Case 1:17-cv-00770-JDW Document 409-5 Filed 06/11/24 Page 1 of 21 PageID #: 38169
`Case 1:17-cv-00770-JDW Document 409-5 Filed 06/11/24 Page 1 of 21 PagelD #: 38169
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`EXHIBIT 5
`EXHIBIT 5
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`Case 1:17-cv-00770-JDW Document 409-5 Filed 06/11/24 Page 2 of 21 PageID #: 38170
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`CATERPILLAR CONFIDENTIAL BUSINESS INFORMATION
`SUBJECT TO STIPULATED NON-DISCLOSURE AGREEMENT
`
`
`JAMES R. BARNEY
`202.408.4412
`james.barney@finnegan.com
`
`November 24, 2021
`
`Via EMAIL & OVERNIGHT MAIL
`
`Jessica Wu
`Attorney-Advisor, Exclusion Order Enforcement Branch
`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 PM600 and PM800 Updated Machines Are Not
`Covered by the Remedial Orders that Issued November 5, 2021
`
`Dear Ms. Wu:
`
`We are counsel for Caterpillar Prodotti Stradali S.r.l., Caterpillar Americas CV,
`Caterpillar Paving Products Inc. and Caterpillar Inc. (collectively, “Caterpillar”), 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 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.
`
`In 2020, Caterpillar updated its PM600 and PM800 machines [[such that they no longer
`had the designs the Commission found to infringe.]] In conjunction with these updated designs,
`Caterpillar submitted a request under 19 C.F.R. § 177.1 et seq., for a ruling finding that the
`
`1 The asserted patents were U.S. Patent No. 9,644,340 (“the ’340 patent”); U.S. Patent
`No. 9,656,530 (“the ’530 patent”); U.S. Patent No. 7,530,641 (“the ’641 patent”) (Ex. 1); 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.
`
`
`Caterpillar: Confidential Green
`
`901 NEW YORK AVENUE, NW | WASHINGTON, DC 20001- 4413
`PHONE: +1 202 408 4000 | FAX: +1 202 408 4400
`
`

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`Jessica Wu CATERPILLAR CONFIDENTIAL BUSINESS INFORMATION
`November 24, 2021 SUBJECT TO STIPULATED NON-DISCLOSURE AGREEMENT
`Page 2
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`updated machines did not infringe claims 2, 5, 16, and 23 of the ’530 patent or claim 29 of the
`’309 patent and therefore would not violate the LEO. On May 19, 2021, Customs issued Ruling
`Letter HQ H314355 finding no infringement and clearing the updated machines for importation.
`
`While the 177 proceeding described above was ongoing, the Federal Circuit issued its
`decision in the appeals from the 1067 Investigation. Caterpillar Prodotti Stradali S.R.L. v. Int’l
`Trade Comm’n, 847 F. App’x 893 (Fed. Cir. 2021). Relevant here, the Federal Circuit reversed,
`vacated, and remanded the Commission’s finding of no induced infringement for claims 11 and
`17 of the ’641 patent by the PM600 and PM800 machines. Id. at 899–900. The Federal Circuit
`affirmed, however, the Commission’s finding that Caterpillar did not induce infringement of the
`’641 patent with its PM300 machine. Id. On remand, the Commission issued a modified LEO
`and two modified cease-and-desist orders covering the ’641 patent. Modified Limited Exclusion
`Order (Nov. 5, 2021), EDIS Doc. ID 755957; Modified Cease and Desist Order for Caterpillar
`Paving Products, Inc. (Nov. 5, 2021), EDIS Doc. ID 755956; Modified Cease and Desist Order
`for Caterpillar Inc. (Nov. 5, 2021), EDIS Doc. ID 755955.
`
`Caterpillar does not believe it infringes any valid claim of the ’641 patent with its PM600
`and PM800 machines, and it reserves its right to appeal the Commission’s findings on validity
`and infringement (Caterpillar did not have the opportunity to appeal the Commission’s findings
`on the ’641 patent in the last Federal Circuit appeal because it was the prevailing party on this
`patent). In any event, the PM600 and PM800 machines [[no longer have the feature found to
`infringe—it was removed months ago]]—which is why Caterpillar has submitted this ruling
`request under 19 C.F.R. § 177.1 et seq. Specifically, Caterpillar requests that Customs issue a
`ruling finding (1) that the updated PM600 and PM800 Machines do not infringe claims 11 and
`17 of the ’641 patent, and (2) that future imports of these machines would not violate the
`modified LEO that issued November 5, 2021. 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. Final Initial Determination (Oct. 1,
`2018), EDIS Doc. ID 657333 (Ex. 2). 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
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`Jessica Wu CATERPILLAR CONFIDENTIAL BUSINESS INFORMATION
`November 24, 2021 SUBJECT TO STIPULATED NON-DISCLOSURE AGREEMENT
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`not in violation because Wirtgen never asserted the ’309 or the ’530 patents against them. The
`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 at 2 (Apr. 17, 2019), EDIS Doc. ID
`673303. At that point, the infringement findings covered claims 2, 5, 16, and 23 of the ’530
`patent and claim 29 of the ’309 patent, and the Commission issued an LEO and two cease-and-
`desist orders covering these claims.
`
`Several of the Commission’s findings were appealed to the U.S. Court of Appeals for the
`Federal Circuit, including findings regarding the ’530, ’309 and ’641 patents. Caterpillar, 847 F.
`App’x at 898. The Federal Circuit affirmed the Commission’s findings on the ’530 and ’309
`patents, id., but reversed-in-part, vacated, and remanded on the ’641 patent, id. at 898–900.
`Regarding the ’641 patent and its application to the PM600 and PM800 Series machines, the
`Federal Circuit “reverse[d] the ALJ’s finding, adopted by the Commission, that Wirtgen failed to
`prove the knowledge required for inducement,” and it “vacate[d] the finding of no induced
`infringement.” Id. at 899–900. The Federal Circuit affirmed, however, the Commission’s finding
`that Caterpillar did not induce infringement of the ’641 patent with its PM300 machine. Id. at
`900. Thus, after the Federal Circuit appeal, it remained true that the PM300 Series product was
`never found to infringe any patent at issue in the 1067 Investigation.
`
`During the Federal Circuit appeal, [[Caterpillar updated its PM600 and PM800 machines
`such that they no longer have the designs the Commission found to infringe the ’530 and ’309
`patents.]] In conjunction with these updated designs, Caterpillar submitted a request under 19
`C.F.R. § 177.1 et seq., for a ruling finding that the updated machines did not infringe claims 2, 5,
`16, and 23 of the ’530 patent or claim 29 of the ’309 patent and therefore would not violate the
`LEO. Notably, [[Caterpillar had also updated its PM600 and PM800 Series machines such that
`they no longer have the design accused of infringing the ’641 patent, but Caterpillar was not
`permitted to request review of this design in the 177 proceeding at that time.]] On May 19, 2021,
`Customs issued Ruling Letter HQ H314355 finding that the updated PM600 and PM800 Series
`machines do not infringe claims 2, 5, 16, and 23 of the ’530 patent or claim 29 of the ’309 patent
`and thus are not covered by the LEO currently in place. Accordingly, the updated PM600 and
`PM800 Series machines were cleared for importation.
`
`On November 5, 2021, after the decision in the Federal Circuit appeal, the Commission
`issued a modified LEO and two modified cease-and-desist orders in the 1067 Investigation that
`included the ’641 patent. Modified Limited Exclusion Order (Nov. 5, 2021), EDIS Doc. ID
`755957; Modified Cease and Desist Order for Caterpillar Paving Products, Inc. (Nov. 5, 2021),
`EDIS Doc. ID 755956; Modified Cease and Desist Order for Caterpillar Inc. (Nov. 5, 2021),
`EDIS Doc. ID 755955. These orders do not cover the PM300 Series product because, as
`mentioned, that product was not found to infringe. As of now, however, these orders do cover the
`updated PM600 and PM800 Series machines. [[But, as mentioned, these machines already have
`an updated design that does not infringe the ’641 patent.]]
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`Jessica Wu CATERPILLAR CONFIDENTIAL BUSINESS INFORMATION
`November 24, 2021 SUBJECT TO STIPULATED NON-DISCLOSURE AGREEMENT
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`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. ID 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. ID 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. ID 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. 5 (Letter from
`Customs to Wirtgen dated Dec. 18, 2019) 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.
`ID 699429; Letter from ITC to Customs (Dec. 12, 2019), EDIS Doc. ID 699436.
`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. 5 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. 6
`(Comm’n Notice (Jan. 16, 2020)) at 3. Instead, Wirtgen invoked other procedural options where
`it was not required to involve Caterpillar as a party.
`
`For example, Wirtgen sued Customs in the 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). Moreover, Wirtgen filed a renewed motion to
`stay the Commission’s remedial orders at the ITC, at which point the Commission unilaterally
`initiated a modification proceeding. Ex. 6.
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`Jessica Wu CATERPILLAR CONFIDENTIAL BUSINESS INFORMATION
`November 24, 2021 SUBJECT TO STIPULATED NON-DISCLOSURE AGREEMENT
`Page 5
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`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 as soon as possible. In
`other words, Caterpillar’s request is one for prospective relief.
`
`II.
`
`PARTIES AND COUNSEL
`
`Respondents in this 177 ruling 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:
`
`• 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
`’641
`11 and 17
`
`
`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`The ’641 Patent’s Specification and Claims
`
`The ’641 patent describes an “automotive construction machine” that “work[s] ground
`surfaces.” Ex. 1 at Abstract. As shown in Figure 2 below, the machine 1 includes a frame 4 and a
`drive engine 6 for driving traveling devices 8 and working devices. Id. at 4:32–35. “The main
`working device” consists of a milling drum 12, which is driven by a drum drive 10 (not shown)
`and is capable of being uncoupled from the drive engine 6. Id. at 4:38–41. Figures 1 and 2 show
`the road construction machine driving in two different directions (forward and reverse). The
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`drum 12 in both figures, however, is rotating in the same direction (the reverse, or “up-milling”
`mode direction). See, e.g., id. at 4:58–60.
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`The ’641 patent describes a system designed to address situations where the road
`construction machine is traveling in the same direction that the drum is rotating. Compare id. at
`Figure 2 (milling drum 12 rotating in the same direction that the machine is traveling) with id. at
`Figure 1 (milling drum 12 rotating in the opposite direction that the machine is traveling). The
`’641 patent explains that when the milling drum rotates in the same direction that the machine is
`traveling, there is a “risk” of the machine “accelerat[ing] in an undesired manner” if the milling
`drum accidentally contacts the ground. Id. 4:61–66. The purpose of the system described in the
`’641 patent is to prevent these unwanted accelerations from occurring. See, e.g., id. at Abstract.
`
`The ’641 patent explains that rotating the milling drum in up-milling mode is preferred,
`in which case “[t]he invention concerns itself with traveling in [the] backward direction” and
`“traveling in [the] forward direction is uncritical.” Id. at 2:43–50. Likewise, if the opposite
`milling drum rotation is preferred (i.e., down-milling mode), then the reverse direction is
`“uncritical” and the forward direction is the relevant direction. Id. at 2:51–56. Thus, knowing the
`travel direction of the machine and the rotational direction of the milling drum are important
`aspects of the ’641 patent.
`
`There are multiple ways to address the acceleration risks described above. The ’641
`patent discloses a ground-based approach that involves using a monitoring device and/or sensor
`to detect the ground, after which the monitoring device automatically causes a remedial action to
`occur if the milling drum gets too close to the ground. Id. at Abstract (explaining that monitoring
`device performs a remedial action such as “uncouple[ing] the raised milling drum from the drive
`engine,” “uncouple[ing] the traveling devices from the drive engine,” “rais[ing] the machine
`frame,” and/or “generat[ing] an alarm signal” when it “detects a deviation that falls below a pre-
`determined distance”). The ’641 patent discloses various ways of sensing the ground, all of
`which involve physical or electrical components. Id. at 3:7–50, 5:7–6:34 (explaining that tracers,
`scraper blades, and side plates can be used as part of the ground-sensing process). There is no
`disclosure in the ’641 patent stating that a human being (e.g., machine operator) can be the
`sensor.
`
`If the monitoring device and sensing apparatus determines that one of the remedial
`actions described above is necessary, the monitoring device either performs that action itself or
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`sends a signal to a controller that performs the action. Id. at 5:7–14; see also Id. at 3:50–54. In
`every disclosure in the ’641 patent, these remedial actions are performed automatically. In sum,
`under the disclosures of the ’641 patent: (1) the machine must be traveling in the same direction
`as the milling drum’s direction of rotation (usually the reverse direction), (2) the machine has a
`monitoring device/sensor mechanism that detects ground (or an object on the ground); and (3) a
`remedial actions occurs if the monitoring device determines that the milling drum is too close to
`the ground (or an object on the ground).
`
`
`In the 1067 Investigation, the Commission correctly found apparatus claims 1 and 7 of
`the ’641 patent invalid, and Wirtgen did not appeal this finding. Thus, only method claims 11
`and 17 are at issue here. Claim 11 recites:
`11. Method for working ground surfaces (2) with a construction
`machine (1) that is automotive by means of traveling devices (8) and
`in which a milling drum (12) supported in a machine frame (4) is
`driven by a drive engine (6),
`where the milling drum (12) is moved into a raised position when it
`is not in milling mode,
`characterized in that, the milling drum (12) remains coupled with
`the drive engine (6) when in raised position and with a direction of
`travel in which the rotating direction of the milling drum (12)
`corresponds to the rotating direction of the traveling devices (8),
`in that a distance is monitored between the rotating, raised milling
`drum (12) and the ground surface (2) or an obstacle located in front
`of the milling [drum] (12) when seen in the direction of travel, and
`in that the milling drum (12) is uncoupled from the drive engine (6),
`and/or the traveling devices (8) are uncoupled from the drive engine
`(6) and/or the machine frame (4) is raised and/or an alarm signal is
`generated when detecting that the deviation falls below a pre-
`determined distance between the milling drum (12) and the ground
`surface (2).
`
`Claim 17, which depends from claims 11 and 15, requires “a scraper blade (22) . . .
`arranged behind the milling drum (12) when seen in the direction of travel” that “is used as a
`sensing device.”
`
`Like the ’641 patent specification describes, the remedial action performed in claims 11
`and 17 (e.g., uncoupling the milling drum, uncoupling the wheels, raising the machine frame,
`and/or sounding an alarm) must occur while the machine is moving in the same direction that the
`drum is rotating. For example, claim 11 states that the milling drum “remains coupled with the
`drive engine” and has a “direction of travel” that “corresponds to the rotating direction of the
`traveling devices.” Regarding ground involvement, claim 11 explains that a distance is
`monitored “between the rotating, raised milling drum (12) and the ground surface (2) or an
`
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`obstacle located in front of the milling [drum] (12) when seen in the direction of travel.” Then,
`when the machine detects a “deviation” that “falls below a pre-determined distance between the
`milling drum (12) and the ground surface (2),” one of the remedial actions is triggered.
`
`B.
`
`Representations from Wirtgen About the ’641 Patent
`
`Wirtgen confirmed numerous times during the 1067 Investigation that the system
`described in the ’641 patent is a ground-based detection system that operates when the machine
`is moving in the same direction that the drum is rotating (i.e., usually in the reverse direction).
`[[For example, Wirtgen argued that one of Caterpillar’s machine inspections was “flawed”
`because the machine being tested “was stationary” and not moving in reverse as required by the
`claims in the ’641 patent. Ex. 4 (Complainant's Post-Trial Brief (May 11, 2018)) at 164
`(explaining that the limitation requiring a “direction of travel in which the rotating direction of
`the milling drum (12) corresponds to the rotating direction of the traveling devices (8)” means
`that “the machine is traveling in reverse and is not stationery”). Wirtgen also represented that the
`“claims of the ’641 patent” cover designs where “a monitoring device . . . indirectly monitors the
`distance between the milling drum and the ground surface,” and that Caterpillar’s machines
`“indirectly monitor[] this distance by sensing whether an elevation in the ground surface causes
`the moldboard to raise.” Id. at 37; see also Ex. 3 (Wirtgen's Pre-Hearing Statement and Brief
`(Mar. 30, 2018)) at 15 (“The ’641 patent describes sensors that can detect when the ground
`surface or an obstacle push up part of the milling drum housing . . . . In this way, sensors on the
`machine can directly or indirectly monitor the distance between the milling drum and the ground
`or an obstacle[.]”); Ex. 17 (Complainant’s Reply Post-Hr’g Br.) at 51 (explaining that “the
`ground surface includes obstacles”).]]
`
`Wirtgen further confirmed that, under the claims, the machine automatically performs the
`remedial action if the drum gets too close to the ground. In particular, Wirtgen explained that
`“the specification and the context of claims 1 and 11 are clear that the monitoring device
`performs one or more of its responsive functions when it detects that the monitored distance (i.e.,
`the distance between the ground surface and the work drum) falls below a pre-determined
`distance[.]” Ex. 7 (Exhibit 1 to Wirtgen’s Initial Claim Construction Brief (Dec. 22, 2017)) at
`¶ 76 (emphasis added); see also Ex. 8 (Wirtgen America’s Initial Claim Construction Brief (Dec.
`22, 2017)) at 6 (“To ensure the milling drum is rotating safely, the machine described in the ’641
`patent also is equipped with sensors that directly or indirectly monitor the distance between the
`milling drum and the ground, detect if the rotating milling drum comes undesirable close to the
`ground surface, and disengage the work drum from the main drive engine, uncouple the
`travelling devices from the engine, raise the machine frame, or sound an alarm if the rotating
`work drum contacts the ground surface.”).
`
`C.
`
`The Caterpillar Rotor Shutoff Design at Issue during the 1067
`Investigation
`
`Caterpillar refers to the milling drum on its machines as a “rotor.” The original PM600
`and 800 Series machines had a feature whereby the rotor would shut off while the machine was
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`traveling in reverse if the rotor became exposed below the drum enclosure. Ex. 9 (Caterpillar’s
`Petition for Review of the Initial Determination (Oct. 15, 2018)) at 62–63; Ex. 10 (Respondents’
`Trial Ex. RX-0163C.0009–10); and Ex. 11 (Respondents’ Trial Ex. RX-0157C.0360–61). The
`drum enclosure, shown below, is formed by the two side plates and the scraper blade (the lower
`portion of the scraper blade is called the “moldboard”).
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`Ex. 12 (Complainants’ Annotated Trial Ex. CX-0212.0039).
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`Caterpillar’s old system used sensors to continuously monitor the vertical positions of the
`side plates and moldboard. Ex. 13 (Complainants’ Trial Ex. CX-0591C.0360–61). If the sensors
`detected that the scraper blade or side plates were moved up beyond a certain point (i.e., the
`point at which a drum exposure occurred), and if the machine was traveling in reverse, a rotor
`shutoff occurred. Put differently, Caterpillar’s system used sensors to determine if the rotor
`pierced the virtual plane formed by the bottommost portion of the drum enclosure formed by the
`scraper blade and side plates. Ex. 9 at 62–8; Ex. 11 (Respondents’ Trial Ex. RX-0157C.0360–
`61); Ex. 10 (Respondents’ Trial Ex. RX-0163C.0009).
`
`Ex. 14 (Excerpts from Respondents’ Trial. Ex. RX-0146C.0750) (annotated); Ex. 15 at Q/A99
`(Excerpts from Respondents’ Trial Ex. RX-0991C.0033). When the rotor became exposed
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`Case 1:17-cv-00770-JDW Document 409-5 Filed 06/11/24 Page 11 of 21 PageID #: 38179
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`Jessica Wu CATERPILLAR CONFIDENTIAL BUSINESS INFORMATION
`November 24, 2021 SUBJECT TO STIPULATED NON-DISCLOSURE AGREEMENT
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`beneath this virtual plane while the machine is traveling in reverse, the machine would shut off
`the rotor. Ex. 15 at 0031-0033.
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`[[During the 1067 Investigation and on appeal, Caterpillar argued that its rotor shutoff
`design was a “drum exposure” design and not a “distance-to-ground” design because the rotor
`shutoff depended solely on whether the drum became exposed beneath the drum enclosure (as
`opposed to how far the drum was from the ground). Ex. 16 (Caterpillar Post Hearing Br. (May
`11, 2018)) at 203. Wirtgen responded by arguing that, when the drum enclosure on Caterpillar’s
`machine was near the ground, and either the ground or something on the ground pushed the
`scraper blade or side plate up to the extent that the drum became exposed, there would be a rotor
`shutoff under Caterpillar’s design (just like the shutoff design described in the ’641 patent). Ex. 2
`(Final Initial Determination) at 159–61; Ex. 17 (Complainant’s Reply Post-Hr’g Br. (May 23,
`2018)) at 51. According to Wirtgen, the scraper blade and/or side plates served as the sensors for
`determining how close the drum is to the ground, and when the machine determined that the
`ground pushed these sensors up and a drum exposure occurred, the machine “indirectly”
`determined that the drum was too close to the ground and that a shutoff was necessary. Ex. 2 at
`159–61; Ex. 17 at 51. Wirtgen contended that, even if Caterpillar’s machines did not directly
`monitor the distance between the drum and the ground (they did not), the machines’ indirect
`ground monitoring via the scraper blade and side plates was sufficient for infringement of the
`’641 patent. Ex. 2 at 159–61; Ex. 17 at 51.
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`In asserting its “indirect monitoring” theory, Wirtgen stated the following:
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`If a monitoring device took various measurements and then used
`those measurements to calculate the distance between the milling
`drum and the ground, then that would be direct monitoring. Indirect
`monitoring is monitoring by proxy. It involves using other known
`relationships between the parts of the machine and measuring
`changes in the positions of those parts as a proxy for determining
`the distance between the milling drum and the ground surface. . . .
`In other words, information about the actual distance between the
`ground surface and the milling drum need not be generated. That
`information is indirectly known because of the information
`generated by the scraper blade sensors.
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`Ex. 17 at 59 (citations omitted).
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`Wirtgen also gave a concrete example of how the indirect monitoring occurred and why it
`believed Caterpillar’s machines performed this indirect monitoring:
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`The accused machines practice the asserted claims of the ’641 patent
`because they include a monitoring device that indirectly monitors
`the distance between the milling drum and the ground surface. The
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
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`Case 1:17-cv-00770-JDW Document 409-5 Filed 06/11/24 Page 12 of 21 PageID #: 38180
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`Jessica Wu CATERPILLAR CON