Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 1 of 16 PageID #: 36434
`
`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 REPLY IN SUPPORT OF ITS MOTION
`REGARDING ESTOPPEL DEFENSES
`
`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 31, 2024
`11539404/11898.00005
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 2 of 16 PageID #: 36435
`
`TABLE OF CONTENTS
`
`PAGE
`
`ARGUMENT .................................................................................................................................. 1
`
`I.
`
`’309 PATENT: WIRTGEN TOOK INCONSISTENT POSITIONS, AND ANY
`WAIVER WAS MADE BY WIRTGEN ............................................................................ 1
`
`A.
`
`B.
`
`Wirtgen Made Inconsistent Statements About a Four-Sided Stability
`Pattern ..................................................................................................................... 1
`
`Caterpillar Did Not Waive Its Judicial Estoppel Defense ...................................... 1
`
`’530 PATENT: WIRTGEN ENGAGED IN PROSECUTION LACHES .......................... 4
`
`’268 PATENT: CATERPILLAR IS ENTITLED TO EQUITABLE
`INTERVENING RIGHTS .................................................................................................. 6
`
`II.
`
`III.
`
`IV.
`
`’788 PATENT: COLLATERAL ESTOPPEL BARS CLAIM 5 ........................................ 8
`
`i
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 3 of 16 PageID #: 36436
`
`TABLE OF AUTHORITIES
`
`CASES
`
`PAGE(S)
`
`Aitken v. Debt Mgmt. Partners, LLC,
`2015 WL 433508 (C.D. Ill. Feb. 2, 2015)............................................................................3
`
`Bloom Eng’g Co. v. N. Am. Mfg. Co.,
`129 F.3d 1247 (Fed. Cir. 1997)............................................................................................7
`
`Coles v. Carlini,
`2013 WL 3811642 (D.N.J. July 22, 2013) ...........................................................................2
`
`In re Arunachalam,
`709 F. App’x 699 (Fed. Cir. 2017) ......................................................................................9
`
`John Bean Techs. Corp. v. Morris & Assocs.,
`988 F.3d 1334 (Fed. Cir. 2019)........................................................................................7, 8
`
`Kingsdown Med. Consultants, Ltd. v. Hollister Inc.,
`863 F.2d 867 (Fed. Cir. 1988)..............................................................................................5
`
`Kroy IP Holdings, LLC v. Groupon, Inc.,
`2022 WL 17403538 (D. Del. Dec. 2, 2022).........................................................................9
`
`MacFarlan v. Ivy Hill SNF, LLC,
`2010 WL 11707513 (E.D. Pa. Sept. 8, 2010) ......................................................................3
`
`Odyssey Contracting, Corp. v. Hercules Painting Co., Inc.,
`2022 WL 5237210 (W.D. Pa. Jan. 11, 2022) .......................................................................3
`
`Shire Labs, Inc. v. Corepharma, LLC,
`2008 WL 4822186 (D.N.J. Nov. 3, 2008) ...........................................................................4
`
`Sonos, Inc. v. Google LLC,
`2023 WL 6542320 (N.D. Cal. Oct. 6, 2023)........................................................................6
`
`Soverain Software v. Victoria’s Secret Direct Brand Mgmt., LLC,
`778 F.3d 1311 (Fed. Cir. 2015)............................................................................................9
`
`Thompson v. Kellogg USA, Inc.,
`2014 WL 11398261 (M.D. Pa. Aug. 4, 2014) .....................................................................4
`
`Transco Prods. v. Performance Contracting, Inc.,
`38 F.3d 551 (Fed. Cir. 1994)................................................................................................9
`
`ii
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 4 of 16 PageID #: 36437
`
`United Therapeutics Corp. v. Liquidia Techs., Inc.,
`2022 WL 823521 (D. Del. Mar. 18, 2022) ..........................................................................9
`
`Webster Elec. Co. v. Splitdorf Elec. Co.,
`264 U.S. 463 (1924) .............................................................................................................5
`
`Wirtgen Am., Inc. v. Caterpillar Inc.,
`835 F. App’x 611 (Fed. Cir. 2021) ......................................................................................9
`
`Woodbridge v. United States,
`263 U.S. 50 (1923) ...............................................................................................................5
`
`XY, LLC v. Trans Ova Genetics,
`890 F.3d 1282 (Fed. Cir. 2018)............................................................................................9
`
`STATUTES
`
`35 U.S.C. § 252 ................................................................................................................................7
`
`RULES
`
`FED R. CIV. P. 56 (Advisory Comm. Notes on 2010 amendments) .................................................3
`
`MISCELLANEOUS
`
`MPEP § 201.07 ................................................................................................................................9
`
`iii
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 5 of 16 PageID #: 36438
`
`TABLE OF ABBREVIATIONS
`
`Abbreviation
`
`’268 patent
`’309 patent
`’395 patent
`’530 patent
`’659 patent
`’788 patent
`EP ’004 patent
`CAFC
`Ex.
`
`MPEP
`POR
`PTAB
`Reply Ex.
`
`SUMF
`
`Trial Ex.
`
`Trial Tr.
`Wirtgen
`
`Word or Phrase
`U.S. Patent No. RE48,268
`U.S. Patent No. 7,828,309
`U.S. Patent No. 8,308,395
`U.S. Patent No. 9,656,530
`U.S. Patent No. 8,408,659
`U.S. Patent No. 7,946,788
`European Patent No. 1,875,004
`Court of Appeals for the Federal Circuit
`Exhibits attached to the Declaration of Naoya
`Son (D.I. 369)
`The Manual of Patent Examining Procedure
`IPR Patent Owner Response
`Patent Trial and Appeal Board
`Exhibits attached to this Reply Brief, filed
`concurrently
`Wirtgen America’s Statement of Undisputed
`Material Facts (D.I. 212)
`Admitted Trial Exhibits and/or Narrowed
`Trial Exhibits
`Trial Transcripts
`Wirtgen Group (including Wirtgen America
`and Wirtgen GmbH working in concert in
`connection with enforcement activities
`directed towards the asserted patents)
`
`*All emphases in the brief are added unless otherwise noted.
`
`iv
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 6 of 16 PageID #: 36439
`
`ARGUMENT
`
`I.
`
`’309 PATENT: WIRTGEN TOOK INCONSISTENT POSITIONS, AND ANY
`WAIVER WAS MADE BY WIRTGEN
`
`A.
`
`Wirtgen Made Inconsistent Statements About a Four-Sided Stability Pattern
`
`Wirtgen does not—and cannot—reconcile the inconsistent statements at issue. Before the
`
`Patent Office, to avoid prior art, Wirtgen argued that “the ’309 patent does not acknowledge the
`
`claim feature is inherent”; and even “if all the actuating members [(i.e., the cylinders)] are designed
`
`identically,” deviations will exist that “influence . . . the stability pattern.” Ex. 1 (’309 POR) at
`
`47-48. In its Opposition (and at trial), to prove infringement, Wirtgen took the opposite position,
`
`contending that interconnected “cylinders of equal value” will necessarily generate an “identifiable
`
`four-sided stability pattern.” Opp. at 7; see also Trial Tr. at 595:14-596:24 (Lumkes). Because
`
`Wirtgen previously persuaded the Patent Office to consider the impact of “minor deviations” and
`
`reject Caterpillar’s obviousness arguments, Wirtgen cannot now argue inherency while bypassing
`
`the same testing it relied on as being necessary to avoid invalidity.
`
`Although Caterpillar’s Motion is directed to “inherency,” Wirtgen’s Opposition rests on a
`
`red herring regarding the “location” of the working roller relative to the four-sided stability pattern.
`
`See Opp. at 8. This is a different limitation—one which Wirtgen treated separately before the
`
`Patent Office from “inherency.” In addition to arguing that the four-sided stability pattern was not
`
`inherent, Wirtgen separately argued that Caterpillar did not establish the location of the working
`
`roller in the Swisher reference. Ex. 1 (’309 POR) at 49. Because Caterpillar’s arguments are not
`
`premised on the location of the working roller, whether Wirtgen maintained a consistent position
`
`on a separate issue is irrelevant to the inherency analysis presented.
`
`B.
`
`Caterpillar Did Not Waive Its Judicial Estoppel Defense
`
`Caterpillar asserted estoppel in its Answer. See D.I. 62 (Answer to First Am. Compl.) at
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 7 of 16 PageID #: 36440
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`45 (“Wirtgen America’s claims are barred by one or more of the doctrines of estoppel[.]”).
`
`Wirtgen’s argument that Caterpillar waived its judicial estoppel defense lacks merit. Coles v.
`
`Carlini, 2013 WL 3811642, at *8 (D.N.J. July 22, 2013) (judicial estoppel defense not waived
`
`because defendant’s answer stated “Plaintiff’s claims are barred by the doctrines of waiver,
`
`estoppel, laches, unclean hands and/or acquiescence”). Further, because the defense is based on
`
`inconsistent testimony presented at trial, Caterpillar could not have included such trial testimony
`
`in its pre-trial discovery responses and filings.
`
`Wirtgen made this an issue when it chose to present trial testimony that contradicted its
`
`Patent Office arguments. It was Dr. Lumkes—on direct examination—who testified that the four-
`
`sided stability pattern is inherent to the accused machines. Trial Tr. at 595:14-596:24 (Lumkes)
`
`(“it’s internally inherent to the feature”). On cross-examination, without any objection, Dr.
`
`Lumkes was further examined about the nature of the four-sided stability pattern. See, e.g., id. at
`
`647:15-648:19. Despite Caterpillar’s purported “judicial admission,” Wirtgen chose to present
`
`testimony on the inherency issue and cannot now rely on claimed waiver to erase testimony it
`
`affirmatively solicited at trial.
`
`Wirtgen argues that Caterpillar “conceded” the four-sided stability pattern during summary
`
`judgement. Not so. In its briefing, Caterpillar argued there was a factual dispute about “whether
`
`the Accused Products include ‘a four-sided stability pattern in which the widest transverse
`
`dimension falls within the milling rotor footprint.’” D.I. 239 at 8. The Court denied Wirtgen’s
`
`motion, noting that Caterpillar’s expert “concludes that without ‘valid references and calculations
`
`regarding the nature, shape, and placement of the stability pattern of the Accused Products,’ Dr.
`
`Lumkes hasn’t shown infringement.” D.I. 272 at 9. At trial, far from conceding the “nature, shape,
`
`and placement of the stability pattern,” Caterpillar cross-examined Dr. Lumkes on the shape of the
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 8 of 16 PageID #: 36441
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`stability pattern: “Q. You didn’t do that, you didn’t put any of the machines on a tilt table to test
`
`to see what the stability pattern would be, did you? A. That would be a pretty big venture, a 70,000
`
`pound machine.”). See Trial Tr. at 647:15-648:21 (Lumkes). There has been no waiver.
`
`Wirtgen’s reliance on its SUMF improperly extends the import of Caterpillar’s SUMF
`
`response beyond the summary judgment context. However, the relevant rule-making body and
`
`courts agree that responses to a SUMF are not necessarily binding at trial. See, e.g., FED R. CIV.
`
`P. 56 (Advisory Comm. Notes on 2010 amendments) (recognizing that “nonmovant may . . . prefer
`
`to avoid the cost of detailed response to all facts stated by the movant. This position should be
`
`available without running the risk that the fact will be taken as established under subdivision (g)
`
`or otherwise found to have been accepted for other purposes”); Aitken v. Debt Mgmt. Partners,
`
`LLC, 2015 WL 433508, at *2 (C.D. Ill. Feb. 2, 2015) (statements of undisputed material facts “are
`
`not judicial admissions to which the Defendants are bound at trial”); Odyssey Contracting, Corp.
`
`v. Hercules Painting Co., Inc., 2022 WL 5237210, at *3 (W.D. Pa. Jan. 11, 2022) (admissions
`
`made in conjunction with summary judgment motion “are for the purposes of summary judgment
`
`only”). Wirtgen’s waiver claim also violates the policy behind judicial estoppel, which seeks to
`
`remedy the misconduct of a party taking contradictory positions in different proceedings before
`
`different tribunals. See MacFarlan v. Ivy Hill SNF, LLC, 2010 WL 11707513, at *1 n.1 (E.D. Pa.
`
`Sept. 8, 2010) (“because judicial estoppel is an equitable doctrine that protects the integrity of the
`
`court system, it is not necessarily subject to the same pleading and waiver rules that apply to other
`
`affirmative defenses”).
`
`Finally, Wirtgen’s arguments regarding bad faith are incorrect. Wirtgen leveraged one
`
`position in convincing the Patent Office to allow claim 29 over Caterpillar’s invalidity challenge,
`
`and then changed that position to establish infringement in this Action—when Caterpillar itself
`
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 9 of 16 PageID #: 36442
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`was estopped from contesting validity on the same basis. See D.I. 272 at 25-26. Wirtgen gained
`
`an unfair advantage by changing positions and misled the jury. See Shire Labs, Inc. v.
`
`Corepharma, LLC, 2008 WL 4822186, at *8 (D.N.J. Nov. 3, 2008) (“bad faith” shown because
`
`party’s change of position would “allow it to gain an advantage unfairly”); Thompson v. Kellogg
`
`USA, Inc., 2014 WL 11398261, at *7 (M.D. Pa. Aug. 4, 2014) (“If the second tribunal adopted the
`
`party’s inconsistent position, then at least one court has probably been misled.”). Judicial estoppel
`
`is the proper remedy, given that improper testimony was given to the jury who cannot unhear it.
`
`Wirtgen’s suggestion that the “alleged harm would have been properly redressed through cross-
`
`examination of Wirtgen’s expert” (Opp. at 9) was previously rejected by Wirtgen and the Court.
`
`D.I. 336 (Pretrial Conference Tr.) at 27:6-17 (Wirtgen: “[W]e don’t think that Caterpillar’s
`
`arguments should be put in front of the jury. Court: “I agree that these issues are issues for the
`
`Court. I don’t intend to put a bunch of factual interrogatories to the jury to establish factual
`
`predicates for unenforceability or any of the other equitable defenses that are in the case.”).
`
`II.
`
`’530 PATENT: WIRTGEN ENGAGED IN PROSECUTION LACHES
`Wirtgen cannot explain away its prejudicial delay. First, Wirtgen provides no explanation
`
`why it broadened the claims of the ’530 patent when it did. Rather, it freely admits that even prior
`
`to filing for the first patents in the ’530 Family, it had long known of Caterpillar’s coupled rear
`
`leg-design (in place since the 1990s). Opp. at 15 (“Caterpillar’s rear legs have never been
`
`independently adjustable.”). Wirtgen acknowledges that it could have included claims for
`
`machines with non-individually adjustable legs in 2008 (when it filed for the first patent in this
`
`family) but chose not to. See id. at 13 (“Wirtgen’s claims [for the ’530] are fully supported by the
`
`original specification”). Although Wirtgen criticizes Caterpillar’s analysis of Wirtgen’s machines
`
`(D.I. 372), it argues its own “standard competitive intelligence gathering”—undertaken before it
`
`amended the ’530 claims—is proper: “there is nothing improper or inequitable” if the “’530 patent
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 10 of 16 PageID #: 36443
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`[was] designed to ensnare Caterpillar’s competing machines.” Opp. at 13.
`
`Second, Wirtgen assumes that so long as it did not seek to extend the patent term, there are
`
`no limits on how it can prosecute its patents. Id. at 10. However, the Supreme Court has long
`
`criticized this conduct. See Woodbridge v. United States, 263 U.S. 50, 56 (1923) (applying
`
`prosecution latches where there was “delay of 9 years and a half in securing a patent that might
`
`have been had at any time in that period for the asking”). Wirtgen may not repeatedly narrow
`
`claims in multiple patents over a decade only to expand those claims once a competitive product
`
`launches. See Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463, 466 (1924).
`
`Third, through its prosecution counsel, Wirtgen responds to a strawman argument that there
`
`is nothing unusual about a family having multiple continuation applications. See Opp. at 11-12;
`
`Montle Decl. ¶ 5. But Caterpillar never suggests it is statutorily impermissible or necessarily
`
`improper to file multiple continuations. The problem is that Wirtgen deliberately chose a course
`
`intended to be prejudicial, and it now wants to escape the consequences of its choices. Despite
`
`being well aware of Caterpillar’s leg design, Wirtgen sought claims in 2008 that would not cover
`
`that design, maintained this position for many years across repeated related patents, and then
`
`rewrote its claims to cover Caterpillar’s machines years later, after the accused products launched.
`
`See D.I. 365 at 14, 15.1
`
`Fourth, citing application claim 23 from April 2015, Wirtgen claims it “pursued claims to
`
`machines not limited to individually adjustable legs . . . from day one of the ’530 patent’s
`
`prosecution.” Opp. at 14. However, application claim 23 is a method claim that does not recite
`
`structures indicating whether the legs are individually adjustable or not. But regardless of how
`
`1 Wirtgen cites Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988),
`but this case is inapposite: it did not involve a prosecution laches claim and considered the extent
`to which a patentee had engaged in inequitable conduct.
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 11 of 16 PageID #: 36444
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`Wirtgen interprets this claim, it cannot say it “pursued” the claim when it cancelled it on January
`
`17, 2017, shortly after obtaining a Caterpillar machine. See Reply Ex. 40 at 2 (“1-41. (cancelled)”).
`
`Fifth, Wirtgen attempts to distinguish Sonos, which disproves Wirtgen’s suggestion that
`
`prosecution laches does not apply to applications filed after 1995. See Sonos, Inc. v. Google LLC,
`
`2023 WL 6542320, at *20 (N.D. Cal. Oct. 6, 2023) (finding that prosecution laches applies to post-
`
`1995 patent and noting that CAFC has repeatedly “affirmed the application of prosecution
`
`laches”). For example, Wirtgen claims that “there is no history of cooperation and trust between
`
`these parties.” Opp. at 15. But when Wirtgen was evaluating Caterpillar’s machines for
`
`infringement and amending the claims, Wirtgen had already consummated a major engine deal
`
`with Caterpillar. See Trial Ex. 4436. Although Wirtgen claims that the Sonos parties were
`
`“sharing sensitive information” about the accused products, Opp. at 15, Wirtgen’s delaying
`
`prosecution with full knowledge of Caterpillar’s machines makes its conduct even more egregious.
`
`Finally, in the face of prejudice it caused, Wirtgen argues that Caterpillar “did not even
`
`attempt to design-around Wirtgen’s patents until after the ITC enjoined their continued sale.” Id.
`
`at 16. This is wrong. Before the ITC issued its exclusion order in July 2019, Wirtgen participated
`
`in numerous discussions with Caterpillar regarding design changes that would avoid the ITC-
`
`asserted patents, including the ’530 patent. See D.I. 391 (Engelmann Decl.) ¶¶ 11-19.
`
`For over a decade, Wirtgen claimed that its lifting column invention required each
`
`machine’s legs to be individually adjustable. Wirtgen’s changing course a year after Caterpillar
`
`launched new products prejudiced Caterpillar and renders the ’530 patent unenforceable.
`
`III.
`
`’268 PATENT: CATERPILLAR IS ENTITLED TO EQUITABLE INTERVENING
`RIGHTS
`
`Based on undisputed facts, Caterpillar has established its equitable intervening rights:
`
`Caterpillar launched its accused machines in 2016 and 2017—after significant investments and
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 12 of 16 PageID #: 36445
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`before the ’268 patent was filed; Wirtgen filed the ’268 patent in 2018 to avoid Caterpillar’s prior
`
`art cold planers (Trial Tr. at 823:16-824:4 (Rahn)); and the ’268 patent is a reissue of the ’659
`
`patent whose European counterpart (EP ’004) was invalidated in 2020 (D.I. 368 ¶¶ 8-14).
`
`Tellingly, Wirtgen has never asserted the ’659 patent and instead sought a reissue after Caterpillar
`
`spent substantial resources invalidating its European counterpart (EP ’004). On this record,
`
`Caterpillar has equitable intervening rights based on its investment in its machines and the
`
`invalidity of the related patents. See 35 U.S.C. § 252; John Bean Techs. Corp. v. Morris & Assocs.,
`
`988 F.3d 1334, 1341 (Fed. Cir. 2019).
`
`Wirtgen’s arguments to the contrary are meritless. First, citing no authority, and expressly
`
`disclaiming any suggestion that the reissued claims are the same as or identical to the prior claims,
`
`Wirtgen argues that equitable intervening rights can apply only where a reissue patent’s claims are
`
`broadened rather than narrowed. This is inconsistent with the language of the statute, which
`
`excepts only “a valid claim of the reissued patent which was in the original patent” and says
`
`nothing about narrowed or broadened claims. 35 U.S.C. § 252. The CAFC has also addressed the
`
`argument Wirtgen makes and found intervening rights when an original claim is narrowed during
`
`a reissue to avoid prior art. See Bloom Eng’g Co. v. N. Am. Mfg. Co., 129 F.3d 1247, 1251 (Fed.
`
`Cir. 1997) (finding that plaintiff “is not entitled to damages for infringement” where “claims were
`
`narrowed and limited” in view of “newly cited prior art”); Trial Tr. at 823:16-824:4 (Rahn).
`
`Second, Wirtgen claims that Caterpillar “does not cite any evidence that it had a good-faith
`
`belief during the intervening period that the original claims were invalid.” Opp. at 18. But having
`
`invalidated its European counterpart, Caterpillar reasonably believed the ’659 patent was similarly
`
`invalid. Additionally, because the accused products and Caterpillar’s prior art machines satisfied
`
`the claims at issue in the same manner, Caterpillar reasonably believed that even if the accused
`
`7
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`

`

`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 13 of 16 PageID #: 36446
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`products were found to be infringing, then the patent would necessarily be found to be invalid.2
`
`Finally, Wirtgen argues that Caterpillar should be limited to recouping the monetary
`
`investment in the relevant machines that are directed to the “specific technology claimed in the
`
`’268 patent.” But this argument was also previously rejected by the CAFC: “We see no indication
`
`in the statute that monetary investments made and recouped before reissue are the only investments
`
`that a court may deem sufficient to protect as an equitable remedy.” John Bean, 988 F.3d at 1340.
`
`Wirtgen further incorrectly claims that Caterpillar has recouped its investment through “$120
`
`million in profit for these machines” by citing to a 126-page exhibit that does not include the $120
`
`million figure. See Opp. 19. While Wirtgen provides no explanation, it appears it improperly
`
`included Dr. Seth’s inflated profits on Caterpillar’s parts (~$57 million) and failed to account for
`
`operating costs. See, e.g., Reply Ex. 41 (DDX12-9).
`
`In the event Wirtgen’s JMOL on the ’268 patent is granted, because “substantial
`
`preparation was made before the grant of the reissue,” Caterpillar requests that the Court allow
`
`Caterpillar to continue to sell any machines the Court determines may practice the ’268 patent.3
`
`IV.
`
`’788 PATENT: COLLATERAL ESTOPPEL BARS CLAIM 5
`
`Wirtgen’s Opposition on the ’788 patent fails both legally and factually. It ignores binding
`
`CAFC authority and fails to identify any material differences between the claims at issue.
`
`Wirtgen argues that a PTAB decision can never form the basis of collateral estoppel due to
`
`2 Wirtgen’s suggestion that Caterpillar “does not even engage” with the factors identified by John
`Bean inappropriately suggests that Caterpillar did not assess the totality of circumstances or
`equities of intervening rights. To the contrary, Caterpillar expressly did so, including by
`discussing, among other things, the “years and expense of research, development, and investment
`in preparing for commercialization,” “Caterpillar’s good faith,” and Wirtgen’s “predatory use of
`the patent system.” D.I. 365 at 18-19.
`
`3 Wirtgen’s Opposition confirms that it is not seeking damages that would be covered by
`Caterpillar’s absolute intervening rights. Opp. at 15-17. In light of Wirtgen’s waiver of such
`damages, Caterpillar’s Reply addresses the equitable intervening rights doctrine.
`
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`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 14 of 16 PageID #: 36447
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`different legal standards between the Patent Office and district court. Opp. at 20. The CAFC has
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`ruled otherwise: “[W]e find that an affirmance of an invalidity finding, whether from a district
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`court or the Board, has a collateral estoppel effect on all pending or co-pending actions.” XY,
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`LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018); Kroy IP Holdings, LLC v.
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`Groupon, Inc., 2022 WL 17403538, at *4 (D. Del. Dec. 2, 2022) (PTAB’s final judgment has an
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`issue-preclusive effect on district courts “even though the district court and PTAB . . . require . . .
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`different burdens of proof”). Here, the CAFC affirmed the PTAB’s invalidity determination on
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`the ’395 patent. See Wirtgen Am., Inc. v. Caterpillar Inc., 835 F. App’x 611 (Fed. Cir. 2021).
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`Wirtgen “has had its day in court” and cannot merely rely on the applicable standards of proof to
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`relitigate the same issues. See XY, 890 F.3d at 1294.4
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`Wirtgen is also wrong on the facts. Wirtgen argues that the “identical” issue was not
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`litigated because claim 5 of the ’788 patent has additional limitations not found in claim 1 of the
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`’395 patent. But even Wirtgen concedes that collateral estoppel may apply where two claim are
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`not identical and the differences do not “materially alter the question of invalidity.” Soverain
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`Software v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1319 (Fed. Cir. 2015).
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`Here, Wirtgen has identified no difference that materially alters the question of invalidity
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`between claim 5 of the ’788 patent and claim 1 of the ’395 patent. Because claim 5 of the ’788
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`patent depends on claim 1, the analysis starts there. Wirtgen does not meaningfully dispute claim
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`4 Wirtgen’s reliance on a Report and Recommendation from United Therapeutics Corp. v. Liquidia
`Techs., Inc., 2022 WL 823521, at *5 (D. Del. Mar. 18, 2022) (“Report”), is misplaced. The Report
`is inconsistent with XY. See supra. Additionally, the ’395 patent is a continuation of the ’788
`patent, covers the same invention as the ’788 patent, and is therefore not a “different” patent. See
`MPEP § 201.07; Transco Prods. v. Performance Contracting, Inc., 38 F.3d 551, 555, (Fed. Cir.
`1994) (“A ‘continuation’ application claims the same invention claimed in an earlier application,
`although there may be some variation in the scope of the subject matter claimed.”); In re
`Arunachalam, 709 F. App’x 699, 703 (Fed. Cir. 2017) (finding that collateral estoppel bars
`challenge to continuation patent with “nearly identical” claims).
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`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 15 of 16 PageID #: 36448
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`1 of the ’788 patent is nearly identical to invalidated claim 1 of the ’395 patent. Instead, Wirtgen
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`attempts to distract with superficial differences: claim 1 of the ’395 patent recites “a controller and
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`switchover system,” while claim 1 of the ’788 patent recites “a controller” and “a switchover
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`device” separately. But there are no material differences between these two limitations. Indeed,
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`before the Patent Office invalidated claim 1 of the ’395 patent, Wirtgen had alleged that Caterpillar
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`infringes both the ’788 and ’395 patents, i.e., Wirtgen previously asserted that any machine with
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`separate “controller” and “switchover” devices would also infringe “a controller and switchover
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`system.” See Reply Ex. 42 ¶¶ 177-180. Thus, claims 1 of each patent are functionally identical.
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`Next, proceeding on its expansive infringement theory, Wirtgen fails to rebut that claim 5
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`of the ’788 patent is effectively identical to claim 1 of the ’788 patent (and hence, claim 1 of the
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`’395 patent). While claim 5 has two additional limitations—i.e., a replacement sensor being “pre-
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`select[ed]” and “pre-set”—Dr. Smith analyzed how Wirtgen’s infringement theory rendered them
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`identical to claim 1. Wirtgen offers no rebuttal to Dr. Smith’s analysis, including any explanation
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`for how differences between claim 5 of the ’788 patent and claim 1 of the ’395 patent would
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`overcome the prior art that invalidated the latter claim—the crux of the collateral estoppel defense.
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`Failing all substantive grounds, Wirtgen argues procedure alone, claiming: (1) Caterpillar
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`should have moved for JMOL of non-infringement of ’788 patent claim 5; and (2) Dr. Smith’s
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`analysis is untimely. As to the first ground, Caterpillar did move for JMOL of non-infringement
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`because Wirtgen cannot simultaneously argue that selecting and setting a replacement sensor prior
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`to effecting a sensor swap meets “pre-select” and “pre-set” limitations for infringement but not for
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`invalidity. See D.I. 381 at 12-13. As to the second ground, Dr. Smith’s analysis is not untimely
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`for the reasons explained in Caterpillar’s opposition to Wirtgen’s Motion to Strike. D.I. 388.
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`Accordingly, collateral estoppel bars Wirtgen’s assertion of claim 5 of the ’788 patent.
`
`10
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`Case 1:17-cv-00770-JDW Document 399 Filed 05/31/24 Page 16 of 16 PageID #: 36449
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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 31, 2024
`11539404/11898.00005
`
`11
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