Case 1:17-cv-00770-JDW Document 388-6 Filed 05/24/24 Page 1 of 6 PageID #: 35697
`Case 1:17-cv-00770-JDW Document 388-6 Filed 05/24/24 Page 1 of 6 PagelD #: 35697
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`EXHIBIT 6
`EXHIBIT 6
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`Case 1:17-cv-00770-JDW Document 388-6 Filed 05/24/24 Page 1 of 6 PagelD #: 35697
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`EXHIBIT 6
`EXHIBIT 6
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`Case 1:17-cv-00770-JDW Document 388-6 Filed 05/24/24 Page 2 of 6 PageID #: 35698
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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. C.A. No. 17-770-JDW
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`REBUTTAL EXPERT REPORT OF DR. ANDREW W. SMITH, P.E.
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`Case 1:17-cv-00770-JDW Document 388-6 Filed 05/24/24 Page 3 of 6 PageID #: 35699
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`setting devices. As I demonstrate below (using the same evidence cited by Dr. Rahn), Dr.
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`Rahn fails to provide a consistent argument as to how the Accused Products practice the
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`limitations of Claim 5; I also demonstrate below that the Caterpillar grade and slope system
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`sets the operating parameter during (not prior to) the effecting of a switchover of control
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`and therefore does not practice each and every limitation of Claim 5 of the ’788 Patent.
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` Dr. Rahn (and his citations to Dr. Valerdi’s report) fails to demonstrate that the Caterpillar
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`grade and slope control system performs the setting process prior to effecting the
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`switchover because in his analysis of both Claims 1 and 5, he takes multiple (incorrect)
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`positions as to what is meant by “switching over” and “effecting [the] switchover,” all of
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`these positions lacking support within the specification or any extrinsic evidence.
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` A representation of these plurality of positions is shown in Figure 22. Starting in his
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`analysis of Claim 1[f], (“a switchover device operable to switch over”), Dr. Rahn identifies
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`the GUI sensor selection buttons on the display screen of the Accused Products as
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`“switchover devices”147 that are “operable to switch over.” Dr. Rahn takes the position that
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`the switchover device is “operable to switch over” by initiating the process of switching
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`over by allowing a user to open the sensor selection window (see Figure 22); due to the
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`Court’s construction of terms, this means the Dr. Rahn has identified “the time of
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`switchover” to be the point when the sensor selection window is opened.
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` Next, in his analysis of Claim 1[g] Dr. Rahn takes the position that the controller is
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`“operable to effect switchover” by providing the final sensor benching/pass-through step
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`while the machine’s hydraulics are locked out.
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`147 Rahn Opening Report at ¶367.
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`2111403.002 - 1731
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`Case 1:17-cv-00770-JDW Document 388-6 Filed 05/24/24 Page 4 of 6 PageID #: 35700
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` Finally, in his analysis of Claim 5 Dr. Rahn then opines that the “pre-setting” steps that
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`occur just prior to “effecting the switchover” are the same benching/pass-through steps
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`(i.e., see blue highlights in Figure 21), which he previously identified with the controller
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`effecting switchover (in Claim 1[g]). Dr. Rahn opines that these steps, now, are the “pre-
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`setting” steps which only occur immediately prior to “effecting switchover” (or the Resume
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`Auto/Complete step) “completing the switchover.”
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`Figure 22:
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`An annotated flow chart of the Caterpillar sensor swapping process which shows
`the multiple, contradictory positions taken by Dr. Rahn at various points in his
`Opening Report.
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` Dr. Rahn cannot have it all three ways and, clearly, these contradictory positions cannot all
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`be simultaneously correct. Dr. Rahn makes no attempt to justify any of these positions
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`individually nor how they are all consistent with each other.
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`2111403.002 - 1731
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`Case 1:17-cv-00770-JDW Document 388-6 Filed 05/24/24 Page 5 of 6 PageID #: 35701
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` Accordingly, his analysis of both Claims 1 and 5 of the ’788 Patent is rendered
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`contradictory and fails to demonstrate that the Accused Products practice the limitations of
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`Claims 1 and 5 of the ’788 Patent.
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` Furthermore, the Accused Products do not practice the limitations of Claim 5 of the ’788
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`Patent. As a preliminary matter, to provide an appropriate basis to assess whether the
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`Accused Products practice the “pre-setting prior to effecting switchover” limitation of
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`Claim 5, it is necessary to understand what the ’788 Patent teaches regarding the meaning
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`of the term “effecting the switchover.”
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` The ’788 Patent specification teaches that effecting of the switchover occurs directly after
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`the issuance of a switchover command, e.g., the pushing of a button (emphasis added):
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`“The leveling device is provided with a device for the switchover of sensors which,
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`upon activation of a switchover command, effects switchover.”148
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`and
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`“In this way, a machine operator can already prepare the switchover of the sensors
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`during the milling operation so that switchover of the sensors is possible at the push
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`of a button.”149
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` A PHOSITA would understand that “the switchover” of sensors is not a unitary action, i.e.,
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`it involves leaving one control state (i.e., control based on the replaced sensor) and entering
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`another (control based on the replacement sensor).
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` Furthermore, a PHOSITA would also understand that “effecting” a process requires both
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`causing the process to take place as well as achieving the end goal of the process; for
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`example, common dictionary definitions of the verb “effect” are:
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`148 ’788 Patent, 2:7-9.
`149 ’788 Patent, 2:19-21.
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`Case 1:17-cv-00770-JDW Document 388-6 Filed 05/24/24 Page 6 of 6 PageID #: 35702
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`controller (by e.g., activating touch screen buttons via a separate screen) to change this
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`relative inclination.
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`In this case, a user could select a variety of relative inclinations to set the machine frame
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`to, as well as select an appropriate error band which (if the machine travelled outside of
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`this inclination error band) the user would be notified and queried for further instructions
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`(i.e., to manually establish the machine’s parallel orientation again or not). Such
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`information would be useful, e.g., as an alert to the operator that the ground inclination was
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`unexpectedly changing, for instance.
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`In his opening report, Dr. Lumkes opines that there were “Advantages of Parallel to
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`Surface” capabilities which, in his opinion were acknowledged by Caterpillar. However,
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`Dr. Lumkes does not opine that the automatic establishing of said parallel orientation itself
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`was the recognized feature; accordingly, to the extent that there was a perceived user
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`preference for parallel to surface orientation capabilities, Dr. Lumkes (nor, to my
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`knowledge, Wirtgen America) has not demonstrated that the preference could not have
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`been satisfied by achieving parallel orientation automatically, as opposed to manually. This
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`notwithstanding, I am not aware of any information provided by Wirtgen America in this
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`matter which demonstrates that any sales were tied directly to the automatic establishing
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`of parallel orientation as recited in the ’972 Patent.
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`I declare under the penalty of perjury that the foregoing is true and correct.
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`Executed on June 16, 2023, at Chicago, IL.
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`Andrew W. Smith, Ph.D., P.E.
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`2111403.002 - 1731
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