterpillar’s PM565 and other prior art. Ex.
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`3, Klopp Op. Rpt. ¶¶ 28-30, 351-374. Any additional discussion in Dr. Klopp’s declaration
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`explaining how and why the ’659 patent and EP ’004 are substantially similar is permissible
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`elaboration of his original opinions. See D.I. 279 ¶ 3; Power Integrations, 585 F. Supp. 2d at 581.
`
`* * * * *
`
`While Drs. Smith and Klopp’s declarations may contain additional details and elaborations
`
`of their previously disclosed opinions, such discussion falls well within what is permitted by Rule
`
`- 5 -
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`

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`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 8 of 11 PageID #: 35619
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`26 and courts in this District. See, e.g., Emcore, 2008 WL 3271553, at *4 (denying motion to
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`strike because “[w]hile [expert’s] declaration is not exactly what he stated in his report, it is an
`
`elaboration of a point previously discussed”); D.I. 279.
`
`III.
`
`THE PENNYPACK FACTORS WEIGH AGAINST EXCLUSION OF THE
`DECLARATIONS
`
`Even if one assumes Dr. Smith and Dr. Klopp’s declarations contain new opinions which
`
`should have been disclosed earlier, exclusion is an extreme measure, and should not be used unless
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`there is “willful deception or flagrant disregard of a court order.” In re Paoli, 35 F.3d at 749.
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`Under Pennypack, Drs. Smith and Klopp’s declarations are “substantially justified and harmless.”
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`FED. R. CIV. P. 37(c)(1).
`
`(1) There is no prejudice. As discussed above, the opinions in Drs. Smith and Klopp’s
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`declarations are not new. See supra at Sec. II. The expert reports discussed the interplay between
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`(i) the ’788 and ’395 patents (and their invalidating references) (Ex. 1, Smith Op. Rpt. ¶¶ 248, 251,
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`255, 267, 271, 278, 298-300); and (ii) the ’659, ’268, and EP ’004 patents (and their invalidating
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`references). Ex. 3, Klopp Op. Rpt. ¶¶ 28-30. Additionally, the cited discovery material was
`
`produced during fact discovery or with the experts’ original reports. Wirtgen had the opportunity
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`to cross-examine Drs. Smith and Klopp about these topics during their depositions and at trial but
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`chose not to. Having chosen not to examine the experts about the interplay between the asserted
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`patents and their family members, it cannot now claim surprise and is not prejudiced by Drs. Smith
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`and Klopp’s declarations. Thus, this factor weighs against exclusion.
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`(2) Wirtgen could have cured any claimed prejudice. Any minimal prejudice could
`
`have bene cured. In opposing Caterpillar’s Motion (D.I. 364), Wirtgen could have submitted its
`
`own expert declarations. Indeed, it had four weeks to respond. However, rather than challenging
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`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 9 of 11 PageID #: 35620
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`the merits of Drs. Smith and. Klopp’s opinions, Wirtgen moved to strike. This factor also weighs
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`against exclusion.
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`(3) There is no disruption to trial. Caterpillar did not present its equitable defenses at
`
`trial, nor offer expert testimony supporting such theories, because they were not issues for the jury.
`
`Presentation of expert testimony on equitable issues preserved for the Court would likely have
`
`confused the jurors. As such, the parties agreed to address equitable issues after trial. Moreover,
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`some of Caterpillar’s estoppel theories arose from specific testimony given by Wirtgen witnesses
`
`at trial to support infringement, so they could not have been presented earlier. Drs. Smith and
`
`Klopp’s declarations were submitted at the appropriate time.
`
`Wirtgen claims that Caterpillar should have disclosed its equitable theories during
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`discovery and in the pre-hearing order. Mot. at 23. Caterpillar disclosed its defenses in response
`
`to Wirtgen’s interrogatories. See, e.g., Caterpillar’s Rspns. to Interrogatory Nos. 23-27, including
`
`supplemental and amended responses. Exs. 4-5. And the specific equitable defenses to which
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`Drs. Smith and Klopp’s declarations relate are also addressed in the Pretrial Order. D.I. 328 at
`
`Exs. 1B, 2A, 6A, 6B. This factor also weighs against exclusion.
`
`(4) There is no bad faith. Caterpillar did not exercise bad faith in submitting these
`
`declarations. First, there are no new opinions, as discussed above. Second, Caterpillar complied
`
`with the Court’s scheduling order on the briefing of equitable defenses, including the submission
`
`of expert declarations with the Court’s proposed findings of fact and law requested by the Court.
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`D.I. 349 at 1. This factor also weighs against exclusion.
`
`(5) The expert declarations are important. Wirtgen’s discussion of this factor contains
`
`numerous misstatements. First, the opinions offered by Dr. Smith and Dr. Klopp are important to
`
`Caterpillar’s equitable defenses. Dr. Smith’s opinion supports Caterpillar’s collateral estoppel
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`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 10 of 11 PageID #: 35621
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`defense, and Dr. Klopp’s opinion supports Caterpillar’s intervening rights defense. D.I. 365 at 16-
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`24. If the Court finds in Caterpillar’s favor, then any infringement findings and damages cannot
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`stand with respect to the ’788 and ’268 patents.
`
`Second, while Wirtgen argues that Drs. Smith and Dr. Klopp’s declarations are “irrelevant
`
`or simply wrong,” Mot. at 25, it provides no support for this claim other than naked attorney
`
`argument. Wirtgen had an opportunity to submit rebuttal evidence, but it chose not to.
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`Third, Wirtgen claims that Dr. Smith does not perform an element-by-element comparison
`
`between the ’788 and ’395 patents, Mot. at 25, but that is exactly what he does. See, e.g., Smith
`
`Decl. ¶¶ 26-28 (“Claim 1[a] of the ’395 patent differs from its counterpart in the ’788 patent in
`
`that it refers to being ‘position adjustable’ as opposed to ‘height adjustable’…”), 29-30 (comparing
`
`claim element 1[b]), 31-35 (comparing claim element 1[c]), 36-37 (comparing claim element 1[d]),
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`38-41 (comparing claim element 1[e]), 42-49 (comparing claim elements 1[f] and [g]).
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`Finally, Dr. Klopp properly opined that the Italian Court’s reasoning in invalidating EP
`
`’004 would be applicable to the ’659 patent. Klopp Decl. ¶ 16. Wirtgen cites no authority or
`
`rationale why Dr. Klopp’s opinion is “irrelevant” simply because he does not make ultimate legal
`
`conclusions regarding invalidity under Italian or U.S. law. Caterpillar’s reliance on a plausible
`
`invalidity defense is relevant to its good-faith belief of non-infringement.
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`Thus, this factor also weighs against exclusion.
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`CONCLUSION
`
`For the reasons discussed above, the Court should deny Wirtgen’s motion to strike.
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`

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`Case 1:17-cv-00770-JDW Document 388 Filed 05/24/24 Page 11 of 11 PageID #: 35622
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`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`Cassie Leigh Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`Matthew A. Macdonald
`Neil N. Desai
`Naoya Son
`Alex J. Turner
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`953 E. 3rd St., #100
`Los Angeles, California 90013
`Tel: (323) 210-2900
`
`Dated: May 24, 2024
`11524339/11898.00005
`
`- 9 -
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`