Case 1:17-cv-00770-JDW Document 391 Filed 05/24/24 Page 1 of 11 PageID #: 35740
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`THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF DELAWARE
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`C.A. No. 17-770-JDW
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`JURY TRIAL
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`))))))))))))
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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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`DECLARATION OF ERIC ENGELMANN IN OPPOSITION TO WIRTGEN AMERICA,
`INC’S MOTIONS FOR ENHANCED DAMAGES, ATTORNEYS’ FEES, AN
`INJUNCTION OR ONGOING ROYALTY, AND OTHER RELIEF
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`I, Eric Engelmann, declare as follows:1
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`9.
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`I am an Engineering Manager at Caterpillar Inc. (“Caterpillar”) where I have been
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`employed since 1997. As part of my duties at Caterpillar, I have had responsibility for supporting
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`Caterpillar’s cold planer business since 2010. I became the Engineering Manager for Caterpillar’s
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`cold planer product family in 2013.
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`10.
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`As I testified at trial, I have personal knowledge regarding the development history
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`and design of Caterpillar’s cold planer machines, including the PM-600 series (which includes the
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`PM-620 and PM-622), and the PM-800 series machines. I also have personal knowledge regarding
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`changes to the designs of the PM-600 and PM-800 series machines following the start of this
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`Action on June 16, 2017. I am familiar with the facts and circumstances set forth herein and, if
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`called as a witness, I could and would testify competently thereto.
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`1 On April 12, 2024, I offered a Declaration in support of Caterpillar’s Opening Brief Regarding
`its Estoppel Defenses. To avoid confusion, I am numbering the paragraphs of this declaration
`consecutively from my April 12 Declaration.
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`Case 1:17-cv-00770-JDW Document 391 Filed 05/24/24 Page 2 of 11 PageID #: 35741
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`A.
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`11.
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`Caterpillar Was Transparent with Wirtgen During the Redesign Process
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`Caterpillar was transparent with Wirtgen about its redesign efforts relating to the
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`accused cold planer products in the hopes that the redesigns would resolve any future patent
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`disputes regarding the PM600 and PM800 series of cold planers.
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`12.
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`For example, in January 2018—many months before the ITC decision in October
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`2018—we provided Wirtgen with the opportunity to inspect a machine with preliminary design
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`changes for certain patents that Wirtgen asserted (the ’340, which the ITC later found to be invalid,
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`and the ’628, which Wirtgen later dropped). We also permitted Wirtgen to conduct multiple
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`additional inspections once we presented our design changes to Customs. As part of our redesign
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`efforts, Caterpillar gave Wirtgen access to the relevant technical documents and our highly
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`confidential software source code to facilitate its inspection of our redesigns.
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`13.
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`In addition to providing inspections and technical documents, Caterpillar met to
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`discuss potential design changes in hopes of resolving any issues or disputes by mutual agreement.
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`For example, in October 2018 (shortly after the ITC decision), Caterpillar and Wirtgen met in
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`person to discuss potential changes to at least the PM-600 and PM-800 series machines related to
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`the ’309, ’530 and the ’641 Patents (even though as of that time Caterpillar had been found not to
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`infringe the ’641 Patent and the ITC had not yet issued the limited exclusion order).
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`B.
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`Caterpillar Began Working on Design Updates Before the ITC Decisions on
`Wirtgen’s Claims
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`1.
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`Caterpillar Began Updating Rotor Drum Exposure Despite the ITC’s
`Finding of Non-Infringement.
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`14.
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`In the ITC's October 2018 decision, Caterpillar’s Rotor Drum Exposure feature was
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`found not to infringe the ’641 Patent. Nevertheless, in February 2020 Caterpillar began working
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`on a design change anyway given the ongoing dispute between the parties as to that patent.
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`15.
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`In March 2021—the same month that the Federal Circuit reversed the finding of
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`non-infringement for the ’641 Patent—Caterpillar completed the engineering design work to
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`change Rotor Drum Exposure. The updated design first went into production in April 2021. By
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`May 2021, every PM-600 and PM-800 machine manufactured had the changed version of Rotor
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`Drum Exposure.
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`2.
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`Caterpillar Began Removing Ride Control (’309 Accused Feature)
`Before the ITC Decision.
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`16.
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`Caterpillar began working on design changes that removed Ride Control before the
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`ITC’s decision in October 2018. We completed the engineering design work in December 2019,
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`approximately five months after the ITC issued the limited exclusion order in this case. The first
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`machines without Ride Control were produced in May 2020, five months after the engineering
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`design work completed and before the appeal process for the ITC case had concluded.
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`17.
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`Caterpillar needed the additional five months to complete important steps necessary
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`to prepare to produce an actual machine, such as the placement of supply chain orders for the new
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`material required to implement the change, supplier lead time of the new components, receipt of
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`material into the production facility once the supplier has produced and shipped it, and
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`coordination of all required parts hitting the production line at the correct time to properly
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`implement the change.
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`3.
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`Caterpillar Began Designing Out the Leg Sensors Accused of
`Infringing the ’530 Patent (’530 Accused Feature) Before the ITC’s
`Limited Exclusion Order.
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`18.
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`By the time the ITC issued its Limited Exclusion Order in July 2019, Caterpillar
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`had already begun redesigning its sensor configuration so that the PM-600 and PM-800 no longer
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`had sensors inside the lifting column’s cylinders. This design change involved removing such leg
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`sensors completely, and installing a combination of different sensors, namely track angle sensors
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`Case 1:17-cv-00770-JDW Document 391 Filed 05/24/24 Page 4 of 11 PageID #: 35743
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`and rear leg proximity switches. The engineering design work for this redesign completed in
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`January 2020 and the new design entered production in October 2020, before the appeals process
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`for the ITC Investigation completed.
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`19.
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`Implementing this design change took a significant amount of engineering time and
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`resources, as Caterpillar was required to adjust its design for the PM-600 and PM-800 series
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`machines to not only accommodate different sensors, but also due to the sensors being relocated
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`on the machine. This drove substantial wiring changes, machine frame changes, and several other
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`mechanical component changes to achieve the new design. With substantial changes, field tests
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`and validation are necessary to ensure proper functionality and durability for the sake of Caterpillar
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`customers. These necessary steps take time and resources to complete.
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`C.
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`20.
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`Trial Exhibits 602 and 611
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`I understand that Wirtgen relies on Trial Exhibits 602 and 611 as evidence that
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`Caterpillar allegedly copied features from Wirtgen’s machines. See D.I. 374 at 4-5. I am familiar
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`with each document and testified about them at trial.
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`1.
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`Trial Exhibit 611
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`21.
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`Trial Exhibit 611 is a Caterpillar presentation entitled “Cold Planer Accelerated
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`Program,” dated October 23, 2014.2 This document was created as part of our design process for
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`Caterpillar’s Next Generation of cold planers.
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`22.
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`At the time this document was created, the design process of the PM-600 was
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`substantially complete. At that point, a prototype PM-600 had already been manufactured for
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`testing. This can be seen at Exhibit E1 (Trial Ex. 6118, CAT_00009208) a true and correct copy
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`2 Page.0039, includes a date of December 15, 2017. This is not the correct date of the document.
`The first page shows the correct date of October 23, 2014. I note that December 15, 2017, was
`several months after the start of this Action as well as the ITC Investigation.
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`Case 1:17-cv-00770-JDW Document 391 Filed 05/24/24 Page 5 of 11 PageID #: 35744
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`of which is attached hereto. Exhibit E1 is entitled “GW4-5” for the PM-600 series machines.
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`“GW4-5” refers to Gateways 4 and 5, which are stages for New Product Introduction projects (also
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`called “NPIs”). Exhibit E1 was created on or around February 5, 2015. Slide 5 discusses the
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`current state of the PM-600 prototype:
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`23.
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` Slide 5 depicts a timeline showing that the PM-600 prototype build entered testing
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`in July 2014. By February 5, 2015, the prototype machine already had 245 hours of use and was,
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`at the time, in the hands of a customer in Texas.
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`24.
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`This is consistent with my trial testimony, where I testified that this prototype was
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`built in Italy and shipped to the United States in 2014. See Trial Tr. at 504:15-18.
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`25.
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`As to Trial Exhibit 611, it’s purpose was to present the project overview and overall
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`strategy for Caterpillar’s Next Generation cold planer product line. Some slides in this exhibit
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`outline the expected design features of each model planned in the lineup of machines. One
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`particular slide compared and contrasted the features between (1) our existing PM-600 design as
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`implemented in our prototype and (2) Wirtgen’s W210 machine. Where the document indicates a
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`“superior” (i.e. green color) feature, this refers to our belief that our PM-600 exceeds in
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`performance the Wirtgen machine being benchmarked. Where the document indicates a “value
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`match”, this refers to our belief that the PM-600 is at least equal in performance for that feature to
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`Wirtgen’s W210 machine. The statements are intended to compare the performance at a feature
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`level only, and do not compare the equivalency of the ways each machine implements such features
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`(i.e. specific designs).
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`2.
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`Trial Exhibit 602
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`26.
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`Trial Exhibit 602 is a Caterpillar presentation titled “Cold Planer LCP Trade-Off
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`Event,” dated February 21, 2011. I am personally familiar with this document and its contents.
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`This document was also created as part of our design process where we acquired publicly available
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`competitor machines to perform competitive intelligence on their features. In my experience, such
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`competitive intelligence is standard practice in this industry, as competitors routinely acquire one
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`another’s machines to better compete.
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`27.
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`Slides 107-111 include snapshots of a tradeoff analysis spreadsheet which outlined
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`proposed features that were being evaluated. In those the slides, black text indicates a “Catch Up”
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`feature, meaning the feature was being considered to make our new machines equal to the
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`competitive product that was in the market. Blue text indicates “Superior” features that were being
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`considered that would make our new machines superior to competitive machines available in the
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`market. For both the “Catch Up” and “Superior” features, these may have been features that we
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`already had in our existing machines or they may have been new features that we were developing.
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`Either way, the focus was at a features level, and not any particular design to implement such a
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`feature.
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`28.
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`I have been informed that Wirtgen has referred to the following specific portions
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`of slide page 0602.0107:
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`*
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`*
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`*
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`29. While this document compares competitive features, neither entry reflects a
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`patented design from Wirtgen that Caterpillar copied, as I discuss below.
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`a)
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`Parallel to Surface
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`30. With respect to “Parallel to Surface Auto Leveling Technology” entry, while the
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`document indicates this to be a “Catch Up” feature, Caterpillar in fact already had a design to
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`perform automatic parallel to surface in the form of our 1990s machines, the PM-465 and PM-565.
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`See, e.g., Trial Tr. at 1182:25-1190:22. Also, I note that this document was created in 2011, which
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`is two years before the ’972 Patent issued in April 2013. Indeed, I am aware that the Patent Office
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`recently found several claims (including Claim 1) of the ’972 Patent invalid based at least in part
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`on Caterpillar’s 1990s machines.
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`31.
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`I was present in the Court for the trial testimony of Dr. Lumkes. I heard Dr. Lumkes
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`testify that the only machines accused of infringing claim 12 were our 02B build machines which
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`included the track angle sensors that I described above. See Trial Tr. 603:20-604:3, 618:13-19
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`(“Q. Let’s turn to Claim 12, professor. Okay. I have a demonstrative for that. Q. And remind us
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`which machines does your analysis for Claim 12 relate to? A. So Claim 12 is specific to the track
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`angle sensors, it’s only applied to the machines that have the track angle sensors.”).
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`32.
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`The machines that resulted from the development process to which Trial Exhibit
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`602 relates (i.e., the 02A Builds and earlier) did not have track angle sensors. As I discussed
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`above, the PM-600 and PM-800 series machines with track angle sensors (i.e., the 02B build) were
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`part of a different design process that began in July 2019 and were first put into production in
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`October 2020.
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`33.
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`Likewise, the competitive machines analyzed and discussed in Trial Exhibit 602
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`also did not, to my recollection, have track angle sensors. To my recollection, such machines had
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`in-cylinder leg position sensors. This is consistent with Dr. Lumkes’ testimony at trial (for which
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`I was present), where he testified that Wirtgen’s W210 machines had in-cylinder magnetostrictive
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`sensors. See Trial Tr. 639:3-6 (“Turning to the ’530 patent, what type of leg cylinders are used in
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`the Wirtgen W210 machines? A. They also use magnetostrictive sensors where the same type of
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`sensor with the magnet.”).
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`34.
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`Caterpillar developed its design for using track angle sensors using its own
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`independent R&D process. As I testified at trial, the design project in which the PM-600 and PM-
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`800 leg sensors were replaced with track angle sensors involved an R&D investment of between
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`$2.2 and $2.4 million. See Trial Tr. 509:5-11.
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`b)
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`Four-Fold Floating Axle
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`35.
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`As to the “Four-Fold Floating Axle” entry of Trial Ex. 602 (at .0107), while
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`Caterpillar did analyze this feature as implemented in Wirtgen’s W210 machines, we ultimately
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`elected not to implement that feature. I was in Court for the testimony of Craig Steffen, the lead
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`designer of our Ride Control feature. As Mr. Steffen testified at trial, Caterpillar believed that
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`Wirtgen’s Four-Fold Floating Axle feature led to poorer milling performance because the feature
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`was designed to be used during milling. See Trial Tr. at 570:18-571:5. We determined that use of
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`this feature resulted in an uneven milled surface. See id.
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`36.
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`As Mr. Steffen testified, the poor performance of Wirtgen’s Four-Fold Floating
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`Axle led Caterpillar to reject the feature. Instead, Caterpillar independently developed a feature
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`called Ride Control, that I discussed above. Mr. Steffen explained that Ride Control cannot be
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`used during milling but was instead a stability feature to be used while the machine was being
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`transported to and from a milling site. I understand that Mr. Steffen obtained the idea for Ride
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`Control from an early patent in the field of grape harvesting. A true and correct copy of this patent
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`is attached hereto as Exhibit E2 (U.S. Patent No. 4,247,126).
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`37.
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`To develop Ride Control for the PM-600 and PM-800, Mr. Steffen explained at
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`trial that he started with the design for Caterpillar’s PM-201 (a subsequent version of the PM-565).
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`See id. at 571:6-573:11. Mr. Steffen then modified that design to include various valves to permit
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`Ride Control to be activated during transport and deactivated during milling. As Mr. Steffen
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`testified, Caterpillar submitted this design to the Patent Office along with the ’309 Patent and was
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`awarded a patent on Mr. Steffen’s design. See id. at 573:17-574:12.
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`38.
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`Caterpillar never believed it infringed the ’309 Patent because we independently
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`developed our feature using Caterpillar’s own technology; because Ride Control was used for a
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`different purpose than the one discussed in the ’309 Patent; and because the Patent Office issued
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`a patent on our design over the ’309 Patent.
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`er the laws ofthe United Statesthat the foregoingis
`‘myknowledge and beliefafter reasonable investigation. Executed
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