Case 1:17-cv-00770-JDW Document 388-3 Filed 05/24/24 Page 1 of 14 PageID #: 35654
`Case 1:17-cv-00770-JDW Document 388-3 Filed 05/24/24 Page 1 of 14 PagelD #: 35654
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`EXHIBIT 3
`EXHIBIT 3
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`Case 1:17-cv-00770-JDW Document 388-3 Filed 05/24/24 Page 2 of 14 PageID #: 35655
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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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`Plaintiff,
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`v. )
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`CATERPILLAR INC.,
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`Defendant.
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`________________________________
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`C.A. No. 17-770-JDW
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`OPENING EXPERT REPORT OF RICHARD W. KLOPP, Ph.D., P.E., F.A.S.M.E.
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`RE268 Patent claims priority to a German patent application 10 2005 017 754 filed on April 15,
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`2005. I also understand
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`that
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`the RE268 Patent claims priority
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`to Application No.
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`PCT/EP2006/060907 filed on March 21, 2006. I have considered both dates for purposes of my
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`analysis. I understand that Wirtgen America may allege that the inventions of the RE268 Patent
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`were conceived before April 15, 2005, and, therefore, may be entitled to an earlier date of
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`invention. However, I have not been provided evidence for such a position to date and I reserve
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`the right to amend, supplement, or modify my opinions should Wirtgen America establish a date
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`of invention that predates the earliest effective filing date in its response to this report.
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`On July 12, 2017, Wirtgen GmbH filed a patent litigation suit against Caterpillar
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`Prodotti Stradali S.r.L. and Caterpillar Financial Corporacion Fianciera Sociedad Anonima
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`Establecimiento Financiero de Credito (collectively, “Caterpillar Italy”) in the Court of Milan,
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`Business Division. Wirtgen GmbH asserted infringement of four patents, including EP 1875004
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`(“EP 004”). 9 EP 004 is the European counterpart to the RE268 Patent. Ultimately, an Italian
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`counterpart to the RE268 Patent was found invalid by the Italian court on February 8, 2023.
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`The Court of Milan appointed Paolo Piovesana, an engineer, as a court-appointed
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`expert (“CTE”) to issue an opinion on nullity (validity) and infringement of the asserted patents.10
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`On March 26, 2020, the CTE issued his final opinion, in which he determined that
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`the Italian portion of EP 004 failed to fulfil the validity requirement in light of the prior art,
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`including the Caterpillar PM-565 and PM-565B cold planers, US 2004/0237490, U.S. Patent No.
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`1,445,617, EP 80831, and DE 3149768. As to the Caterpillar PM-565 and PM-565B cold planers,
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`the CTE found that the machines deprived claim 1 of EP 004 of novelty. As to the other prior art
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`9 WA-0007038 at -13564.
`10 WA-0007038 at -13565.
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`references, the CTE found that those references deprived EP 004’s claims of the requirement of
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`an inventive step.11
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`The RE268 Patent was a reissue from U.S. Patent No. 8,408,659 (“the ’659
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`Patent”), which issued on April 2, 2013, and was a continuation application filed on March 21,
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`2006. The claims of the ’659 Patent were considerably changed in forming the RE268 Patent as a
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`reissue.
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`The RE268 Patent concerns a “construction machine, in particular a road milling
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`machine, a recycler or a stabilizer, as well as a drive train for construction machines of this type.”12
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`It provides specific teachings with respect to drivetrains used in construction machines. It claims
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`to solve the problems of needing to isolate engine vibration from the machine frame while
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`providing a drivetrain in a manner “that less vibrations from the drive engine are transmitted to the
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`machine frame, with the drive train being sufficiently rigid at the same time to be capable of
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`transmitting high mechanical power.”13 A PHOSITA would understand that vibrations are
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`repeated, dynamic, mechanical movements.
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`The RE268 Patent solves this problem by dividing the elements of the drive train
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`“into a least two groups, that the first group shows, i.e., includes, at least the drive engine,
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`the second group shows at least the drive element of the traction mechanism, and that the
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`first and the second group are connected to one another via an articulated coupling
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`device.”14 This solution reduces vibration transmitted to the machine frame and provides
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`sufficient rigidity because “it [is] possible to support the groups of the drive train with different
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`degrees of rigidity on the machine frame for the purpose of reducing the transmission of
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`11 WA-0007038 at -13643-13651.
`12 RE268 Patent at 1:31-33.
`13 RE268 Patent at 2:12-15.
`14 RE268 Patent at 2:17-22 (emphasis added).
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`engineering design choices and as such carry a reasonable expectation of success for the reasons
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`discussed above.
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`*
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`*
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`*
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`*
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` For the foregoing reasons (as well as those discussed below regarding secondary
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`considerations of non-obviousness), in my opinion RE268 claim 1 is invalid as obvious over the
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`Caterpillar PM-465 and PM-565 cold planers before April 15, 2005 and in view of Braud ’809 and
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`the knowledge of a PHOSITA, further informed by the knowledge of a PHOSITA regarding
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`mechanical power transmission component vendor catalogs.
`2.
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`Claim 14
`i.
`Claim [14.pre]: A construction machine, comprising:
` Caterpillar’s PM-465 or PM-565 cold planers disclose this preamble for the reasons
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`discussed above in ¶ 258. I note that Wirtgen America’s infringement contentions for RE268
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`simply cross reference claims 1 and 14 without providing any distinguishing analysis or content.
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`As such, Wirtgen America’s infringement contentions appear to treat this limitation as
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`synonymous with portions of claim 1, and I therefore incorporate my analyses regarding [1.pre].353
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`ii.
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`[14.1] a machine frame carried by a chassis;
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` This claim limitation is disclosed by the PM-465 or PM-565, as well as Braud ’809.
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`The vast universe of prior art construction machines, including the Braud ’809 telehandler, PM-
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`465 and PM-565 cold planers, had frames carried by chassis. See ¶¶ 115 and 259-260. I note that
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`Wirtgen America’s infringement contentions for RE268 simply cross reference claims 1 and 14
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`without providing any distinguishing analysis or content. As such, Wirtgen America’s
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`infringement contentions appear to treat this limitation as synonymous with portions of claim 1,
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`353 I also incorporate by reference and reserve the right to rely on the discussion in Section VI.
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`and I therefore incorporate my analyses regarding [1.pre]. Moreover, a PHOSITA would view a
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`frame and a chassis as interchangeable,354 therefore this claim element is indefinite.
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`iii.
` The PM-465 or PM-565 machines disclose this limitation because they each
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`[14.2] a working drum;
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`disclose working drums. See ¶259 and figures cited therein. I note that Wirtgen America’s
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`infringement contentions for RE268 simply cross reference claims 1 and 14 without providing any
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`distinguishing analysis or content. As such, Wirtgen America’s infringement contentions appear
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`to treat this limitation as synonymous with claim element 1.pre.
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`iv.
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`[14.3] a drive train including at least the following
`elements:
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` The PM-465, PM-565 and Braud ’809 each disclose this limitation. See my
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`discussion above at ¶259. I note that Wirtgen America’s infringement contentions for RE268
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`simply cross reference claims 1 and 14 without providing any distinguishing analysis or content.
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`As such, Wirtgen America’s infringement contentions appear to treat this limitation as
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`synonymous with portions of claim 1, and I therefore incorporate my analyses regarding [1.pre].
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`v.
` The PM-465, PM-565 and Braud ’809 each disclose this limitation. See ¶¶ 90-92
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`[14.4] a drive engine;
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`and ¶259. Braud ’809 also discloses a drive (“heat”) engine.355 I note that Wirtgen America’s
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`infringement contentions for RE268 simply cross reference claims 1 and 14 without providing any
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`distinguishing analysis or content. As such, Wirtgen America’s infringement contentions appear
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`to treat this limitation as synonymous with portions of claim 1, and I therefore incorporate my
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`analyses regarding [1.pre].
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`354 EXPONENT_0001587 (Webster’s 7th New Collegiate Dictionary (1972, G. & C. Merriam Co., p. 141)).
`355 Braud ’809, 1:47-50.
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`vi.
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`[14.5] a traction drive assembly for mechanically driving
`the working drum, the traction drive assembly including a
`drive pulley, a driven pulley, and a drive belt connecting
`the pulleys;
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` The RE268 claim element [14.5] is merely a belt drive in a drive train mechanically
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`transmitting power between an engine and a cold planer working drum.356 As such, this element
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`was already known and disclosed in the PM-465 and PM-565 prior art machines. See ¶¶ 261-263,
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`Figure 28 and Figure 29. I note that Wirtgen America’s infringement contentions for RE268
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`simply cross reference claims 1 and 14 without providing any distinguishing analysis or content.
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`As such, Wirtgen America’s infringement contentions appear to treat this limitation as
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`synonymous with portions of claim 1, and I therefore incorporate my analyses regarding [1.3].
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`vii.
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`[14.6] a clutch for switching a torque between the drive
`engine and the working drum; and
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` The PM-465, PM-565 and Braud ’809 each disclose this limitation. See ¶¶ 90, 264-
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`267. I note that Wirtgen America’s infringement contentions for RE268 simply cross reference
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`claims 1 and 14 without providing any distinguishing analysis or content. As such, Wirtgen
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`America’s infringement contentions appear to treat this limitation as synonymous with portions of
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`claim 1, and I therefore incorporate my analyses regarding [1.pre] and [1.3]. Also, in ¶ 103 I
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`discussed how the PM-465 and PM-565 teach that the clutch switches a torque between the drive
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`engine and the working drum, and I incorporate by reference my analysis from that paragraph here.
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` Moreover, the Braud ’809 reference disclosed a clutch for switching torque to its
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`axles (to rotate wheels),357 that is, a mechanical load in the same sense that the drum is a
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`356 See RE268 Patent at 4:36-50.
`357 Braud ’809, 3:44-47.
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`mechanical load in a cold planer. The benefits of including such a clutch, and the downsides of not
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`having a clutch, were readily evident as of April 15, 2005.
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` Further, the fact that the clutch in the PM-465 and PM-565 machines was located
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`in a particular place along the drive train is irrelevant so long as the clutch was mechanically
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`downstream of the pump drive to enable control of the working drum without affecting the
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`hydraulic pumps’ ability to continue operating under engine power. As such, a PHOSITA would
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`have had no difficulty in making this modification.
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`viii.
` The PM-465, PM-565 and Braud ’809 each disclose this limitation.358 See ¶¶ 268-
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`[14.7] a hydraulic pump drive; and
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`270. I note that Wirtgen America’s infringement contentions for RE268 simply cross reference
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`claims 1 and 14 without providing any distinguishing analysis or content. As such, Wirtgen
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`America’s infringement contentions appear to treat this limitation as synonymous with claim
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`elements 1.1, 1.4, and 1.5.
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` The necessity of including a pump drive was readily evident as of April 15, 2005,
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`because of the plethora of hydraulic mechanisms on these machines. These include, at a minimum,
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`the telescopic arm on the telehandler359 and the leg elevation cylinders, steering cylinders, and the
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`track drives on the cold planers. Additionally, hydraulics were used to operate the moldboard, rotor
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`access door, conveyors, water spray pump, radiator fan, and even the engine hood on the PM-
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`565.360, 361
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`358 Braud ’809, 1:52-54.
`359 Braud ’809, 2:32-35.
`360 CAT-770_048823 at -847 to -860.
`361 CAT0029682 at -689 (CAT_00056223.PDF).
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`ix.
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`x.
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`[14.8] wherein the elements of the drive train are divided
`into at least a first subset and a second subset; and
`[14.9] wherein the drive train further includes an
`articulated coupling connecting the first subset to the
`second subset; and
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` The PM-465 or PM-565 disclose this limitation themselves or certainly when
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`viewed in light of the knowledge of a PHOSITA or in view of Braud ’809. (see supra ¶¶ 197-213,
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`271-273). I note that Wirtgen America’s infringement contentions for RE268 simply cross
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`reference claims 1 and 14 without providing any distinguishing analysis or content. As such,
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`Wirtgen America’s infringement contentions appear to treat this limitation as synonymous with
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`portions of claim 1, and I therefore incorporate my analyses regarding [1.1], [1.2], and [1.3]. I
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`also incorporate my analysis from ¶¶ 271-273 here.
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` A PHOSITA looking to Braud ’809 would have understood that Braud ’809
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`disclosed an engine mounted on “shock absorbing lugs” (having lower support stiffness) and a
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`“gear box 12 fixed rigidly to the chassis 2” (having higher support stiffness) with a cardan joint
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`articulated coupling between them.362
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`
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`In my opinion, including an articulated coupling somewhere in the drive train so
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`that the engine could be mounted on vibration isolators and move some amount accordingly, while
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`the drive pulley support was rigidly mounted to resist side loads from belt tensions is merely an
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`obvious permutation of the PM-465 or PM-565 machines as modified by Braud ’809.363
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`xi.
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`wherein the first subset includes at least the
`[14.10]
`drive engine; and
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`
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`I note that Wirtgen America’s infringement contentions for RE268 simply cross
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`reference claims 1 and 14 without providing any distinguishing analysis or content. As such,
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`362 Braud ’809, 3:10-16.
`363 Braud ’809, 1:43-45.
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`Wirtgen America’s infringement contentions appear to treat this limitation as synonymous with
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`portions of claim 1, and I therefore incorporate my analyses regarding [1.pre], [1.1], [1.2], [1.4],
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`and [1.5].
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`I incorporate my analysis from ¶¶ 274-275 here.
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` Moreover, a PHOSITA could have modified the PM-465 and PM-565 with the
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`teachings of Braud ’809. See ¶90 and Figure 40. Further, a PHOSITA would have recognized, by
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`mere design choice, the drive train could be organized conceptually in two subsets with the
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`articulated coupling between them, and the upstream subset could include everything upstream of
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`the coupling, including the engine.364 365
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`xii.
`xiii.
`xiv.
`xv.
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`wherein the second subset includes:
`[14.11]
`the hydraulic pump drive;
`[14.12]
`the clutch; and
`[14.13]
`the drive pulley of the traction drive
`[14.14]
`assembly; and
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` Claim elements [14.11] – [14.14] are obvious in view of the PM-465 and PM-565
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`machines, Braud ’809, and the knowledge of a PHOSITA. See ¶276. I note that Wirtgen America’s
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`infringement contentions for RE268 simply cross reference claims 1 and 14 without providing any
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`distinguishing analysis or content. As such, Wirtgen America’s infringement contentions appear
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`to treat this limitation as synonymous with portions of claim 1, and I therefore incorporate my
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`analyses regarding [1.1], [1.2], and [1.3].
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`364 See ¶¶ 37-39.
`365 It is an abstract idea to consider that the articulated coupling is a boundary between upstream and downstream
`subsets.
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`xvi.
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`wherein the first subset is attached to the
`[14.15]
`machine frame elastically with a lower spring stiffness so
`that transmission of vibrations to the machine frame is
`reduced,
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` This limitation is substantively the same as claim element [1.4]. I note that Wirtgen
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`America’s infringement contentions for RE268 simply cross reference claims 1 and 14 without
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`providing any distinguishing analysis or content. As such, Wirtgen America’s infringement
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`contentions appear to treat this limitation as synonymous with portions of claim 1, and I therefore
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`incorporate my analyses regarding [1.4].
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`xvii.
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`and the second subset is attached to the
`[14.16]
`machine frame with a higher spring stiffness or in a rigid
`manner;
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` A PHOSITA would have found the PM-465 and PM-565 to disclose an obvious
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`variation of this limitation for the reasons discussed above. This element is substantively the same
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`as claim element [1.5]. I note that Wirtgen America’s infringement contentions for RE268 simply
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`cross reference claims 1 and 14 without providing any distinguishing analysis or content. As such,
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`Wirtgen America’s infringement contentions appear to treat this limitation as synonymous with
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`portions of claim 1, and I therefore incorporate my analyses regarding element [1.5].
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`xviii. [14.17]
`wherein the clutch is connected between the
`hydraulic pump drive and the drive pulley;
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` This claim limitation would have been obvious to a PHOSITA in light of the PM-
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`465 or PM-565, which have their clutches connected between their hydraulic pump drives and
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`their drive pulleys. See ¶ 216; see, e.g., Figure 45. This claim limitation is substantively identical
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`to claim element [1.3] above. I note that Wirtgen America’s infringement contentions for RE268
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`simply cross reference claims 1 and 14 without providing any distinguishing analysis or content.
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`As such, Wirtgen America’s infringement contentions appear to treat this limitation as
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`synonymous with portions of claim 1, and I therefore incorporate my analyses regarding [1.3].
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`xix.
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`wherein the drive engine has an output axis
`[14.18]
`aligned with an input axis of the hydraulic pump drive
`and with an input axis of the drive pulley prior to
`operation of the construction machine; and
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` This claim limitation is disclosed by the PM-465 or PM-565. This claim limitation
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`is substantively the same as element [1.6], above. I note that Wirtgen America’s infringement
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`contentions for RE268 simply cross reference claims 1 and 14 without providing any
`
`distinguishing analysis or content. As such, Wirtgen America’s infringement contentions appear
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`to treat this limitation as synonymous with portions of claim 1, and I therefore incorporate my
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`analyses regarding [1.6].
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`xx.
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`wherein the articulated coupling
`[14.19]
`accommodates a lack of alignment between the output
`axis of the drive engine and the input axes of the hydraulic
`pump drive and the drive pulley due to dynamic
`movement of the first subset relative to the second subset
`during operation of the construction machine.
`
` This claim limitation would have been obvious to a PHOSITA in light of the PM-
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`465 or PM-565. This claim limitation is substantively the same as element [1.7], above. I note that
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`Wirtgen America’s infringement contentions for RE268 simply cross reference claims 1 and 14
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`without providing any distinguishing analysis or content. As such, Wirtgen America’s
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`infringement contentions appear to treat this limitation as synonymous with portions of claim 1,
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`and I therefore incorporate my analyses regarding [1.7].
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`I conclude that RE268 claim 14 is invalid as obvious in view of operating the Braud
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`’809 telehandler and Caterpillar PM-465 and PM-565 cold planers before April 15, 2005 and the
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`knowledge of a PHOSITA, as informed by mechanical power transmission component vendor
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`catalogs.366
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`3.
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`Dependent Claim 30
`i.
`Claim [30.pre]: The construction machine of claim 14,
`wherein:
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` At a minimum, RE268 claim 30 is obvious because claim 14 from which it depends
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`is obvious as well as for the additional reasons below. See ¶¶ 351-374.367
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`ii.
`iii.
`
`[30.1] the hydraulic pump drive includes:
`[30.2] a gearbox casing;
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`
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`I incorporate my analysis at ¶¶ 285-287. For the reasons I discussed there, it is my
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`opinion that the PM-465 and PM-565 disclose this limitation.
`
` Braud ’809 also discloses this limitation. Specifically, Braud teaches that the
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`typical engine-driven hydraulic pump drives known in the prior art, including that disclosed in the
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`Braud itself, comprise gearboxes with the gears, bearings, shafts, and lubrication housed in a
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`casing. Braud ’809 discloses a gearbox driving another gearbox and a hydraulic pump.368
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`The gear box is driven by means of an angle change with two outputs, of which one
`drives the gear box and of which the other drives a hydraulic pump furnishing the
`energy to the hydraulic actuators of the truck.
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`It follows that the disclosed gear box is an enclosed hydraulic pump drive.
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` Moreover, the Caterpillar PM-465 and PM-565 machines had hydraulic pump
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`drives bolted onto the back of their engines, and that those casings included a casing for the gears.
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`See Figure 31 and Figure 84., Given the typical dusty environment in which cold planers are used,
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`it is an obvious permutation to enclose the pump drive in a casing to protect the components from
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`
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`366 See ¶255.
`367 I also incorporate by reference and reserve the right to rely on the discussion in Section VI.
`368 Braud ’809, 1:38-41.
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`milling drum (12) and the ground surface (2),” or is merely having the capability to do so
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`sufficient?
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`In view of these ambiguities, claim 11 of the ’641 Patent fails to provide a
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`PHOSITA with reasonable certainty over the claim’s meaning. For purposes of my invalidity
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`analysis, I have considered both potential interpretations. My opinions are the same under either
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`interpretation.
`XI. Conclusion
` For at least the reasons stated above, it is my opinion that all asserted claims of the
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`RE268 and ’641 Patents are obvious or anticipated in light of physical prior art PM-465 and PM-
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`565 machines and associated documentation, the knowledge of a PHOSITA, and prior art patents.
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`It is also my opinion that the asserted claims of the RE268 Patent were broadened during reissue,
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`that the asserted claims are indefinite, and that the ’641 Patent is ambiguous due to mixing method
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`and apparatus claiming.
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`I declare under the penalty of perjury that the foregoing is true and correct.
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`Executed on May 19, 2023 at Menlo Park, California
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`Richard W. Klopp, Ph.D., P.E., F.A.S.M.E.
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`250
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`2111403.000 – 0516
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