Case 1:17-cv-00770-JDW Document 409-22 Filed 06/11/24 Page 1 of 6 PageID #: 38365
`Case 1:17-cv-00770-JDW Document 409-22 Filed 06/11/24 Page 1 of 6 PagelD #: 38365
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`EXHIBIT 22
`EXHIBIT 22
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`Case 1:17-cv-00770-JDW Document 409-22 Filed 06/11/24 Page 2 of 6 PageID #: 38366
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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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`DANIEL YONAN
`DIRECTOR
`(202) 772-8899
`DYONAN@STERNEKESSLER.COM
`
`March 21, 2018
`
`Christine E. Lehman
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`
`
`
`Via Email
`CAT-ITC-SERVICE@finnegan.com
`
`Re: Wirtgen America’s Response to Caterpillar’s March 15, 2018 regarding the
`’628 Patent, Certain Road Milling Machines & Components Thereof, ITC
`Investigation No. 337-TA-1067
`
`Dear Christine:
`
`We write in response to your March 15, 2018 letter to express serious concerns with your
`accusations that Wirtgen America engaged in inequitable conduct, knowingly enforced an
`invalid patent, misled the Administrative Law Judge, and improperly withheld discovery. None
`of your accusations are grounded in evidence. In fact, the record contradicts each of your
`assertions.
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`1.
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`Caterpillar has identified no evidence of inequitable conduct in
`connection with the prosecution of the ’628 patent.
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`Caterpillar’s primary issue is that “it appears that Wirtgen knowingly withheld highly
`relevant—indeed anticipatory—prior art from the USPTO during prosecution of the ’628 patent,
`rendering the ’628 patent unenforceable due to inequitable conduct.” (March 15, 2018 C.
`Lehman Ltr. to D. Yonan, at 1 (emphasis added).) Missing in your letter, however, is any
`evidence to support your accusation.
`
`First, a charge of inequitable equitable conduct requires evidence both that a person
`under a duty of candor knowingly withheld material information from the examiner and did so
`with the specific intent to deceive. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1329
`(Fed. Cir. 2009). There is no evidence that anyone under a duty of candor had actual knowledge
`of the sale or offer for sale in the United States of the 2500 SM machine (Serial No. 06.26.001)
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`Case 1:17-cv-00770-JDW Document 409-22 Filed 06/11/24 Page 3 of 6 PageID #: 38367
`Christine E. Lehman
`March 21, 2018
`Page 2
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`prior to the critical date. Nor is there any evidence that anyone with a duty of candor acted with a
`specific intend to deceive the examiner by withholding such information from the USPTO. Nor
`could you.
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`Your reference to Mr. Busley’s testimony does not remedy your shortcomings. As the
`only inventor on the ’628 patent deposed in this matter, he repeatedly testified that he was not
`familiar with surface miners. (Busley Tr., 22:15-16, 23:17-22, 26:8-11, 27:4-7, 28:5-14, 115:19-
`20.) He also testified that he did not know if any surface miners had been sold with the auxiliary
`drive feature. (Id., at 117:9-13.) And he certainly never suggested that he was aware of a sale or
`offer for sale in the United States of a surface miner having an auxiliary drive within the scope of
`the claims prior to May 10, 2000. Indeed, Mr. Busley clearly indicated that surface mining
`machines were not relevant to the design of cold planers. (Id. at 19:8–20:7.) And nothing in Mr.
`Busley’s deposition suggests that he withheld any information, much less information relating to
`the 2500 SM machine (Serial No. 06.26.001) or any other prior art, with the requisite intent to
`deceive. Likewise, there is no evidence that any other inventor had actual knowledge of any
`material prior art that was withheld from the USPTO with a specific intent to deceive.
`
`Your further insinuation that the prosecuting attorney, Mr. L. Wayne Beavers, had
`knowledge of a pre-critical date sale or offer for sale of any machine within the scope of the
`claims is also baseless and unsupported. You had an opportunity to take discovery regarding the
`prosecution of the asserted patents and voluntarily allowed that subpoena to lapse. Moreover, the
`mere fact that a single machine file existed in Wirtgen America’s extensive collection of
`machine files is irrelevant without evidence that Mr. Beavers, or anyone else under a duty of
`candor, had actual knowledge of 2500 SM (Serial No. 06.26.001) machine file. See Nordberg,
`Inc. v. Telsmith, Inc., 82 F.3d 394, 397 (Fed. Cir. 1996) (rejecting an inequitable-conduct claim
`premised on the argument that the withheld reference was among several hundred patents in the
`company’s files when there was no evidence a person under a duty of candor had searched those
`files).
`
`Second, because you have no basis to assert that anyone under a duty of candor had
`knowledge of a pre-critical date sale or offer for sale of a surface miner with an auxiliary drive
`within the scope of the claims, you generically accuse “Wirtgen” of having such knowledge.
`
`Evidence obtained during this Investigation shows that Wirtgen was fully aware
`of this sale. Thus, the only logical conclusion that can be drawn is that Wirtgen
`intentionally withheld this highly relevant information from the USPTO in order
`to conceal its existence from the Examiner.
`
`(March 15 Ltr. from C. Lehman to D. Yonan at 1-2 (emphasis added).) Such generalized
`accusations do not and cannot meet even the basic pleading requirement for inequitable conduct,
`which require “the specific who, what, when, where, and how of the material misrepresentation
`or omission committed before the PTO.” Exergen Corp., 575 F.3d at 1327.
`
`Accordingly, your letter fails to articulate even a plausible theory by which a reasonable
`fact finder could conclude that any inequitable conduct occurred with respect to the ’628 patent.
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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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`Case 1:17-cv-00770-JDW Document 409-22 Filed 06/11/24 Page 4 of 6 PageID #: 38368
`Christine E. Lehman
`March 21, 2018
`Page 3
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`2.
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`Caterpillar’s “Walker Process” allegations are meritless.
`
`You assert that “Wirtgen’s assertion (and continued assertion) of the ’628 patent in this
`Investigation constitutes a Walker Process type antitrust violation, for which Caterpillar intends
`to seek all available remedies . . . .” (March 15, 2018 C. Lehman Ltr. to D. Yonan, at 1
`(emphasis added).) Your allegations of an antitrust violation are even more spurious than your
`allegations of inequitable conduct.
`
`A Walker Process claim requires that an “antitrust-plaintiff must show two things: first,
`that the antitrust-defendant obtained the patent by knowing and willful fraud on the patent office
`and maintained and enforced the patent with knowledge of the fraudulent procurement; and
`second, all the other elements necessary to establish a Sherman Act monopolization claim.”
`TransWeb, LLC v. 3M Innovative Properties Co., 812 F.3d 1295, 1306 (Fed. Cir. 2016). Even if
`Caterpillar could show that a person under a duty of candor had knowledge of a pre-critical date
`sale of a surface miner otherwise within the scope of the ’628 patent claims, a Walker Process
`claim requires more—“[a] mere failure to cite a reference to the PTO will not suffice.”
`Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1071 (Fed. Cir. 1998). Because
`you cannot plausibly allege inequitable conduct, you certainly cannot plausibly allege a Walker
`Process style antitrust claim. Moreover, even if Caterpillar had a factual basis to allege
`inequitable conduct involving the ’628 patent, Caterpillar has not shown that Wirtgen America
`“enforced the patent with knowledge of the fraudulent procurement” or how the other elements
`of a Sherman Act monopolization claim are met here.
`
`For at least these reasons, your assertions that Caterpillar has even a plausible Walker
`Process claim are without merit.
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`3.
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`Wirtgen America did not mislead the Administrative Law Judge.
`
`Your assertion that Wirtgen America made any misrepresentations to the Administrative
`Law Judge shows a reckless disregard for the truth. In particular, you point to our opposition to
`Caterpillar’s Motion for Leave to Submit Supplemental Notice of Prior Art. (March 15, 2018 C.
`Lehman Ltr. to D. Yonan, at 2 (citing Opp. Br. at 8).) That brief did not, as you now suggest,
`“misrepresent[] to the ALJ that Wirtgen’s 2500SM surface miner is ‘unrelated’ to the claims of
`the ’628 patent because it is not a ‘construction machine.’” Rather, we argued that your “Motion
`only identifies a few limitations of the asserted claim that are allegedly disclosed in the manual
`describing the machine.” (Feb. 7, 2018 Opp. Br. at 8.) While we highlighted one example of the
`deficiencies in Caterpillar’s evidence for purposes of opposing Caterpillar’s motion, the
`subsequent supplemental rebuttal expert report of Dr. Meyer identified numerous deficiencies in
`Caterpillar’s invalidity theory pertaining to the 2500 SM. In addition, we also disputed and
`continue to dispute the existence of a commercial sale or offer for sale of the 2500 SM machine
`(Serial No. 06.26.0001) in the United States prior to the critical date. (Id. at 6-8.)
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`Furthermore, your continued reliance on marketing material from 2015 is misplaced and
`misleading. That press release you continue to cite published nearly 14 years after the PCT filing
`date for the ’628 patent. See https://www.wirtgen.de/en/news-media/press-releases/surface-
`miners (showing “Clearing the way –Routing with Wirtgen Surface Miners to clear the rocky
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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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`Case 1:17-cv-00770-JDW Document 409-22 Filed 06/11/24 Page 5 of 6 PageID #: 38369
`Christine E. Lehman
`March 21, 2018
`Page 4
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`terrain” to have a publication date of January 16, 2015). As such, on its face it has no probative
`value to understanding the disclosure of the ’628 patent. But even if it did, the press release
`actually supports our position that a skilled artisan would not have considered surface miners to
`be construction equipment. For example, it describes the use of surface miners in road
`construction to be an “unusual solution.” Indeed, the record is clear that at the time Wirtgen sold
`the 2500 SM it did so with express understanding that “[t]he machine is exclusively designed for
`milling off mineral layers in open-cast mines with a density as stipulated per agreement.” (WA-
`ITC_00463614.) Accordingly, there is nothing misleading in our arguments as to why the ALJ
`should not have permitted Caterpillar to amend its notice of prior art, including that skilled
`artisans would not understand a surface miner to be “construction equipment” within the context
`of the ’628 patent.
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`4.
`
`Wirtgen America fully complied with its discovery obligations in this
`Investigation.
`
`Your letter also accuses Wirtgen America of “attempt[ing] to shield highly relevant
`surface miner documents from discovery in this Investigation.” (March 15, 2018 C. Lehman Ltr.
`to D. Yonan at 3.) We disagree with this baseless accusation.
`
`First, Wirtgen America voluntarily produced surface miner documentation early into the
`fact discovery phase of this Investigation. (See Sept. 22, 2017 Ltr. from T. Powers to C. Lehman
`(including production of WA-ITC_00141458-1667).) This alone belies any assertion that we
`have deliberately shielded discovery of surface miners.
`
`Second, Wirtgen America served proper objections to Caterpillar’s belated requests for
`specific discovery into Wirtgen’s surface miner machines. There is nothing improper with
`objecting to the scope of a party’s discovery requests as Wirtgen America did in this case.
`Nevertheless, after the Administrative Law Judge granted Caterpillar’s motion to compel in part,
`we expeditiously worked with Caterpillar to provide the discovery within the scope of Order No.
`17 and additional discovery beyond the scope of Order No. 17. Indeed, James Barney concurred,
`noting that “Wirtgen has conducted a diligent search for documents relating to 2500 SM Serial
`No. 06.26. 0001.” (Feb. 2, 2018 J. Barney email to P. Ainsworth.) Your suggestion that Wirtgen
`America deliberately concealed relevant discovery is belied by the facts and your co-counsel’s
`statements.
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`Third, until Order 21, Wirtgen America continued to make efforts to cooperate in your
`discovery requests relating to surface miner art even though fact discovery was long since over.
`For example, we agreed to inquire into the availability of a Wirtgen GmbH employee to sit for
`deposition and also to inquire into whether JK Knowlton would be willing to voluntarily permit
`an inspection of its equipment. (See Feb. 6, 2018 P. Ainsworth email to J. Barney.) However,
`Order 21 foreclosed the need for any further discovery relating to the 25000 SM machine.
`
`Accordingly, your suggestion that Wirtgen America has engaged in any discovery
`misconduct with respect to the 2500 SM or any other surface miner documents is unfounded.
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`*
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`*
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`*
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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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`Case 1:17-cv-00770-JDW Document 409-22 Filed 06/11/24 Page 6 of 6 PageID #: 38370
`Christine E. Lehman
`March 21, 2018
`Page 5
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`Notwithstanding the foregoing, Wirtgen America has continued to assess and evaluate the
`strengths of its infringement claims in this Investigation, as evidenced by our voluntary decision
`to terminate claims on multiple occasions. After further review of our infringement case, and
`based upon the opening witness statements, Wirtgen America has decided to voluntarily
`terminate the Investigation with respect to the ’628 patent. This should moot any outstanding
`issues in this Investigation pertaining to the ’628 patent, including your pending trial subpoena.
`We assume you will not oppose our motion to terminate. With respect to Civil Action Nos. 17-
`cv-00770-DED and 17-CV-02085-MND, we expect to dismiss the ’628 patent with respect to
`those cases once the stays are lifted.
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`Regards,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`Daniel Yonan
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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO PROTECTIVE ORDER
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