Case 1:17-cv-00770-JDW Document 428-3 Filed 06/28/24 Page 1 of 6 PageID #: 39047
`Case 1:17-cv-00770-JDW Document 428-3 Filed 06/28/24 Page 1 of 6 PagelD #: 39047
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`EXHIBIT 3
`EXHIBIT 3
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`Case 1:17-cv-00770-JDW Document 428-3 Filed 06/28/24 Page 2 of 6 PageID #: 39048
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 17-770-RGA-MPT
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`)))))))))))))
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`WIRTGEN AMERICA, INC.,
`Plaintiff,
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`v.
`CATERPILLAR INC.,
`Defendant.
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`CATERPILLAR INC.’S SECOND AMENDED INFRINGEMENT CONTENTIONS
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`Pursuant to the Scheduling Order (D.I. 28), Paragraph 4(c) of the District of Delaware
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`Default Standard for Discovery Including Discovery of Electronically Stored Information
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`(“ESI”), and the parties’ agreement regarding the W 207 Fi, Defendant and Counterclaim-
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`Plaintiff Caterpillar Inc. (“Caterpillar”) hereby provides its Second Amended Infringement
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`Contentions to Plaintiff and Counterclaim-Defendant Wirtgen America, Inc. (“Wirtgen
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`America”) for U.S. Patent Nos. 7,523,995 (the “’995 Patent”), 9,975,538 (the “’538 Patent”), and
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`9,371,618 (the “’618 Patent”) (collectively, “Caterpillar Patents”):1
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`Asserted Patent
`’995 Patent
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`Claim Chart(s)2
`Exhibit A (Slip Form Pavers)
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`1 The only change to these Second Amended Infringement Contentions is to list the W 207
`Fi as an accused product to the ’618 Patent per the parties’ agreement. Caterpillar has therefore
`prepared this updated cover pleading and an updated Exhibit D (claim chart for the ’618
`Patent). For brevity, Caterpillar is not serving Exhibits A-C with these Second Amended
`Infringement Contentions as those exhibits have no changed since Caterpillar’s First Amended
`Infringement contentions served on March 10, 2023 (and that version of Exhibits A-C remain
`effective). The parties have agreed that the W 210 Fi is representative of the W 207 Fi.
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`2 The claim charts have been designated “Confidential” based on quotations from
`documents designated as such by Wirtgen America. Caterpillar takes no position on whether
`those documents were properly designated.
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`-1-
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`Case 1:17-cv-00770-JDW Document 428-3 Filed 06/28/24 Page 3 of 6 PageID #: 39049
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`’538 Patent
`’618 Patent
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`Exhibit B (Cold Planers)
`Exhibit C
`Exhibit D
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`Caterpillar contends that Wirtgen America, either alone or in conjunction with others, has
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`infringed and continues to infringe, directly and/or indirectly, at least the referenced claims of
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`the Caterpillar Patents under 35 U.S.C. § 271(a)-(c), by making, using, selling, and/or offering
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`for sale in the United States and/or importing into the United States the following “Accused
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`Products”:
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`
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`’995 Patent: Wirtgen America’s paver machines and cold planer machines with
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`pivoting track units, including, without limitation, model numbers SP 64i, SP 94i,
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`SP 124i, W 100 CFi, W 120 CFi, and W 130 CFi to the extent made, used, sold,
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`and/or offered for sale in the United States and/or imported into the United States
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`since at least October 14, 2015 (i.e., six years before the filing of Caterpillar’s
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`Counterclaims on October 14, 2021) infringe at least claims 18, 21, 27, 30, 35,
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`45, 60, and 63;
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`
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`’538 Patent: Wirtgen America’s cold planer machines having a multi-speed
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`transmission, including, without limitation, model numbers W 210 Fi and
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`W 220 Fi to the extent made, used, sold, and/or offered for sale in the United
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`States and/or imported into the United States since at least May 22, 2018 infringe
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`at least claims 1, 3, 4, 6, 11, and 13; and
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`
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`’618 Patent: Wirtgen America’s cold planer machines having an electronically
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`controlled water system, including, without limitation, model numbers W 207 Fi,
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`W 210 Fi, W 220 Fi, and W 250 Fi to the extent made, used, sold, and/or offered
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`for sale in the United States and/or imported into the United States since at least
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`-2-
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`Case 1:17-cv-00770-JDW Document 428-3 Filed 06/28/24 Page 4 of 6 PageID #: 39050
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`the filing of Caterpillar’s Counterclaims on October 14, 2021 infringe at least
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`claims 1, 7, 8, and 14.
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`Caterpillar’s Amended Infringement Contentions identify where each limitation of the
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`asserted claims of the Caterpillar Patents is met with respect to each Accused Product. Where
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`Caterpillar cites documents or other evidence in support of its infringement contentions,
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`Caterpillar has identified exemplary evidence for each claim limitation and reserves its right to
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`rely upon additional or alternative evidence as the case proceeds. Caterpillar has cited
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`representative portions of identified references for the Accused Products even where a particular
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`reference may contain additional examples of infringement for a claim element. Similarly,
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`Caterpillar has identified examples of product testing where such testing may provide additional
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`evidence of infringement. Where a claim element is implemented in the same or substantially
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`the same way for each product of an Accused Product family, Caterpillar provides an exemplary
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`illustration or description setting forth specifically where the limitation is found in the Accused
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`Product, without necessarily repeating the same illustration or description for each version of
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`each Accused Product in the family. To the extent Caterpillar’s infringement contentions do not
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`cite support for each model, such an omission of evidence shall not be construed as an admission
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`of non-infringement or a waiver of the right to rely on such evidence at a later date.
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`Caterpillar contends that each element of each asserted claim is literally met with respect
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`to each Accused Product unless otherwise indicated. But to the extent that any claim element is
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`found not to be literally met with respect to the Accused Products, Caterpillar contends that the
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`element is met under the doctrine of equivalents because there are no substantial differences
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`between the element and the Accused Products, and the element and the Accused Products
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`-3-
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`Case 1:17-cv-00770-JDW Document 428-3 Filed 06/28/24 Page 5 of 6 PageID #: 39051
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`perform substantially the same function, in substantially the same way, to achieve substantially
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`the same result.
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`Caterpillar’s Amended Infringement Contentions are based upon information reasonably
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`and presently available to Caterpillar through publicly available information and Wirtgen
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`America’s production of documents to date. Caterpillar’s investigation is ongoing and discovery
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`is not yet complete. For example, Wirtgen America’s document production remains deficient;
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`Caterpillar still expects to receive technical presentations, review source code for the Accused
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`Products, and inspect the Accused Products. Caterpillar reserves the right, consistent with the
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`Federal Rules of Civil Procedure, the Local Rules and Standing Orders of the District of
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`Delaware, and the Court’s Scheduling Order (D.I. 28), to amend its infringement contentions to
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`assert additional patents and/or claims, additional accused products, and update its infringement
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`theories as additional evidence and information become available or as otherwise appropriate,
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`such as after claim construction has taken place and/or in the event that discovery reveals
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`additional evidence of infringement, or for any other reason as permitted by the Court.
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`On March 10, 2023 (the same day as the deadline for these Amended Infringement
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`Contentions), the Court issued its claim construction order and accompanying memorandum for
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`Caterpillar’s asserted patents. See D.I. 167 and 168. Caterpillar believes that the Accused
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`Products infringe under the Court’s claim constructions. Caterpillar reserves the right to further
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`amend these infringement contentions in light of the Court’s claim constructions if necessary.
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`-4-
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`Case 1:17-cv-00770-JDW Document 428-3 Filed 06/28/24 Page 6 of 6 PageID #: 39052
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`Dated: April 7, 2023
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`WILSON SONSINI GOODRICH & ROSATI, P.C.
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`By: /s/ Christopher D. Mays
`Christopher D. Mays
`cmays@wsgr.com
`Attorneys for Defendant Caterpillar Inc.
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`-5-
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