Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 1 of 19 PageID #: 39012
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`Defendant.
`
`
`
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`
`
`)))))))))
`
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`
`CATERPILLAR INC.,
`
`
`
`CATERPILLAR INC.’S BRIEF IN SUPPORT OF ITS MOTION FOR LEAVE TO
`AMEND THE SCHEDULING ORDER
`
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`Cassie Leigh Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`Matthew A. Macdonald
`Neil N. Desai
`Naoya Son
`Alex J. Turner
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`953 E. 3rd St., #100
`Los Angeles, California 90013
`Tel: (323) 210-2900
`
`Dated: June 28, 2024
`11587169 /11898.00005
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 2 of 19 PageID #: 39013
`
`I.
`II.
`
`III.
`
`IV.
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`PAGE
`
`Caterpillar’s Infringement Contentions Coincided with the Date
`of the Court’s Claim Construction Order and the Patent Office’s
`
`After the Stay Was Lifted, the Parties Agreed to Supplement Their Contentions
`
`INTRODUCTION ............................................................................................................1
`FACTUAL BACKGROUND ...........................................................................................2
`A.
`Institution Decisions ............................................................................................ 2
`B.
`The Parties Agreed to a Stay and Additional Discovery After the Stay .............. 3
`C.
`.............................................................................................................................. 4
`ARGUMENT ....................................................................................................................5
`Legal Standard ..................................................................................................... 5
`A.
`Federal Rule of Civil Procedure 16 ..........................................................5
`Federal Rules of Civil Procedure 26(e) and 37(c) ....................................7
`B.
`.............................................................................................................................. 8
`Caterpillar Diligently Amended Its Contentions ..........................8
`The Amendments Are Important to Caterpillar’s Case ................9
`Caterpillar Has Not Engaged in Gamesmanship ........................10
`to Wirtgen .................................................................................. 11
`’538 Patent ..............................................................................................12
`C.
`and Harmless ...................................................................................................... 13
`CONCLUSION .............................................................................................................. 14
`
`1.
`2.
`There is Good Cause for Caterpillar to Supplement Its Infringement Contentions
`
`1.
`
`’995 Patent ................................................................................................8
`a)
`b)
`c)
`d)
`
`There Will Be No Disruption to the Case Schedule or Prejudice
`
`2.
`Caterpillar’s Amended Infringement Contentions Are Substantially Justified
`
`
`
`i
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`

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`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 3 of 19 PageID #: 39014
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`PAGE(S)
`
`Apple Inc. v. Samsung Elecs. Co.,
` 2013 WL 3246094 (N.D. Cal. June 26, 2013) ....................................................................6
`Bayer Cropscience AG v. Dow Agrosciences LLC,
`2012 WL 12904381 (D. Del. Feb. 27, 2012) ...................................................................6, 9
`ChriMar Sys. v. Cisco Sys.,
`2015 WL 13449849 (N.D. Cal. May 14, 2015) .............................................................6, 10
`Forschung e.V. v. Sirius XM Radio Inc.,
`2022 WL 608143 (D. Del. Jan. 27, 2022) ............................................................................6
`Lambda Optical Sols., LLC v. Alcatel-Lucent USA Inc.,
`2013 WL 1776104 (D. Del. Apr. 17, 2013) .....................................................................6, 9
`Midwest Athletics and Sports Alliance (“MASA”) v. Ricoh USA, Inc.,
`2021 WL 1907475 (E.D. Pa. May 12, 2021) .....................................................................13
`MyMedicalRecords, Inc. v. Quest Diagnostics, Inc.,
`2014 WL 5810363 (C.D. Cal. Nov. 6, 2014) .......................................................................6
`Sprint Commc’ns Co. L.P. v. Charter Commc’ns, Inc.,
`2021 WL 982731 (D. Del. Mar. 16, 2021) ..........................................................6, 7, 12, 13
`RULES
`Fed. R. Civ. P. 16(b)(4)....................................................................................................................5
`Fed. R. Civ. P. 26(a) ....................................................................................................................6, 7
`Fed. R. Civ. P. 26(e) ........................................................................................................................7
`Fed. R. Civ. P. 37(c) ........................................................................................................................7
`L.R. 16.6(d)(5)(A)............................................................................................................................7
`N.D. Cal. L.P.R. 3.6 .........................................................................................................................7
`E.D. Tex. P.R. 3-6(a)(1) ...................................................................................................................7
`
`
`
`
`
`
`ii
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`

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`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 4 of 19 PageID #: 39015
`
`TABLE OF ABBREVIATIONS
`
`
`
`Abbreviation
`
`’538 patent
`’618 patent
`’995 patent
`3/2023 Infringement Contentions (Ex. 1)
`
`4/2023 Infringement Contentions (Ex. 3)
`
`5/2024 Infringement Contentions (Ex. 5)
`
`6/2024 Infringement Contentions (Ex. 6)
`
`Infringement Contentions
`
`Asserted Patents
`Ex.
`
`FWD
`IPR
`Smith Decl.
`
`Wirtgen
`
`Word or Phrase
`U.S. Patent No. 9,975,538
`U.S. Patent No. 9,371,618
`U.S. Patent No. 7,523,995
`Caterpillar’s Amended Infringement
`Contentions, served on March 10, 2023
`Caterpillar’s Second Amended Infringement
`Contentions, served on April 7, 2023
`Caterpillar’s Corrected Third Amended
`Infringement Contentions, served on May 28,
`2024
`Caterpillar’s Fourth Amended Infringement
`Contentions, served on June 13, 2024
`Caterpillar’s Amended Infringement
`Contentions, Caterpillar’s Second Amended
`Infringement Contentions, Caterpillar’s
`Corrected Third Amended Infringement
`Contentions, and/or Caterpillar’s Fourth
`Amended Infringement Contentions
`The ’995 and ’538 patents
`Exhibits filed herewith in support of its
`Motion to Amend the Scheduling Order
`IPR Final Written Decision
`Inter Partes Review
`Declaration of Ryan R. Smith in Support of
`Caterpillar’s Inc.’s Motion for Leave to
`Amend the Scheduling Order
`Wirtgen Group (including Wirtgen America
`and Wirtgen GmbH working in concert in
`connection with enforcement activities
`directed towards the asserted patents)
`
`
`*Unless otherwise noted, all emphases are herein added, and all internal citations and quotations
`are omitted.
`
`iii
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`

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`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 5 of 19 PageID #: 39016
`
`I.
`
`INTRODUCTION
`
`The parties agreed that they would exchange supplemental contentions on May 24, 2024.
`
`They did not agree to any limitations as to the claims, accused products, or prior art that may be
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`added. Both parties served supplemental contentions on that date. Caterpillar added new asserted
`
`claims and accused products, and Wirtgen added new infringement theories. Despite the parties’
`
`agreement, and the lack of any agreed-upon limitations, Wirtgen now objects to the scope of
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`Caterpillar’s amendment. Pursuant to the Court’s order, D.I. 416, Caterpillar seeks leave to serve
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`amended contentions that (1) accuse additional Wirtgen products as to the ’995 and ’538 patents
`
`and (2) assert three additional dependent claims of the ’995 patent.
`
`Caterpillar complied with the Court’s March 10, 2023 deadline for serving its original
`
`contentions. However, on that same day, the Court issued its claim construction order, construing
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`one of the claim terms of the ’995 patent differently than either party proposed. D.I. 167, 168.
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`Before Caterpillar could fully consider how its contentions would need to be amended, the case
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`was stayed as to the Asserted Patents in view of their pending IPRs. D.I. 185.
`
`The stay was lifted on April 1, 2024. Consistent with the Court’s order lifting the stay, the
`
`parties agreed to supplement their respective contentions and to reopen fact discovery. D.I. 360
`
`(“The parties shall proceed with supplemental fact discovery to update their prior responses.”).
`
`Caterpillar has diligently and actively litigated the case since.
`
`Supplementation is proper given the timing of the Court’s contemporaneous claim
`
`construction order relative to Caterpillar’s original contentions, Wirtgen’s intervening arguments
`
`from its IPR proceedings, and the parties’ agreement to exchange contentions on May 24, 2024.
`
`The proposed amendments also pose no prejudice to Wirtgen or disruption to the case schedule,
`
`as discovery has been reopened and expert reports are months away.
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 6 of 19 PageID #: 39017
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`For the reasons discussed below, Caterpillar respectfully requests that the Court find (1)
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`good cause exists for Caterpillar’s proposed amendment and/or (2) Wirtgen failed to demonstrate
`
`the requisite bad faith to justify the extreme sanction of excluding Caterpillar’s proposed
`
`amendment.
`
`II.
`
`FACTUAL BACKGROUND
`A.
`
`Caterpillar’s Infringement Contentions Coincided with the Date of the
`Court’s Claim Construction Order and the Patent Office’s Institution
`Decisions
`
`On March 10, 2023, the Court issued its claim construction order, which unexpectedly
`
`construed one claim of the ’995 patent differently than either Caterpillar or Wirtgen had proposed.1
`
`D.I. 167 at 14-21; Smith Decl. ¶ 3. The original deadline to serve Infringement Contentions was
`
`on that same date. D.I. 159. As such, later that day, Caterpillar timely served its Infringement
`
`Contentions, accusing certain Wirtgen cold planer and paver machines of infringing the ’618, ’538
`
`and ’995 patents. Ex. 1 at 2. Given the timing and unexpected nature of the Court’s construction,
`
`Caterpillar expressly reserved its right to amend its Infringement Contentions in light of the
`
`Court’s claim constructions, including by potentially asserting additional asserted claims and
`
`accused products:
`
`Caterpillar reserves the right, consistent with the Federal Rules of Civil Procedure,
`the Local Rules and Standing Orders of the District of Delaware, and the Court’s
`Scheduling Order (D.I. 28), to amend its infringement contentions to assert
`additional patents and/or claims, additional accused products, and update its
`infringement theories as additional evidence and information become available or
`as otherwise appropriate, such as after claim construction has taken place and/or in
`the event that discovery reveals additional evidence of infringement, or for any
`other reason as permitted by the Court.
`
`1 The Court construed the phrase “between projecting and retracted positions relative to said
`machine frame” as “between positions that are farther from or closer to the machine frame.”
`D.I. 167 at 14. Neither party advocated for this construction. Caterpillar sought no construction,
`while Wirtgen requested that the term be construed as “between a position projecting outside the
`machine frame and a position retracted within the machine frame.” Id.
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 7 of 19 PageID #: 39018
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`
`On March 10, 2023 (the same day as the deadline for these Amended Infringement
`Contentions), the Court issued its claim construction order and accompanying
`memorandum for Caterpillar’s asserted patents. See D.I. 167 and 168. Caterpillar
`believes that the Accused Products infringe under the Court’s claim constructions.
`Caterpillar reserves the right to further amend these infringement contentions in
`light of the Court’s claim constructions if necessary.
`
`
`Ex. 1 at 4.
`
`On March 10 and 14, 2023, the Patent Office instituted IPR proceedings on the ’995 and
`
`’538 patent, respectively. ’995 patent IPR2022-01394-9/IPR2022-01395-9 (IPR institutions);
`
`’538 patent IPR2022-01397-7 (IPR institution).
`
`B.
`
`The Parties Agreed to a Stay and Additional Discovery After the Stay
`
`In light of the IPR institutions, the parties immediately began working towards staying the
`
`case during the pendency of the IPR proceedings. Ex. 2 (Mar. 16, 2023 email); Smith Del. ¶ 4.2
`
`On April 10, 2023, the parties filed a stipulation seeking to stay the case as to the ’538 and ’995
`
`patents, among others. D.I. 185. Although fact discovery had already closed on March 31, 2023,
`
`the stipulation contemplated additional discovery after the stay, including discovery arising from
`
`the parties’ “respective contentions”:
`
`WHEREAS, the parties agreed that … staying those patents would … substantially
`reduce the burden of litigation on the parties (including, without limitation,
`reducing the amount of fact discovery needed regarding the parties’ respective
`contentions and also reducing the amount of expert discovery needed);
`
`Id. at 3; Smith Decl. ¶ 5.
`
`
`2 On Friday, April 7, 2023, Caterpillar served its 4/2023 Infringement Contentions, which only
`amended its contentions for the now dismissed ’618 patent to add the W 207 Fi. Ex. 3. It did not
`amend its contentions regarding the ’995 and ’538 patents, which the parties had already agreed
`to stay and for which the parties filed a stipulated stay on Monday, April 10, 2023. Smith Decl.
`¶ 5. These contentions retained the same reservation of rights as the 3/2023 Infringement
`Contentions.
`
`3
`
`

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`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 8 of 19 PageID #: 39019
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`C.
`
`After the Stay Was Lifted, the Parties Agreed to Supplement Their
`Contentions
`
`The case remained stayed for approximately a year. On March 5, 2024, the Patent Office
`
`issued final written decisions on the ’995 patent, finding that claims 45-63 are not unpatentable.
`
`IPR2022-01394-27/IPR2022-01395-27. On March 12, 2024, it issued its final written decision on
`
`the ’538 patent, finding that claim 13 is not unpatentable. IPR2022-01397-27. On March 13,
`
`2024, Caterpillar notified the Court of these decisions and requested that the stay be lifted with
`
`respect to these two patents. D.I. 350. The parties disputed certain issues related to the lifting of
`
`the stay, including when the stay would be lifted, but agreed there was “discovery that remain[ed]
`
`to be completed.” D.I. 359. Ultimately, the Court lifted the stay on April 1, 2024. D.I. 360.
`
`Two days later, on April 3, 2024, Caterpillar began negotiations with Wirtgen regarding
`
`updating contentions and moving the case forward. Ex. 4 at 11-12; Smith Decl. ¶ 6. Although it
`
`now claims surprise, Wirtgen clearly anticipated that Caterpillar would need to update its asserted
`
`claims because Wirtgen requested that Caterpillar “identify claims you plan to assert considering
`
`the outcomes of the IPRs.” Ex. 4 at 8. Similarly, as early as April 23, 2024, Caterpillar had
`
`provided a preliminary list of additional accused products to facilitate the scheduling of machine
`
`inspections. Id. at 4-5. The parties further agreed to simultaneously update their interrogatory
`
`responses and infringement and invalidity contentions on May 24, 2024. Id. at 6-7; Smith Decl.
`
`¶ 7.
`
`Caterpillar timely supplemented its infringement contentions on the agreed-upon date.3
`
`These contentions dropped asserted claims that had been found unpatentable; added three new
`
`
`3 Caterpillar served its 5/2024 Infringement Contentions on Friday, May 24, 2024 as the parties
`agreed. But this document contained two clerical errors, so Caterpillar served a corrected version
`after the Memorial Day holiday on Tuesday, May 28, 2024. Ex. 5; Smith Decl. ¶ 8.
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 9 of 19 PageID #: 39020
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`claims (49, 54, and 57) for the ’995 patent; and added accused products, including the W 207 Fi
`
`and W 220 XFi for the ’538 patent and several other cold planers and pavers for the ’995 patent.
`
`Ex. 5 at 2, Exhibit A, pg. 1, Exhibit B, pg. 1, and Exhibit C, pg.1; Smith Decl. ¶ 8. On June 13,
`
`2024, Caterpillar served its 6/2024 Infringement Contentions to add a handful of additional
`
`products. Ex. 6; Smith Decl. ¶ 13.
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`For its part, Wirtgen served Amended Final Invalidity Contentions on May 24, 2024,4
`
`which added previously undisclosed invalidity theories.5 Ex. 7; Smith Decl. ¶ 11.
`
`III. ARGUMENT
`A.
`
`Legal Standard
`
`During the parties’ June 14, 2024 status conference, the Court indicated that Caterpillar’s
`
`proposed amendment could be briefed in a motion for leave to amend or motion to strike, but
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`ultimately ordered that Caterpillar submit a motion for leave to amend. D.I. 416. Given their
`
`overlapping elements, Caterpillar discusses both standards below. In any event, Caterpillar
`
`submits that its amendment should be permitted whether the subject of a motion for leave to amend
`
`or motion to strike.
`
`1.
`
`Federal Rule of Civil Procedure 16
`
`Federal Rule of Civil Procedure 16(b)(4) requires good cause and the judge’s consent to
`
`modify a schedule. In evaluating good cause, courts consider “[i] whether the movant has shown
`
`diligence, [ii] the importance of the new information, [iii] evidence of gamesmanship in the
`
`
`4 In acknowledging Wirtgen’s amended invalidity contentions, and the new infringement theories
`cited therein, Caterpillar reserves its right to assert that IPR estoppel should apply to these
`contentions.
`
`5 Wirtgen’s amendment of its invalidity contentions to add new invalidity theories is further
`evidence that the parties did not agree to any limitations of the sort that Wirtgen retroactively seeks
`to attribute to the May 2024 contentions.
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 10 of 19 PageID #: 39021
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`untimely disclosure, [iv] the potential prejudice to the opposing party, and [v] the likelihood of
`
`disruption to the case schedule.” Fraunhofer-Gesellschaft Zur Forderung der angewandten
`
`Forschung e.V. v. Sirius XM Radio Inc., 2022 WL 608143, at *2 (D. Del. Jan. 27, 2022).
`
`It is widely recognized that claim construction orders (and other developments) occurring
`
`after the deadline for infringement contentions provide good cause for amendment. See, e.g.,
`
`Bayer Cropscience AG v. Dow Agrosciences LLC, 2012 WL 12904381, at *1-2 (D. Del. Feb. 27,
`
`2012) (allowing amendment to infringement contentions based on later-exchanged claim
`
`construction proposals); Lambda Optical Sols., LLC v. Alcatel-Lucent USA Inc., 2013 WL
`
`1776104, at *5 (D. Del. Apr. 17, 2013) (infringement contentions that were amended after
`
`production of technical documents were not untimely); ChriMar Sys. v. Cisco Sys., 2015 WL
`
`13449849, at *3 (N.D. Cal. May 14, 2015) (finding good cause to amend infringement contentions
`
`and incorporate additional products in light of court’s claim construction); Apple Inc. v. Samsung
`
`Elecs. Co., 2013 WL 3246094, at *5 (N.D. Cal. June 26, 2013) (“The decision by the court to
`
`adopt a particular construction gives rise to good cause . . . because that difference is material to a
`
`party’s theory of infringement.”); MyMedicalRecords, Inc. v. Quest Diagnostics, Inc., 2014 WL
`
`5810363, at *3-4 (C.D. Cal. Nov. 6, 2014) (finding good cause to amend infringement contentions
`
`based on the court’s claim construction); see also Sprint Commc’ns Co. L.P. v. Charter Commc’ns,
`
`Inc., 2021 WL 982731, at *2 (D. Del. Mar. 16, 2021) (“Infringement contentions are treated as
`
`initial disclosures under Federal Rule of Civil Procedure 26(a) and the party alleging infringement
`
`is permitted to supplement their contentions.”).
`
`Likewise, several district courts, including in the Third Circuit, have enacted local patent
`
`rules that codify a plaintiff’s ability to amend infringement contentions after the issuance of a claim
`
`construction order. For example, the District of New Jersey’s Local Patent Rule 3.7 expressly
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 11 of 19 PageID #: 39022
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`recognizes “a claim construction by the Court different from that proposed by the party seeking
`
`amendment” as an “example[ ] of circumstances that may, absent undue prejudice to the adverse
`
`party, support a finding of good cause” to amend infringement contentions. See also N.D. Cal.
`
`L.P.R. 3.6 (same); D. Mass. L.R. 16.6(d)(5)(A) (same); E.D. Tex. P.R. 3-6(a)(1) (allowing parties
`
`to amend their contentions if they believe the court’s claim construction so requires).
`
`2.
`
`Federal Rules of Civil Procedure 26(e) and 37(c)
`
`While Caterpillar’s motion is for leave to amend the scheduling order, it arose from
`
`Wirtgen’s request to exclude Caterpillar’s 5/2024 and 6/2024 Infringement Contentions as
`
`untimely. Thus, Federal Rule of Civil Procedure 37(c), which governs the exclusion of untimely
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`disclosures, is also instructive: “If a party fails to provide information… as required by Rule 26(a)
`
`or (e), the party is not allowed to use that information . . . to supply evidence on a motion, at a
`
`hearing, or at a trial, unless the failure was substantially justified or is harmless.” Courts in the
`
`Third Circuit apply the Pennypack factors to judge whether a failure was substantially justified or
`
`harmless: “(1) the prejudice or surprise to the party against whom the evidence is offered; (2) the
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`possibility of curing the prejudice; (3) the potential disruption of an orderly and efficient trial; (4)
`
`the presence of bad faith or willfulness in failing to disclose the evidence; and (5) the importance
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`of the information withheld.” Sprint Commc’ns, 2021 WL 982731, at *2.
`
`With respect to infringement contentions in particular, courts have long recognized that
`
`excluding amended infringement contentions is an “an extreme sanction” that should not be
`
`imposed “absent a showing of willful deception or flagrant disregard of a court order by the
`
`proponent of the evidence.” See id.
`
`7
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`

`

`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 12 of 19 PageID #: 39023
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`B.
`
`There is Good Cause for Caterpillar to Supplement Its Infringement
`Contentions
`
`Despite agreeing that the parties could each supplement their contentions on May 24, 2024,
`
`Wirtgen now objects to Caterpillar’s 5/2024 Infringement Contentions, as well as its 6/2024
`
`Infringement Contentions served thereafter. See Smith Decl. ¶¶ 12-13. For the ’995 patent,
`
`Wirtgen object to (i) the addition of new accused products and (ii) the assertion of claims 49, 54,
`
`and 57. Id. For the ’538 patent, Wirtgen objects to the addition of W 207 Fi as an accused product.6
`
`Id.
`
`1.
`
`’995 Patent
`
`Good cause exists for Caterpillar to supplement its infringement contentions with respect
`
`to the ’995 patent.
`
`a)
`
`Caterpillar Diligently Amended Its Contentions
`
`First, upon issuance of the Court’s claim construction order, Caterpillar immediately
`
`recognized the need “to further amend [its] infringement contentions in light of the Court’s claim
`
`constructions.” Ex. 1 at 4. Caterpillar preserved its rights to do so—with no objections from
`
`Wirtgen at the time. Smith Decl. ¶ 3.
`
`Second, since the stay lifted, Caterpillar has diligently analyzed the recently issued IPR
`
`decisions and Wirtgen’s requests for ex parte reexaminations. Smith Decl. ¶ 7. In tandem,
`
`Caterpillar has been evaluating Wirtgen’s product lineup to determine whether there are additional
`
`infringing machines based on the Court’s claim constructions and the Patent Office’s decisions.
`
`Id. Because Wirtgen sells a variety of cold planners and paving machines, reevaluating the
`
`potential infringement of each machine has been a substantial undertaking. Id. at ¶ 7. After timely
`
`
`6 Caterpillar also added the W 220 XFi. Wirtgen has indicated that it does not oppose this addition.
`
`8
`
`

`

`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 13 of 19 PageID #: 39024
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`serving its May 2024 Infringement Contentions, Caterpillar supplemented again on June 13, 2024
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`to add six products that are infringing the ’995 patent. Ex. 6; Smith Decl. ¶ 13.
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`Third, the inclusion of different asserted claims in the agreed-upon May 2024 Infringement
`
`Contentions was precipitated by the Patent Office’s invalidation of some of the originally-asserted
`
`claims. Smith Decl. ¶ 10. Caterpillar had originally asserted only a subset of the ’995 patent
`
`claims due to the limitations of what it could present at trial. Id. However, when the Patent Office
`
`invalidated several of these claims in March 2024, Caterpillar chose to assert alternative claims
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`for which Wirtgen asserted relatively broad interpretations in the IPRs. Id. Wirtgen already had
`
`notice that these claims could be asserted because it had tried (and failed) to invalidate them in the
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`IPR, and recently requested an ex parte reexamination of them.
`
`Finally, although Wirtgen now complains about the scope of Caterpillar’s May 2024
`
`Infringement Contentions, there is no doubt that the parties agreed to that supplementation date
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`and never set any limitations with respect to what claims or products may be added. Smith Decl.
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`¶ 6. With respect to the June 2024 Infringement Contentions, a couple of months is not an
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`unreasonable time to amend lengthy infringement contentions. See, e.g., Lambda Optical Sols.,
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`2013 WL 1776104, at *4 (“[T]he Court does not find Lambda’s supplementation efforts [that took
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`almost five months] to have been unreasonably delayed, in light of: [ ] the significant effort
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`required for Lambda and its expert to review the documents-at-issue and to issue a lengthy
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`supplemental response”). Indeed, a movant does “not have to demonstrate perfect diligence in
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`order to show good cause for an amendment. In other words, just because a motion to amend
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`could have been filed earlier is not a valid reason in and of itself to deny the motion.” Bayer
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`Cropscience, 2012 WL 12904381, at *2.
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`b)
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`The Amendments Are Important to Caterpillar’s Case
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`9
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`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 14 of 19 PageID #: 39025
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`The amendments are important because they greatly impact the scope of this case and
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`enhance Wirtgen’s liability. In total, Caterpillar’s amendments add three new claims; 23 accused
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`products (21 for the ’995 patent and two for the ’538 patent);7 and substantially increase the
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`accused revenue from infringing sales. Wirtgen’s increased exposure also multiplies the potential
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`damages amount, which may total tens of millions of dollars. See ChriMar Sys., 2015 WL
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`13449849, at *3 (finding good cause to amend infringement contentions to incorporate additional
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`accused products).
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`c)
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`Caterpillar Has Not Engaged in Gamesmanship
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`Caterpillar has been upfront and open with both the Court and Wirtgen. Immediately upon
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`receiving the Court’s claim construction, Caterpillar reserved its right to amend its contentions.
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`Ex. 1 at 4. When the stay lifted on April 1, 2024, Caterpillar immediately began negotiating the
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`scope and timing of additional discovery, including agreeing with Wirtgen on a date for both
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`parties to update their contentions. D.I. 360; Smith Decl. ¶¶ 6-7. Over a month, before the parties
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`exchanged their amended contentions, Caterpillar informed Wirtgen that it would be updating its
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`asserted claims and provided a list of additional products it planned on accusing. Ex. 4 at 4-5, 7-
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`8; Smith Decl. ¶¶ 6-7.
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`In contrast, while seeking to exclude Caterpillar’s amended contentions, Wirtgen is
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`amending its own invalidity contentions—without leave of Court—to add new invalidity theories
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`that it failed to disclose either earlier in this case or during the IPR proceedings. Ex. 7 (Wirtgen
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`Amended Final Invalidity Contentions); Smith Decl. ¶ 11. Wirtgen seeks for itself the benefit of
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`7 Because Wirtgen does not object to the addition of the W 220 XFi, only 22 new accused products
`(21 for the ’995 patent and one for the ’538 patent) are at issue in this motion.
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`10
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`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 15 of 19 PageID #: 39026
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`the Court’s claim construction, the Patent Office’s rulings, and additional post-stay discovery,
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`while denying Caterpillar the same. That is not what the parties agreed to. Smith Decl. ¶¶ 6-7.
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`Additionally, Wirtgen has refused to inform Caterpillar the extent to which the recently-
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`accused products are similar or dissimilar to the previously-identified products. Smith Decl. ¶ 13.
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`If the new products are similar, this could limit the additional discovery needed from Wirtgen and
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`further alleviate any claimed prejudice. If the recently-accused products are dissimilar, however,
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`Caterpillar should be entitled to additional discovery in light of the Court’s claim construction.8
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`By refusing to provide information regarding its products, Wirtgen is hampering Caterpillar’s
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`ability to effectively present its case.
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`d)
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`There Will Be No Disruption to the Case Schedule or Prejudice
`to Wirtgen
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`Caterpillar’s amended infringement contentions would not disrupt the case schedule. The
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`parties have always contemplated, and the Court has now ordered, additional post-stay discovery.
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`D.I. 415. The parties have also negotiated, and the Court has now entered, a stipulated schedule.
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`Id. Again, Caterpillar has been diligently pursuing discovery since April, including repeatedly
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`requesting inspections of the additional accused products (or representative products), although
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`Wirtgen has stalled in providing precise dates and locations for the inspections (except for the W
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`220 XFi). Ex. 4; Smith Decl. ¶ 6.
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`With respect to alleged prejudice, fact discovery remains open until August 16, 2024.
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`Wirtgen complains about the number of accused products, but all information about those products
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`is in Wirtgen’s possession. Additionally, from Wirtgen’s telling, much of the information about
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`the accused products is easily accessible through its online portal (WIDOS). To the extent Wirtgen
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`8 Caterpillar has identified for Wirtgen the majority of the discovery it believes should be
`supplemented.
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`11
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`Case 1:17-cv-00770-JDW Document 427 Filed 06/28/24 Page 16 of 19 PageID #: 39027
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`requires any additional discovery, it can seek or collect it through the current discovery period.
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`Wirtgen has also claimed that this amendment would require it to update its own contentions.
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`Smith Decl. ¶ 12. This is hardly irremediable, as no trial date has been set.
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`Finally, Wirtgen claims prejudice because two of the new ’995 patent claims—49 and 51—
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`include means-plus-function elements which would need to be construed. Id. However, the
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`means-plus-function element of claim 51 is also recited in claim 63, which Caterpillar asserted
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`before claim construction. If Wirtgen believed this term needed to be construed, it could have
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`raised it then. Claim 49 does add the term “rotation sensor means,” which is not recited in the
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`previously-asserted claims. However, Wirtgen already proposed a construction of this term in its
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`ex parte reexamination request, including by identifying the function and corresponding structure.9
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`Ex. 8 (’995 Reexamination Request) at 67-68. Caterpillar agrees to this proposed constr