Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 1 of 23 PageID #: 38054
`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 1 of 23 PagelD #: 38054
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 2 of 23 PageID #: 38055
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`CONFIDENTIAL
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`October 14, 2020
`
`JAMES R. BARNEY
`202.408.4412
`james.barney@finnegan.com
`
`
`Alaina van Horn Via EMAIL & OVERNIGHT MAIL
`Regulations and Rulings, Office of Trade
`U.S. Customs and Border Protection
`90 K Street, NE, 10th Floor
`Washington, DC 20229-1177
`
`Sarah Hamblin
`Attorney-Advisor, Intellectual Property Rights Branch
`Regulations and Rulings, Office of Trade
`U.S. Customs and Border Protection
`90 K Street, NE, 10th Floor
`Washington, DC 20229-1177
`
`Jessica Wu
`Attorney-Advisor, Exclusion Order Enforcement Branch
`Regulations and Rulings, Office of Trade
`U.S. Customs and Border Protection
`90 K Street, NE, 10th Floor
`Washington, DC 20229-1177
`
`
`
`
`
`
`
`Re:
`
`In the Matter of Certain Road Milling Machines and Components
`Thereof, USITC Inv. No. 337-TA-1067: Request by Caterpillar for
`Ruling that the 2020 PM600 and PM800 Updated Machines Are Not
`Covered by the Limited Exclusion Order
`Dear Ms. van Horn, Ms. Hamblin and Ms. Wu:
`
`We are counsel for Caterpillar Prodotti Stradali S.r.l., Caterpillar Americas CV,
`Caterpillar Paving Products Inc. and Caterpillar Inc., the respondents in U.S. International Trade
`Commission Investigation 337-TA-1067 (“the 1067 Investigation”). The 1067 Investigation was
`a patent dispute between Caterpillar and Wirtgen America, Inc. (a subsidiary of a German-based
`parent company) involving road-milling machines that Caterpillar had been manufacturing in
`Italy. On July 18, 2019, the Commission issued a limited exclusion order (“LEO”) and two
`cease-and-desist orders regarding a small subset of patent claims from two of the five patents
`
`901 NEW YORK AVENUE, NW | WASHINGTON, DC 20001- 4413
`PHONE: +1 202 408 4000 | FAX: +1 202 408 4400
`
`
`
`

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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 3 of 23 PageID #: 38056
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 2
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`Wirtgen asserted at the ITC.1 Under these orders, Customs and Border Protection (“Customs”)
`was required to exclude Caterpillar’s PM600 and PM800 cold planer machines from importation
`into the United States. Wirtgen also accused Caterpillar’s PM300 cold planer of infringing in the
`1067 Investigation but did not prevail; thus, no remedial order issued precluding that machine
`from importation.
`
`Caterpillar has since updated its PM600 and PM800 machines (called the “2020 PM600
`and PM800 Updated Machines,” or “Updated Machines”) such that they no longer have the
`features the Commission found to infringe. Specifically, regarding claims 2, 5, 16, and 23 of the
`’530 patent, the Updated Machines now use prior art designs (e.g., proximity switches) that
`Wirtgen specifically distinguished during prosecution as not practicing the claims. Regarding
`claim 29 of the ’309 patent, the accused feature (“ride control”) has been removed from the
`Updated Machines altogether.
`
`Accordingly, Caterpillar submits this letter under 19 C.F.R. § 177.1 et seq., requesting a
`ruling that: (1) Caterpillar’s 2020 PM600 and PM800 Updated Machines do not infringe claims
`2, 5, 16, and 23 of the ’530 patent (Ex. 1) or claim 29 of the ’309 patent (Ex. 2); and (2)
`prospective imports of these new machines would, therefore not violate the LEO. Under 19
`C.F.R. § 177.2(d), Caterpillar requests immediate consideration of this request because the LEO
`fails to specifically differentiate between infringing products and those that are clearly outside
`the scope of the LEO.
`
`I.
`
`PROCEDURAL HISTORY
`
`A.
`
`The 1067 Investigation
`
`The 1067 Investigation began with Wirtgen asserting over 100 claims from five different
`patents against three different types of Caterpillar road milling machines (PM600 Series, PM800
`Series, and PM300 Series). Compl. at 1-2 (July 19, 2017), EDIS Doc. ID 617566. Wirtgen
`terminated the ’628 patent from the Investigation after Caterpillar uncovered clear evidence of
`inequitable conduct and notified Wirtgen that it would pursue a claim of inequitable conduct and
`take other actions regarding Wirtgen’s assertion of knowingly invalid claims.
`
`The Administrative Law Judge (“ALJ”) issued an Initial Determination on October 1,
`2018, finding no violation for the ’641 and ’340 patents. Initial Determination (Oct. 1, 2018),
`EDIS Doc. ID 657333 (“ID”). The ALJ did find a violation, however, for claims 29 and 36 of
`the ’309 patent and claims 2, 5, 16, and 23 of the ’530 patent, but only for the PM600 and
`PM800 Series machines, and only on direct infringement grounds. The PM300 machines were
`not in violation because Wirtgen never asserted the ’309 or the ’530 patents against them. The
`
`1 The asserted patents were U.S. Patent No. 9,644,340 (“the ’340 patent”); U.S. Patent
`No. 9,565,530 (“the ’530 patent”); U.S. Patent No. 7,530,641 (“the ’641 patent”); U.S. Patent
`No. 7,828,309 (“the ’309 patent”); and, U.S. Patent No. 9,624,628 (“the ’628 patent”). The
`Commission’s remedial orders only cover claims 2, 5, 16, and 23 of the ’530 patent and claim 29
`of the ’309 patent.
`
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 4 of 23 PageID #: 38057
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 3
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`Commission left the ALJ’s findings intact, except for one ruling that reversed the no invalidity
`finding for claim 36 of the ’309 patent. Comm’n Notice (Apr. 17, 2019), EDIS Doc. ID 673303.
`Thus, the infringement findings that Wirtgen ultimately obtained are narrow. They cover only
`claims 2, 5, 16, and 23 of the ’530 patent and claim 29 of the ’309 patent. Several of the
`Commission’s findings were appealed to the U.S. Court of Appeals for the Federal Circuit,
`including all violation findings regarding the ’530 and ’309 patents. Caterpillar Prodotti
`Stradali, S.r.l. v. Wirtgen America, Inc., Appeal Nos. 2019-2445, -1911 (Fed. Cir.). The parties
`have completed briefing in these appeals and are awaiting oral argument.
`
`Notably, Wirtgen only raised its direct infringement allegations for the ’530 patent and
`’309 patent against assembled machines. Complainant’s Pre-Hr’g Br. at 25 (Mar. 30, 2018),
`EDIS Doc. ID 640596; Complainant’s Post-Hr’g Br. at 11 (May 11, 2018), EDIS Doc. ID
`644949. Wirtgen waived any argument that the importation of a particular component for the
`PM600 or PM800 Series infringed any asserted patent. Indeed, based on the record, the ALJ
`held that Wirtgen had “not developed sufficient argument concerning the importation of specific
`components. . . . For example, Wirtgen’s infringement arguments were focused on assembled
`machines rather than a discrete part of a given machine.” Recommended Determination on
`Remedy and Bonding at 7 n.1 (Oct. 15, 2018), EDIS Doc. ID 661391. Wirtgen also waived any
`argument that Caterpillar was liable for induced or contributory infringement of either the ’309
`or ’530 patents.
`
`B.
`
`The 1088 Investigation
`
`After Wirtgen filed its complaint against Caterpillar in the 1067 Investigation, Caterpillar
`filed an ITC complaint against Wirtgen, which resulted in Investigation No. 337-TA-1088 (the
`“1088 Investigation”). In the 1088 Investigation, the Commission found that certain Wirtgen
`road-milling machines infringed a Caterpillar patent and issued a LEO and cease-and-desist
`orders. Comm’n Notice (June 27, 2019) EDIS Doc. No. 679591. Both the Commission and the
`Federal Circuit denied Wirtgen’s subsequent motion to stay these remedial orders. Comm’n
`Notice (Sept. 12, 2019), EDIS Doc. No. 688119; Wirtgen GmbH v. ITC, App. No. 19-2320 (Oct.
`10, 2019), ECF No. 36. In its motion, Wirtgen disclosed its intent to redesign the excluded road
`milling machines, after which the Commission directed Wirtgen to “obtain a timely ruling
`regarding whether its redesign falls within the scope of the remedial order.” Comm’n Notice at 6
`n.8 (Sept. 12, 2019), EDIS Doc. No. 688119 (citing 19 C.F.R. §§ 210.76, 210.79).
`
`Despite the LEO, Wirtgen, without obtaining a ruling regarding its redesign, attempted to
`import excluded, redesigned road-milling machines into the United States. Ex. 3 (Letter from
`Customs to Wirtgen dated Dec. 18, 2020) at 4. In a “courtesy” memorandum and follow-up
`email to Customs, Wirtgen informed Customs that the excluded machines were “already on the
`way” and that Wirtgen did not wish to request an administrative ruling as to the redesign. Id.
`After confirming the scope and continued enforceability of the exclusion order and that Wirtgen
`“ha[d] not presented its redesigned system to the Commission” as directed, Customs denied entry
`of the redesigned machines. Id. at 5–6; Letter from Customs to ITC (Dec. 6, 2019), EDIS Doc.
`No. 699429; Letter from ITC to Customs (Dec. 12, 2019), EDIS Doc. No. 699436.
`
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`

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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 5 of 23 PageID #: 38058
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 4
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`Customs informed Wirtgen that it cannot unilaterally approve its own redesigned
`machine for importation and repeatedly recommended that Wirtgen seek approval for its
`redesigned machine through a 177 request. Ex. 3 at 4 (explaining that on “August 13, 2019, and
`again on August 15, 2019, the IPR Branch offered Wirtgen an opportunity to submit a request for
`an administrative ruling under 19 C.F.R. part 177 to obtain guidance as to whether its redesign
`falls within the scope of the limited exclusion order issued in the 1088 investigation”); id. at 2
`(informing Wirtgen of 177 option yet again on December 18, 2019). Wirtgen refused to initiate
`177 proceedings because it did not want Caterpillar to be able to challenge its redesign. Ex. 4
`(Comm’n Notice, EDIS No. 699593) at 3 (“[W]hen CBP sought to adjudicate pursuant to CBP’s
`authority under 19 CFR part 177, whether the redesigned products infringe, Wirtgen declined to
`consent to an inter partes proceeding in which Caterpillar would be able to be heard, and thus
`declined CBP’s invitation for CBP to issue a ruling under 19 CFR part 177.”). Instead, Wirtgen
`invoked other procedural options where it was not required to involve Caterpillar as a party.
`
`For example, Wirtgen sued Customs in United States District Court for the District of
`Columbia in an unsuccessful attempt to obtain an order forcing Customs to allow Wirtgen’s
`redesigned cold planers into the United States. Wirtgen America, Inc., v. United States, 1:20-cv-
`00195-CRC (D.D.C.). This case was dismissed for lack of subject matter jurisdiction. Id. at
`ECF Doc. No. 44. Wirtgen also sued Customs in the Court of International Trade. Wirtgen
`America, Inc., v. United States, 1:20-cv-00027-JCG (CIT). This case is currently on appeal at
`the Federal Circuit. Wirtgen America, Inc. v. U.S., App. No. 20-2145 (Fed. Cir.). Wirtgen also
`filed a renewed motion to stay the Commission’s remedial orders at the ITC, at which point the
`Commission unilaterally initiated a modification proceeding. Comm’n Notice (Jan. 16, 2020),
`EDIS Doc. No. 699503.
`
`Rather than engage in backhanded procedural gamesmanship like Wirtgen, Caterpillar
`submits this 177 request for approval of its Updated Machines before importation. Caterpillar
`seeks expedient approval of these machines so it can begin importation.
`
`II.
`
`PARTIES AND COUNSEL
`
`Respondents in this 177 request are Caterpillar Prodotti Stradali S.r.l., Caterpillar
`Americas CV, Caterpillar Paving Products Inc. and Caterpillar Inc. Caterpillar is represented by
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP and can be reached through the
`following counsel:
`• James R. Barney - james.barney@finnegan.com / (202) 408-4412
`• Mareesa A. Frederick - mareesa.frederick@finnegan.com / (202) 408-4383
`• David K. Mroz - david.mroz@finnegan.com / (202) 408-4022
`
`Complainant is Wirtgen America, Inc. Wirtgen is represented by Sterne, Kessler,
`Goldstein & Fox P.L.L.C. and Patterson Intellectual Property Law, P.C. and can be reached
`through the following counsel:
`
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`
`
`

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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 6 of 23 PageID #: 38059
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 5
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`• Daniel E. Yonan - dyonan@sternekessler.com / (202) 772-8899
`• Ryan D. Levy - rdl@iplawgroup.com / (615) 242-2400
`
`
`III. ASSERTED CLAIMS AND ACCUSED PRODUCTS
`
`Below is a table summarizing the asserted claims and the accused products.
`
`Products
`PM600 and 800
`Series Cold Planers
`
`Patent Asserted Claims
`’530
`2, 5, 16, 23
`’309
`29
`
`
`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`Facts Relevant to the ’530 Patent and the Updated Machines’
`Proximity and Inclination Sensors
`
`1.
`
`The ’530 Patent’s Specification and Claims
`
`The ’530 patent (Ex. 1) describes using “lifting position sensors” on an otherwise
`conventional road-milling machine to monitor the vertical height of the machine’s legs, also
`referred to as lifting columns. As the specification explains, “[t]he invention provides in an
`advantageous manner that each individual height-adjustable lifting column is provided with a
`measuring device for measuring the current lifting state of the lifting column.” Ex. 1, 2:24-27.
`The lifting position sensors help determine the vertical position of the machine by measuring
`how much the piston cylinder inside a lifting column extends and retracts. Id., 2:24-43. Once a
`sensor produces a signal indicating the current leg position, this information is provided to an
`indicator device and/or a controller. Id., 2:44-58.
`
`Annotated Figure 3 illustrates an individual lifting column 14 with an internal hydraulic
`piston cylinder 16, a wire-rope sensor 21 (i.e., the “lifting position sensor”), an indicator device
`20, and a controller 23.
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`

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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 7 of 23 PageID #: 38060
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 6
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`Id., Fig. 3 (annotated). As shown, wire-rope sensor 21 is connected to the upper hollow lifting
`column cylinder 13 on one end, and to the lower hollow lifting column cylinder 15 on the other
`end. Id., 6:25-37. Like the wire-rope sensor 21, the internal hydraulic piston cylinder 16 is also
`connected to the upper hollow lifting column cylinder 13 on one end, and to the lower hollow
`lifting column cylinder 15 on the other end. Id., Fig. 3. Under this design, as the internal
`hydraulic piston cylinder 16 extends and retracts, the upper hollow lifting column cylinder 13
`and the lower hollow lifting column cylinder 15 telescope relative to each other, and the wire-
`rope sensor 21 measures that telescoping. Id., 5:66-6:37. The bottom of the lifting column is
`coupled to a “wheel” or “crawler track” 10, which traverses the ground during travel. Id., 6:3-6.
`
`
`Claims 2, 5, 16, and 23 of the ’530 patent are at issue in this request. All of these claims
`depend from claim 1 and thus include the following features:
`
`
`1. A road construction machine, comprising:
`a machine frame;
`a working drum supported from the machine frame for working
`a ground surface or traffic surface;
`a plurality of ground engaging supports for supporting the
`construction machine on the ground surface or traffic surface;
`a plurality of lifting columns, each one of the lifting columns
`being connected between the machine frame and one of the
`ground engaging supports, each one of the lifting columns
`including two telescoping hollow column members and at least
`one piston cylinder unit located within the telescoping hollow
`column members for adjusting a height of the lifting column so
`that each one of the lifting columns is adjustable in height
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`

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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 8 of 23 PageID #: 38061
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 7
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`relative to the machine frame, each lifting column having a
`lifting position corresponding to a position of one of the two
`telescoping hollow column members relative to the other of the
`two telescoping hollow column members; and
`a plurality of lifting position sensors, each lifting position
`sensor being coupled with elements of one of the lifting
`columns, which elements are capable of being displaced
`relative to one another in accordance with the lifting position
`of the lifting column in such a manner that a signal including
`information on a current lifting position of the lifting column
`is produced by the lifting position sensor, wherein each of the
`lifting position sensors is connected to the at least one piston
`cylinder unit located within its associated lifting column.
`
`
`Id., 7:51-8:13 (emphases added).
`
`
`Each of the asserted claims requires “lifting position sensors” “coupled with elements of
`one of the lifting columns” that are “capable of being displaced relative to one another in
`accordance with the lifting position of the lifting column.” Thus, each sensor must attach to at
`least two separate components on the lifting column that move relative to each other. This
`allows the sensor to track the telescoping movement of the lifting column. Each sensor must
`also be “connected to the at least one piston cylinder unit within its associated lifting column.”
`Thus, the claim does not cover sensors that are attached elsewhere on the machine, e.g., the
`frame, and not to a piston cylinder unit within a lifting column.
`
`
`2.
`
`The ’530 Patent’s Prosecution History
`
`The ’530 patent claims domestic priority to two predecessor patents: U.S. Patent No.
`9,010,871 (“the ’871 patent”) and U.S. Patent No. 8,113,592 (“the ’592 patent”). The ’530
`patent is a continuation of the ’871 patent, which is a continuation of the ’592 patent.2
`
`Wirtgen made several admissions during the prosecutions of all three of these leg-sensor
`patents that show what its patent claims mean. For example, during prosecution of the ’592
`patent, Wirtgen explained that the “purpose of the ‘lifting position measuring devices’ and the
`‘controller’” is to “monitor and control the individual extension of the plurality of lifting
`columns.” Ex. 5 (Excerpts from ’592 patent’s prosecution history) at 11 (“The ‘lifting position
`measuring devices’ measure relative displacement between two components of the lifting
`columns; they do not measure anything with reference to grade.”) (emphasis added).
`
`
`2 Although Wirtgen only asserted the ’530 patent against Caterpillar in the ITC case, it
`asserted the ’871 and ’592 patents against Caterpillar in two parallel district court proceedings.
`Those litigations are currently stayed pending resolution of the 1067 Investigation.
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`
`

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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 9 of 23 PageID #: 38062
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 8
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`Wirtgen relied on this concept of measuring relative displacement between two
`components of the lifting column to distinguish its claims from prior-art designs relied on by the
`patent examiner. For instance, the examiner cited U.S. Patent Application Publication No.
`2002/0047301 to Davis (“Davis”), and U.S. Patent No. 6,152,648 to Gfroerer (“Gfroerer”)
`against Wirtgen during prosecution of the ’592 patent. Ex. 5 at 32. Davis discloses a road-
`milling machine with multiple sensors on the machine frame that measure a distance to the
`ground. Ex. 6, [0034].
`
`
`
`Id., Fig. 1 (annotated).
`
`Wirtgen argued that these measuring devices are “not coupled with elements of one of the
`lifting columns” that can be “displaced relative to one another in accordance with the lifting
`position of the lifting column.” Ex. 5 at 33. According to Wirtgen, the Davis sensors “are
`attached to the frame and are simply conventional devices for measuring the height of the frame
`above ground.” Id. Wirtgen acknowledged that this “height may change in response to changes
`in the lifting position of the lifting columns,” but contended its claimed invention is different
`because Davis’s sensors “do not directly measure the lifting position of any of the lifting
`columns.” Id.
`
`Gfroerer (a Caterpillar prior-art reference) discloses two “proximity sensors,” 91 and 93,
`physically located on a component of the strut assemblies 22 (i.e., the lifting columns). Ex. 7,
`3:27-40, Fig. 1. Sensor 91 is defined as an “auto stop sensor,” and sensor 93 is defined as a
`“service height sensor.” Id., 3:27-40, Fig. 1.
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`

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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 10 of 23 PageID #: 38063
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 9
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`Id., Fig. 1 (excerpted and annotated). Gfroerer explains that:
`
`
`
`[T]he service height sensor provides a service height signal
`representative of the rear legs being extended to a length typically
`allowing service to the cold planer and not typically used for milling
`operations, and the auto stop sensor provides an auto stop signal
`representative of the rear legs being extended to a length typically
`allowing for milling of the pavement by the planing cylinder 21.
`
`Id., 3:33-40.
`
`During prosecution of the ’592 patent, the examiner relied on Gfroerer’s proximity sensor
`93 as a “path measuring device” and rejected Wirtgen’s proposed claims. Id. at 34. Wirtgen
`argued that this characterization was “not correct,” and represented that the “measuring devices
`93 and 91 associated with Gfroerer’s lifting column are simply proximity sensors, each of which
`can only identify whether or not the lifting column is in a single defined position.” Id. Wirtgen
`further argued:
`
`The sensor 93 is a service height sensor which determines whether
`the lifting column has been extended in a manner which allows
`service personnel to access the underside of the construction
`machine.
`
`Similarly, the sensor 91 is an ‘auto stop sensor’ which provides an
`auto stop signal corresponding to the lifting columns being at a
`position allowing for milling of the pavement by the milling drum.
`
`Id. As Wirtgen explained, because the “service height” and “auto stop” sensors are “proximity
`sensors,” they “merely indicate whether or not the lifting column is in a defined position.” Id.
`(emphasis added). They “do not provide a ‘path signal pertaining to the lifting position of the
`lifting column’” that is “‘continuously detectable by the measuring device.’” Id.
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`
`

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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 11 of 23 PageID #: 38064
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 10
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`Wirtgen’s position during prosecution of the ’592 patent was unmistakably clear: its
`“lifting position measuring device[s]” must attach to two separate components on the lifting
`column that move relative to each other, and they must be capable of detecting the lifting
`position of the lifting columns. Consequently, sensors that attach elsewhere on the machine
`(e.g., on the frame or the wheels), and proximity switches/sensors that indicate whether the
`lifting column is in a single defined position, are not lifting position sensors as claimed.
`
`Wirtgen made similar representations about its lifting position sensors during prosecution
`of the ’871 patent. There, Wirtgen applied for claims requiring “detecting a lifting position of
`each of the lifting columns and continuously generating a path signal for each lifting column
`corresponding to the lifting position of each lifting column.” Ex. 8 (Excerpts from ’871 patent’s
`prosecution history) at 3. Wirtgen elaborated on this limitation during prosecution, stating that
`“‘lifting position’ refers to a state of extension of a ‘lifting column’ which determines a height of
`the machine which is ‘lifted’ relative to a ground surface.” Id., 5.
`
`The examiner cited prior art designs against Wirtgen where sensors were used to monitor
`the length of shock absorbers as they extended. Id., 5-6. Wirtgen explained, however, that this
`was not the type of extension its sensors were detecting, and that monitoring the length of shock
`absorbers as they extended did not constitute “monitoring of a ‘lifting position.’” Id. According
`to Wirtgen, in the shock absorber scenario, “the height of the machine frame is not controlled by
`extension of the shock absorbers.” Id. Instead, the shock absorber monitoring involved
`monitoring a “continuously varying extension of the shock absorber which is a dynamic event”
`that is the result of “many different input forces on the shock absorber at any instant of time.”
`Id. Wirtgen represented that this type of measurement is “completely irrelevant” to the concept
`of measuring a “lifting position” of a “lifting column” of a milling machine. Id. (emphasis in the
`original). Again, this is because under Wirtgen’s interpretation of “lifting position” and “lifting
`column,” the “extension” of the lifting column is being measured to determine the height of the
`machine. Id. See also id., 9 (explaining that “[t]he problem addressed by the present invention
`is the monitoring and control of the column extension of a “lifting column”) (emphasis in the
`original).
`
`During prosecution for the ’530 patent, the examiner again considered the Gfroerer and
`Davis refererences—i.e., the same two references Wirtgen expressly rebutted and overcame
`during prosecution of the ’592 patent—and allowed the ’530 patent claims over this prior art.3
`The prosecution history described above regarding the Gfroerer proximity sensors is especially
`material to this 177 request because a major aspect of the updated design in the 2020 PM600 and
`PM800 Updated Machines involves reintroducing proximity switches (a prior-art Caterpillar
`design), and using them to perform the prior-art auto-stop and service-height functionalities.
`
`
`3 Gfroerer and Davis were cited by the Applicant during prosecution of the ’530 patent
`and considered by the Examiner. Ex. 9 (Excerpts from ’530 patent’s prosecution history), 19-20,
`29-30. This shows that the claims of the ’530 patent were allowed over both Gfroerer and Davis.
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 12 of 23 PageID #: 38065
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`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 11
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`3.
`
`The Sensor Design in Caterpillar’s 2020 PM600 and PM800
`Updated Machines
`
`The Updated Machines are road-milling machines that include a machine frame
`supported at four corners by crawler tracks connected to the frame via height adjustable leg
`columns. A milling drum is positioned between the front and rear tracks and oriented transverse
`to a forward-rearward travel direction of the cold planer. The milling drum is equipped with
`cutting tools that cut into the ground surface when brought into contact with the ground surface.
`
`The height adjustable leg columns are made of upper and lower cylindrical leg tubes that
`telescope into and out of each other. The upper cylindrical leg tubes are fixed to the machine
`frame at each corner of the machine. The lower cylindrical leg tubes are each fixed to a track. A
`hydraulic cylinder runs through the cylindrical leg tubes, connecting to the upper tube at one end,
`and to the lower tube at the other. When the hydraulic cylinder extends and retracts, the leg tubes
`telescope into and out of each other. Because the upper leg tube is fixed to the machine frame,
`the Updated Machines position their machine frames (and thus the milling drum fixed to the
`machine frame) by extending and retracting the hydraulic cylinders inside each of the four legs.
`All of this is conventional in nature.
`
`The original PM600 and PM800 machines had sensors in the lifting columns that
`measured the extension and retraction of the legs. These sensors have been removed from the
`2020 PM600 and PM800 Updated Machines. Instead, like the prior-art Gfroerer design that
`Wirtgen distinguished during prosecution, each of the rear two lifting columns has two proximity
`switches mounted on them, as shown below:
`
`Ex. 10 (Photographs of Updated Machines). The two proximity switches on each lifting column
`are both mounted on the upper cylindrical tube of the lifting column. That is, the left rear upper
`cylindrical tube has two switches mounted to only it, and the right rear upper cylindrical tube has
`two switches mounted to only it. None of the proximity switches are coupled to more than one
`element of their respective lifting column, or to the actuator inside the lifting column. Moreover,
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`
`
`

`

`Case 1:17-cv-00770-JDW Document 409-1 Filed 06/11/24 Page 13 of 23 PageID #: 38066
`
`Alaina van Horn, Sarah Hamblin, and Jessica Wu CONFIDENTIAL
`October 14, 2020
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`Page 12
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`because each pair of switches are fixed to the same component (i.e., the upper cylindrical tube),
`the two switches on each leg do not move relative to each other.4
`
`
`Like the prior-art Gfroerer design that Wirtgen distinguished during prosecution, the
`Updated Machines use proximity switches for a service-height feature and an auto-stop feature.
`Specifically, the bottom proximity switches on the rear two legs (shown in the picture above) are
`used as part of Caterpillar’s service-height feature. The top proximity switches on the rear two
`legs (shown in the picture above) are used as part of Caterpillar’s auto-stop feature. Each
`proximity switch emits a lateral, dome-shaped field into the upper cylindrical tube to which it is
`attached. This dome-shaped field has an axis that is roughly perpendicular to the lifting
`column’s vertical axis. As the lower cylindrical tube telescopes within the upper cylindrical
`tube, it may enter and exit the switch fields. The proximity switches thus cannot determine
`where the lower cylindrical tube is located within a switch field. The switches are binary in this
`regard—they only identify whether the lower cylindrical tube is somewhere within the switch
`field or outside the switch field. The Updated Machines have no sensors that measure the
`extension or retraction of lifting column components that move relative to each other.
`
`
`The Updated Machines also have a track-inclination sensor on each of the two rear tracks
`(there are no track-inclination sensors on the front two trac