Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 1 of 32 PageID #: 37952
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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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`CATERPILLAR INC.,
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`C.A. No. 17-770-JDW
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`
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`Defendant/Counterclaim-Plaintiff.
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`
`WIRTGEN AMERICA’S OPPOSITION TO
`CATERPILLAR INC.’S RENEWED MOTION FOR JUDGMENT
`AS A MATTER OF LAW, OR ALTERNATIVELY, MOTION FOR NEW TRIAL
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`i
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 2 of 32 PageID #: 37953
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`
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`TABLE OF CONTENTS
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`I.
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`Evidence Supports the Jury’s Verdict of Infringement ....................................................... 1
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`A.
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`’641 Patent: Substantial Evidence of Induced Infringement of Claim
`11............................................................................................................................. 1
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`1.
`
`2.
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`Direct Infringement by Users ...................................................................... 3
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`Inducement .................................................................................................. 4
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`B.
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`’788 Patent: Substantial Evidence of Infringement of Claim 5 .............................. 5
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`1.
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`2.
`
`3.
`
`The Accused Products “Pre-Set” an Operating Parameter ......................... 5
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`The Accused Products Have a “Switchover Device” ................................. 6
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`The Accused Products Display a “Current Actual Value” ......................... 7
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`C.
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`D.
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`E.
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`’972 Patent: Substantial Evidence of Infringement of Claim 12 ............................ 8
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`’309 Patent: Substantial Evidence of Infringement of Claim 29 ............................ 9
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`’530 Patent: Substantial Evidence of Infringement of Claims 5 and 22 ............... 11
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`II.
`
`The ’641, ’972, and ’788 Patents Are Not Invalid ............................................................ 12
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`B.
`
`C.
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`’972 Patent: Claim 13 Was Not Invalidated by Caterpillar’s PM565 .................. 14
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`’788 Patent: Claim 5 Is Not Obvious in View of PM465 and Davis .................... 15
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`III.
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`The Court Should Not Overturn the Jury’s Verdicts or Grant a New Trial On
`Willfulness ........................................................................................................................ 16
`
`A.
`
`Substantial Evidence of Willfulness ..................................................................... 16
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`1.
`
`2.
`
`3.
`
`’641 Patent (Claim 11) .............................................................................. 17
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`’788 Patent (Claim 5) and ’972 Patent (Claim 12) ................................... 18
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`’309 Patent (Claim 29) and ’530 Patent (Claims 5 and 22) ...................... 19
`
`B.
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`Caterpillar Is Not Entitled to a New Trial on Willfulness .................................... 19
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`1.
`
`2.
`
`Wirtgen’s Statements About the ITC Record ........................................... 19
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`Other Evidentiary Issues ........................................................................... 20
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`IV. Wirtgen Presented a Legally Cognizable Damages Theory ............................................. 21
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`ii
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 3 of 32 PageID #: 37954
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`A. Wirtgen’s Alleged “Leeway” and “Goalposts” Are Inapposite ............................ 22
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`B. Wirtgen Met the Apportionment Requirement ..................................................... 23
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`1.
`
`2.
`
`Dr. Seth’s FPCA Values Non-Infringing Features ................................... 24
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`Dr. Seth’s Modified Rubinstein Model Apportions Out Unpatented
`Features ..................................................................................................... 24
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`C.
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`Damages Should Not Be Zero .............................................................................. 25
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`V.
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`Conclusion ........................................................................................................................ 25
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`iii
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 4 of 32 PageID #: 37955
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`AlterWan v. Amazon.com, Inc.,
`63 F.4th 18 (Fed. Cir. 2023) ......................................................................................................7
`
`Apple Inc. v. Samsung Elecs. Co., Ltd.,
`258 F. Supp. 3d 1013 (N.D. Cal. 2017) ...................................................................................18
`
`AstraZeneca LP v. Apotex, Inc.,
`633 F.3d 1042 (Fed. Cir. 2010)..................................................................................................4
`
`Caterpillar Prodotti Stradali S.R.L. v. Int’l Trade Comm’n,
`847 F. App’x 893 (Fed. Cir. 2021) ..................................................................................2, 5, 17
`
`Content Guard Holdings, Inc. v. Amazon.com, Inc.,
`No. 2:13-cv-1112-JRG, 2015 WL 11089749 (E.D. Tex. Aug. 6, 2015) .................................25
`
`Contour IP Holding, LLC v. GoPro, Inc.,
`No. 3:17-cv-047380-WHO, 2021 WL 75666 (N.D. Cal. Jan. 8, 2021) ...................................25
`
`CR Bard Inc. v. AngioDynamics, Inc.,
`979 F.3d 1372 (Fed. Cir. 2020)..............................................................................................1, 4
`
`Deere & Co. v. AGCO Corp.,
`659 F. Supp. 3d 418 (D. Del. 2023) .........................................................................................12
`
`Evolved Wireless, LLC v. Apple Inc.,
`2019 WL 1178517 (D. Del. Mar. 13, 2019) ............................................................................24
`
`Fireman’s Fund Ins. Co. v. Videfreeze Corp.,
`540 F.2d 1171 (3d Cir. 1976)...................................................................................................12
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288 (Fed. Cir. 2009)................................................................................................15
`
`Hewlett-Packard Co. v. Mustek Sys., Inc.,
`340 F.3d 1314 (Fed. Cir. 2003)..............................................................................................6, 8
`
`Intel Corp. v. Future Link Sys., LLC,
`No. 14-377-LPS, 2017 WL 2482881 (D.Del. June 1, 2017) ...................................................24
`
`Janssen Pharms., Inc. v. Mylan Lab’ys Ltd.,
`No. 20-cv-13103 (EP) (LDW), 2023 WL 3605733 (D.N.J. May 23, 2023) ..............................4
`
`Juicy Whip, Inc. v. Orange Bang, Inc.,
`292 F.3d 728 (Fed. Cir. 2002)..................................................................................................13
`
`iv
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`

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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 5 of 32 PageID #: 37956
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`
`
`Konstantopoulos v. Westvaco Corp.,
`112 F.3d 710 (3d Cir. 1997).....................................................................................................25
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009)..................................................................................................2
`
`Philips Elecs. North Am. Corp. v. Contec Corp.,
`411 F. Supp. 2d 470 (D. Del. 2006) .......................................................................................1, 4
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`843 F.3d 1315 (Fed. Cir. 2016)..............................................................................................1, 4
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993)......................................................................................................9
`
`SRI Int’l, Inc. v. Cisco Sys., Inc.,
`14 F.4th 1323 (Fed. Cir. 2021) ................................................................................................19
`
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012)..................................................................................................2
`
`TransWeb, LLC v. 3M Innovative Props. Co.,
`812 F.3d 1295 (Fed. Cir. 2016)................................................................................................14
`
`Wirtgen Am., Inc. v. Caterpillar, Inc.,
`No. 1:17-cv-00770-JDW, 2024 WL 531234 (D. Del. Feb. 9, 2024) .......................................22
`
`ZF Meritor, LLC v. Eaton Corp.,
`696 F.3d 254 (3d Cir. 2012).....................................................................................................25
`
`Statutes
`
`35 U.S.C. § 284 ..............................................................................................................................25
`
`Other Authorities
`
`FRCP 50 ...................................................................................................................................12, 24
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`v
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 6 of 32 PageID #: 37957
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`Caterpillar asks the Court to overturn every single jury finding against it without
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`identifying any error of law or defect in the trial. D.I. 381 (“Mot.”) at 1. Caterpillar is simply
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`dissatisfied with the result of its full and fair trial on the issues. That is not a basis for disturbing
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`a jury verdict. Caterpillar’s motion should be denied in its entirety.
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`I.
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`Evidence Supports the Jury’s Verdict of Infringement
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`Caterpillar presses the same non-infringement arguments that have already failed
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`multiple times. For three of the asserted patents (the ’641, ’309, and ’530 patents) Caterpillar
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`suggests that “no reasonable jury” could have come to the same conclusion that the U.S.
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`International Trade Commission and Federal Circuit have already reached. In support,
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`Caterpillar cites its own evidence of non-infringement—which the jury was free to reject—and
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`simply ignores the substantial evidence of infringement that the jury found persuasive. The Court
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`should not disturb the jury’s well-supported verdict.
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`A.
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`’641 Patent: Substantial Evidence of Induced Infringement of Claim 11
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`Caterpillar rehashes the same legally flawed strawman that failed at summary judgment
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`and trial—that, to show infringement, Wirtgen needs to present direct evidence that a particular
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`customer actually used the reverse shut-off feature. The law does not require such a showing.
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`See, e.g., Philips Elecs. North Am. Corp. v. Contec Corp., 411 F. Supp. 2d 470, 474 (D. Del.
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`2006) (granting judgment of indirect infringement based on customer direct infringement where
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`the product was programmed to perform the claimed method “sometimes,” even though the
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`plaintiff “cannot show that any customer actually used the patented method”); see also C R Bard
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`Inc. v. AngioDynamics, Inc., 979 F.3d 1372, 1379 (“[E]ven if [the patentee] did not present direct
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`evidence of specific instances in which an entity performed each of the claimed steps of the []
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`patent, there was sufficient circumstantial evidence in the record to support [defendant’s]
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`induced infringement of the method claims.”) (Fed. Cir. 2020); Power Integrations, Inc. v.
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`1
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 7 of 32 PageID #: 37958
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`
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`Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315, 1335 (Fed. Cir. 2016) (finding sufficient
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`“circumstantial evidence of inducement (e.g., advertisements, user manuals) directed to a class of
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`direct infringers (e.g., customers, end users) without requiring hard proof that any individual
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`third-party direct infringer was actually persuaded to infringe by that material”); Toshiba Corp.
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`v. Imation Corp., 681 F.3d 1358, 1365 (Fed. Cir. 2012) (“where an alleged infringer designs a
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`product for use in an infringing way and instructs users to use the product in an infringing way,
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`there is sufficient evidence for a jury to find direct infringement,” even if there is also a non-
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`infringing use); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (affirming
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`infringement verdict supported by evidence of sales, expert opinion that end-users likely
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`performed the method, and instructions on how to use a product in the accused way).
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`Here, ample circumstantial evidence supports direct infringement and inducement.
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`Caterpillar’s own fact witness admitted that users drive backwards with the milling drum turned
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`on, and Caterpillar’s counsel confirmed that “[t]here is no dispute.” See Tr. 404:14–21
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`(confirming that Caterpillar expects that customers drive backward with the rotor on), 704:13–
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`20, 397:4–8, 1142:25–1143:2 (confirming no dispute on this fact). And Caterpillar’s fact witness
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`admitted that the reverse shut off feature was not an optional feature that could be disabled—this
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`feature was always enabled when driving backwards with the drum turned on. See Tr. 396:24–
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`397:3. Wirtgen’s expert opined that doing so practices every limitation of the claimed method
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`because Caterpillar’s functionality is utilized in an automatic feature that cannot be disabled. Tr.
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`396:24–397:8, 693:9–25, 694:17–695:13, 705:7–13. As the ITC and Federal Circuit have already
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`confirmed when presented with similar evidence, a preponderance of evidence shows that
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`Caterpillar intended and directed end-users of its PM300, PM600, and PM800 series machines to
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`perform the method recited in claim 11 of the ’641 patent. See Caterpillar Prodotti Stradali
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`2
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`

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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 8 of 32 PageID #: 37959
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`S.R.L. v. Int’l Trade Comm’n, 847 F. App’x 893, 895 (Fed. Cir. 2021). The jury was entitled to
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`credit Wirtgen’s trial evidence and reach the same conclusion as these other tribunals.
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`1.
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`Direct Infringement by Users
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` Caterpillar’s merits argument against direct infringement, Mot. at 2–3, has now been
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`rejected by five arbiters: an ITC ALJ, the Commission itself, the Federal Circuit, this Court
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`during summary judgment, and the jury in this case. Specifically, Caterpillar asserts that its
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`machines do not satisfy the “pre-determined distance” limitation because its machines do not
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`“actually determine the distance between the milling drum and the ground.” Id. Caterpillar reads
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`a limitation into the claims that is not there. There is no requirement that the machines directly
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`measure the distance between the milling drum and the ground. Indeed, the patent specification,
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`the ITC, and Caterpillar’s own expert all agree that the patented method covers indirect
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`monitoring of the pre-determined distance. ’641 Patent at 6:5–10; Tr. 395:6–396:10, 679:1–
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`681:6, 1159:4–6. Caterpillar’s chief engineer and its technical expert both admitted that the
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`accused machines indirectly monitor a pre-determined distance by measuring the height of the
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`moldboard and sideplates, and turning off the rotor when the moldboard or sideplates are raised
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`by more than 50 mm. Tr. 395:6–396:23, 1159:21–1161:23. It is no “mystery” that rotor exposure
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`is a proxy for the distance between the milling drum and the ground, or that 50 mm is a
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`pre-determined distance that triggers rotor shutoff in Caterpillar’s machines. Contra Mot. at 2–3.
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`Caterpillar’s own technical documents show that this is the very purpose of the reverse travel
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`shutoff feature: to “detect[] a condition where the rotor could come in contact with a surface
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`while the machine is traveling in reverse.” Ex. 368.0360 (emphasis added). The “surface” this
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`document is referring to is plainly the ground.
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`Caterpillar’s own case law belies its non-infringement position. Specifically, Caterpillar
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`cites ePlus, Inc. v. Lawson Software, Inc., for the proposition that, as a matter of law,
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`3
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 9 of 32 PageID #: 37960
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`infringement of a method claim cannot be proven merely by showing that a product is “capable
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`of infringing.” Mot. at 2 (citing 700 F.3d 509, 521 (Fed. Cir. 2012)). However, in ePlus the court
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`did find infringement of a claim involving a “determining” step, where the step was performed
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`automatically in the infringing modules. ePlus, 700 F.3d at 520-21. The circumstances in which
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`the court found infringement thus mirror the circumstances of this case, as Wirtgen put forth
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`sufficient evidence that Caterpillar’s customers operated the accused machines in reverse,
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`thereby automatically employing the infringing functionality. See, e.g., Tr. 396:24–397:8.
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`2.
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`Inducement
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`Caterpillar induces its customers to infringe by incorporating the claimed method as an
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`automatic feature in its machines and instructing its customers on how that feature works. Tr.
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`693:9–25, 694:17–695:13, 699:15–700:12, 705:22–706:5 (Meyer); Tr. 396:24–397:3
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`(Engelmann). In its motion, Caterpillar observes that it also instructs its customers to raise the
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`machine while driving in reverse, in order to avoid obstacles that would otherwise trigger the
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`reverse-shutoff feature. Mot. at 3–4. But that instruction as to one (allegedly non-infringing)
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`mode of use does not erase the instruction as to other (infringing) modes of use. There is no
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`dispute that the reverse shutoff feature will engage if a customer does not raise the machine
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`enough to clear an obstacle exposed to the milling drum and that Caterpillar instructs its
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`customers accordingly.
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`The law is clear that making and selling a device that will automatically infringe when
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`operated as designed and intended (even if only “sometimes”) constitutes inducement. Philips,
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`411 F. Supp. 2d at 474; see also C R Bard, 979 F.3d at 1379; Power Integrations, 843 F.3d at
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`1335. Additionally, courts have repeatedly held that instructions to customers that result in
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`infringement (even if the infringing use is not the preferred use) induce infringement. See, e.g.,
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`AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1060 (Fed. Cir. 2010); Janssen Pharms., Inc. v.
`
`4
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 10 of 32 PageID #: 37961
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`Mylan Lab’ys Ltd., No. 20-cv-13103 (EP) (LDW), 2023 WL 3605733, at *17 (D.N.J. May 23,
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`2023) (finding that drug label induced infringement of claims that required reinitiating therapy
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`after a missed dose where the label “discourage[d] missed doses, but d[id] not discourage or
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`make optional the practice of the [claims] in the inevitable situation that doses are missed”).
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`Caterpillar’s arguments to the contrary, Mot. at 3–4, echo those already rejected by the Federal
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`Circuit. See Caterpillar, 847 F. App’x at 899 (observing that “Wirtgen expressly alleged
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`knowledge sufficient for induced infringement”). Caterpillar provides no reason why the jury, as
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`a matter of law, could not come to the same conclusion as the Federal Circuit on this issue.
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`B.
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`’788 Patent: Substantial Evidence of Infringement of Claim 5
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`Caterpillar’s arguments against infringement for claim 5 also read into the claim
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`limitations that are not there. This Court already rejected these attempts to read limitations into
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`the claims during the Markman phase. The Court should not re-construe the claims and introduce
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`this error now.
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`1.
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`The Accused Products “Pre-Set” an Operating Parameter
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`Claim 5 does not require a third screen to pre-set an operating parameter. Contra Mot. at
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`5–6 (arguing that Caterpillar’s interface has no third screen). That the specification illustrates a
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`screen for pre-setting an operating parameter does not disavow other embodiments of the claim
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`language. The evidence at trial made clear that Caterpillar’s controller sets the target value of an
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`operator-selected sensor before completing the actual sensor swap (the final step effecting the
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`switchover in Caterpillar’s hot swap process). Tr. 769:15–771:4, 774:16–775:8 (Valerdi); id. at
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`862:9–863:2 (Rahn). Specifically, Wirtgen presented a flow chart that both parties agreed
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`accurately represented the operation of the accused software. See Ex. 264A; Tr. 763:14–764:8.
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`Wirtgen and Caterpillar identified different locations on the flow chart that each contended
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`served as the switchover point. The jury was free to weigh these competing facts. Additionally,
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`5
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 11 of 32 PageID #: 37962
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`Wirtgen presented unrebutted evidence that the benching function (setting step) occurs just
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`before the control actually switches over (the last step of the flow chart). Tr. 770:12–24, 774:16–
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`775:18. Thus, the benching is pre-setting because the target value is set before completing the
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`switchover. Id. The jury rightly credited Wirtgen’s expert testimony that this setting step satisfies
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`the claim language. Caterpillar’s mischaracterization that Dr. Valerdi confirmed a replacement
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`sensor’s operating parameter is not pre-set “prior to” effecting the switchover (but is instead set
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`after the user initiated switchover) is belied by the record. Contra Mot. at 5–6. The Court should
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`not disturb that verdict based on Caterpillar’s erroneous new claim construction of “pre-set.”
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`2.
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`The Accused Products Have a “Switchover Device”
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`Claim 5’s recitation of a “switchover device” does not require a single digital switch.
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`Contra Mot. at 6. The claim’s use of “comprising” covers the multiple components (here,
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`Caterpillar’s sequential icons) constituting the switchover device. See Tr. 817:16–818:10 (Rahn).
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`Wirtgen’s expert, Dr. Rahn, personally inspected an accused machine during a sensor swap. Tr.
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`807:8–19. He presented the jury with a video from that inspection, see Tr. 808:3–12; Ex. 2922A
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`( showing an operator pressing the display buttons to swap the sensors). Tr. 810:23–811:22. Dr.
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`Rahn testified consistently on cross-examination. Tr. 861:20–862:8; Ex. 726.0022–24
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`(confirming that display buttons are used to swap sensors).
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`Caterpillar’s arguments to the contrary attempt to rewrite the claim language to carve out
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`its infringing product. Specifically, Caterpillar tries to adopt a new interpretation of the term
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`“switch,” that differs from the plain language of the claims. These efforts are too little, too late.
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`See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1321 (Fed. Cir. 2003) (“[I]t is too
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`late at the JMOL stage to argue for or adopt a new and more detailed interpretation of the claim
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`language and test the jury verdict by that new and more detailed interpretation.”). Dr. Rahn
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`6
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 12 of 32 PageID #: 37963
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`
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`testified that Caterpillar’s machines satisfied the limitation according to how a skilled artisan
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`would understand the claim language. The jury was entitled to credit that testimony.
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`3.
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`The Accused Products Display a “Current Actual Value”
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`Caterpillar’s argument that conventional signal processing precludes them from ever
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`displaying an “actual value” abuses the claim language, ignores the expert testimony, and defies
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`logic. Mot. at 6–7. The evidence at trial made clear that Caterpillar’s indication and setting
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`device displayed “actual values.” Tr. 804:25–805:13 (opining that the displayed values were
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`actual values), 869:2–5 (explaining that processing time and uncertainty did not change that the
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`values on the operator’s screen were actual values). Indeed, Caterpillar’s own manual describes
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`the values shown on the indication and setting device as “the measured value of the currently
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`selected sensor.” Ex. 726.0017. Dr. Rahn explains that this measured value is a current actual
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`value. Tr. 816:16–25. The jury was entitled to credit this evidence.
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`Caterpillar’s argument that the values are not actual because they are the product of
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`signal processing that takes “time” to calculate, Mot. at 7, is purposefully obtuse. It is common
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`knowledge that the “time” it takes a computer to perform calculations is milliseconds. There is
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`no evidence that anyone in the art would consider the display of current values not to be actual
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`current values due to computer processing time. Indeed, Caterpillar’s own expert (Dr. Smith)
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`never testified that the current actual value limitation was not satisfied. That signal processing is
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`complex and takes a nominal time is entirely attorney argument. Cf. AlterWan, Inc. v.
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`Amazon.com, Inc., 63 F.4th 18, 23–24 (Fed. Cir. 2023) (rejecting interpretation of claim that
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`“require[d] the impossible” and emphasizing the importance of “common sense in claim
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`construction”). Caterpillar’s JMOL position on this term thus has no supporting evidence.
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`The Court rightly rejected the previous incarnation of Caterpillar’s argument during
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`claim construction. See, e.g., Markman Tr. 65:18–68:23 (arguing that the potential for erratic
`
`7
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`

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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 13 of 32 PageID #: 37964
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`
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`alteration precluded the display of current actual values in Caterpillar’s machines). The jury was
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`likewise entitled to reject Caterpillar’s attempt to resurrect the argument for trial by misdirecting
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`focus to the processing delay of the sensors. There is no reason the Court should reverse course
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`now and overturn the jury verdict, where ample evidence supports infringement of the “current
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`actual values” limitation as construed, and nothing but attorney argument contradicts it.
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`C.
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`’972 Patent: Substantial Evidence of Infringement of Claim 12
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`Caterpillar’s suggestion that its machines do not “automatically” establish a parallel
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`orientation because an operator needs to calibrate the machine prior to operation adopts an overly
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`narrow construction of the word “automatically” and ignores the reality of the technology at
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`issue. Mot. at 7–8. Machine pre-calibration is a standard part of operation. Just as an operator
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`must turn the machine on before it performs any of its processes, the need for calibration does
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`nothing to make the automatic operations that follow any less automatic.1 Indeed, that is why
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`Caterpillar’s own manuals describe the grade and slope system as “automatically” adjusting the
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`heights of the legs. See Ex. 354.0034 (“automatically adjust the height of the rear legs”); see also
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`Ex. 726.0037; Ex. 631.0001 (“Rear Leg Auto States”) (emphasis added); Tr. 370:18–23
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`(describing “automatic four leg leveling”). The evidence before the jury demonstrated this
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`limitation is met. See Tr. 373:1–3, 562:3–8 (Steffen), 604:10–14 (Lumkes).
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`Caterpillar’s reliance on Hewlett-Packard is ironic. See Mot. at 8 (citing 340 F.3d 1314,
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`1321 (Fed. Cir. 2003)). As quoted above, the Court in that case held that it is too late at the
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`JMOL stage to argue for a new interpretation of the claim language and challenge the jury
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`verdict on that basis. See Hewlett-Packard, 340 F.3d at 1321. That is exactly what Caterpillar is
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`1 Caterpillar’s misleading reference to the definition of “automatic” in its footnote refers to a
`different patent and is irrelevant to the context of the present dispute. Mot. at 8 n.1 (citing Tr. at
`693:20–23). Caterpillar’s citation to Markman orders construing “automatic” from unrelated
`cases, Mot. at 8 n.1, is similarly unavailing.
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`8
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 14 of 32 PageID #: 37965
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`
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`attempting to do here: namely, redefine the word “automatically” in a very specific way, and
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`then argue based on that overly narrow definition that the jury verdict is unsupported. The jury
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`heard substantial evidence that the machines infringe under the plain meaning of
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`“automatically.” No more is required.
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`Caterpillar’s suggestion that its machines do not know the orientation of the machine
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`frame relative to the ground is similarly flawed. Mot. at 8–9. It discounts any machine
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`“knowledge” that is discerned, in part, from pre-calibration—based solely on the attorney
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`argument that operator failure to correctly pre-calibrate the machine would prevent it from
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`orienting. But the trivial observation that user error might cause a machine not to operate
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`correctly (and thereby fail to satisfy the claim) does not defeat infringement based on the proper
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`and standard operation of the device. It is not a reason to disturb the jury verdict.
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`D.
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`’309 Patent: Substantial Evidence of Infringement of Claim 29
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`Wirtgen has never contended for infringement purposes that the claimed four-sided
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`stability pattern is “inherent.” Contra Mot. at 9–10 (misrepresenting Wirtgen’s position as based
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`on inherency). To the contrary, Wirtgen has always maintained that four-sided stability patterns
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`are not inherent (as it did before the Patent Office). Moreover, the inherency issue that Wirtgen
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`and Caterpillar litigated before the Patent Office arose in the context of anticipation, which has
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`nothing to do with the legal standard for infringement. See, e.g., In re Rijckaert, 9 F.3d 1531,
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`1534 (Fed. Cir. 1993) (explaining the legal standard for inherent anticipation).
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`Accordingly, Wirtgen introduced evidence at trial that Caterpillar’s machines actually
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`have a four-sided stability pattern when ride control is engaged, and that the widest transverse
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`dimension of that pattern falls within the required rotor footprint. See Tr. 648:22–649:5
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`(explaining and showing the CAD drawings that confirm Caterpillar’s stability pattern and its
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`dimensions). Specifically, Dr. Lumkes explained his conclusion that Caterpillar’s machines have
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`9
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`Case 1:17-cv-00770-JDW Document 406 Filed 06/07/24 Page 15 of 32 PageID #: 37966
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`a four-sided stability pattern, and the location of the widest transverse dimension, due to certain
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`undisputed features. See Tr. 596:12–16 (“From [a detailed CAD drawing], I was able to
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`determine the stability pattern, it has to occur at the midpoints of the legs, since all the cylinders
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`are equal value, one goes up and one goes down, it’s going to pivot and that is going to cause
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`that pivot point to be in the middle of those legs.”); see also id. at 592:5–593:8. Wirtgen did not
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`rely on any theory of inherency to meet its claim limitations in the context of infringement.
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`Caterpillar further complains that Wirtgen’s evidence of infringement did not include
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`Caterpillar’s preferred tests and measurements, Mot. at 10, but there is no evidence that these
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`tests are even related to a four-sided stability pattern, much less necessary to identify one. The
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`jury was entitled to credit Wirtgen’s expert that such tests were not necessary, the evidence
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`presented was the best evidence of this limitation, and that evidence was sufficient to support his
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`conclusion. See Ex. 391A (annotating a CAD drawing with scale and measurements to show how
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`Caterpillar’s machines satisfy the limitation); Tr. 644:25–645:8, 645:25–646:4 (explaining the
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`evidence relied upon in support of Dr. Lumkes’s infringement opinion).
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`The evidence of record is, in fact, more than sufficient because Caterpillar did not dispute
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`that its machines actually have a four-sided stability pattern during the relevant operations—in
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`fact, during deposition, Caterpillar’s expert admitted the accused products would have a four-
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`sided stability pattern when the ride control feature was turned on. See Rakow Dep. Tr. 145:16–
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`146:4. Indeed, Caterpillar indicated to the Court that its expert would testify on non-infringement
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`of the ’309 patent at trial, but ultimately did not offer any witness on this issue. Compare D.I.
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`299, Joint Proposed Pretrial Order Ex. 3B (noting that Caterpillar intended to call Dr. Rakow live
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`and that infringement of the ’309 patent implicated contested issues of fact) with Tr. 2122:15–22
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`(noting that Caterpillar did not put forward an expert on non-infringement of the ’309 patent).
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`Wirtgen’s evidence of infringement was therefore unrebutted.
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`10
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`E.
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`’530 Patent: Substantial Evidence of Infringement of Claims 5 and 22
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`Substantial evidence establishes that the sensor head, rod, and magnet of the
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`magnetostrictive sensors in Caterpillar’s lifting columns constitute the claimed “sensor,” and that
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`they have the coupling and functionality required by claims 5 and 22. See, e.g., Tr. 386:1–24,
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`552:18–553:3 (Engelmann), 621:16–23 (Lumkes), 631:17–23, 633:1–8. Despite acknowledging
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`Wirtgen’s evidence, Caterpillar states that its preferred “evidence is to the contrary.” Mot. at 10–
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`11. The Court has already weighed in on this exact issue at the trial and ruled that it was for the
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`jury to decide. See Tr. 1937:24–1938:7 (“[W]hether the sensor is the rod detecting the magnet or
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`whether it’s the rod and magnet together[,] I think the jury can make that decision.”). The jury
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`has now made that decision.