Case 1:17-cv-00770-JDW Document 428-5 Filed 06/28/24 Page 1 of 8 PageID #: 39067
`Case 1:17-cv-00770-JDW Document 428-5 Filed 06/28/24 Page 1 of 8 PagelD #: 39067
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`EXHIBIT 5
`EXHIBIT S5
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`

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`Case 1:17-cv-00770-JDW Document 428-5 Filed 06/28/24 Page 2 of 8 PageID #: 39068
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 17-770-JDW
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`)))))))))))))
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`WIRTGEN AMERICA, INC.,
`Plaintiff,
`
`v.
`CATERPILLAR INC.,
`Defendant.
`
`CATERPILLAR INC.’S THIRD AMENDED INFRINGEMENT CONTENTIONS
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`Defendant and Counterclaim-Plaintiff Caterpillar Inc. (“Caterpillar”) hereby provides its
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`Third Amended Infringement Contentions to Plaintiff and Counterclaim-Defendant Wirtgen
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`America, Inc. (“Wirtgen America”) for U.S. Patent Nos. 7,523,995 (the “’995 Patent”) and
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`9,975,538 (the “’538 Patent”) (collectively, “Caterpillar Patents”):1
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`Asserted Patent
`’995 Patent
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`’538 Patent
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`Claim Chart(s)2
`Exhibit A (Slip Form Pavers)
`Exhibit B (Cold Planers)
`Exhibit C
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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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`1 Caterpillar reserves its right to appeal the Court’s summary judgment determination
`regarding U.S. Patent No. 9,371,618 and maintains its previous infringement contentions to the
`extent that the patent is remanded.
`
`2 The claim charts have been designated “Highly Confidential – Outside Attorneys’ Eyes
`Only” based on quotations from documents designated as such by Wirtgen America.
`Caterpillar takes no position on whether those documents were properly designated.
`
`-1-
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`

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`Case 1:17-cv-00770-JDW Document 428-5 Filed 06/28/24 Page 3 of 8 PageID #: 39069
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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 identified in
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`Exhibits A and B, to the extent made, used, sold, and/or offered for sale in the
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`United States and/or imported into the United States since at least October 14,
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`2015 (i.e., six years before the filing of Caterpillar’s Counterclaims on October
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`14, 2021) infringe claims 45, 49, 54, 57, 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 identified in Exhibit
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`C, to the extent made, used, sold, and/or offered for sale in the United States
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`and/or imported into the United States since at least May 22, 2018 infringe claim
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`13.
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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
`
`-2-
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`

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`Case 1:17-cv-00770-JDW Document 428-5 Filed 06/28/24 Page 4 of 8 PageID #: 39070
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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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`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 review source code for the Accused Products, and inspect the Accused
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`Products. Caterpillar reserves the right, consistent with the Federal Rules of Civil Procedure, the
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`Local Rules and Standing Orders of the District of Delaware, and the operative Scheduling Order,
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`to amend its infringement contentions to assert additional claims, additional accused products,
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`and update its infringement theories as additional evidence and information become available or
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`as otherwise appropriate, such as after any supplemental claim construction has taken place
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`-3-
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`

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`Case 1:17-cv-00770-JDW Document 428-5 Filed 06/28/24 Page 5 of 8 PageID #: 39071
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`and/or in the event that discovery reveals additional evidence of infringement, or for any other
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`reason as permitted by the Court.
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`Dated: May 28, 2024
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`WILSON SONSINI GOODRICH & ROSATI, P.C.
`
`By: /s/ Ryan R. Smith
`Ryan R. Smith
`Attorneys for Defendant Caterpillar Inc.
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`-4-
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`

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`Case 1:17-cv-00770-JDW Document 428-5 Filed 06/28/24 Page 6 of 8 PageID #: 39072
`HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY
`SUBJECT TO PROTECTIVE ORDER
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`Exhibit A – U.S. Pat. No. 7,523,995 (“the ’995 patent”) – Slipform Pavers
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`Wirtgen America, Inc.’s (“Wirtgen America”) SP 62i, SP 64i, SP 80i, SP 82i, SP 84i, SP 92i, SP 94i, SP 102i, and SP 124i slipform paver machines
`with pivoting track units and the feature(s) that Wirtgen America has referred to as “worm gear steering,” “slewing crawler units,” and/or “hydraulic
`rotational drives” (collectively, “Accused Products”) infringe at least the claims of the ’995 patent included in this chart.1
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`’995 Patent Claim Language
`45. A self-propelled machine, comprising:
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`Accused Products
`The Accused Products are self-propelled machines.
`For example, Wirtgen America SP 64i machines have an engine that propels the machine
`using tracks, as shown below.
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`E.g., SP 64i Brochure at 1.
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`Track
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`1 To the extent it is argued that any claim element is not literally present in the Accused Products, then the Accused Products still infringe under the
`doctrine of equivalents. Expert discovery will reveal that these differences are immaterial because, for example, the Accused Products’ perform
`substantially the same function (to move the ground engaging unit) in substantially the same way (through the use of an actuator) to achieve
`substantially the same result (the ground engaging unit is moved).
`
`-1-
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`

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`Case 1:17-cv-00770-JDW Document 428-5 Filed 06/28/24 Page 7 of 8 PageID #: 39073
`HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY
`SUBJECT TO PROTECTIVE ORDER
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`Exhibit B – U.S. Pat. No. 7,523,995 (the “’995 patent”) – Cold Planers
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`Wirtgen America Inc.’s (“Wirtgen America”) W 100 CF, W 120 CF, W 130 CF, W 100 CFi, W 120 CFi, and W 130 CFi, W 100 XFi, W 120 XFi, W
`130 XFi, W 100 Fi, W 120 Fi, W 130 Fi Cold Milling Machines (collectively, “Accused Products”) infringe claims 45, 49, 57, 60, and 63 of the ’995
`patent. Exemplary information regarding Wirtgen America’s infringement of the ’995 patent is listed as follows and is cited throughout the following
`exemplary claim chart: 1
`1. Wirtgen webpage “W 100 CFi Cold milling machines” (“W 100 CFi Webpage”)
`2. Wirtgen Brochure for W 100 CF, W 100 CFi, W 120 CF, W 120 CFi, W 130 CF, W 130 CFi, available at https://www.wirtgen-
`group.com/binary/full/o19217v77_W_brochure_W100CFW100CFiW120CFW120CFiW130CFW130CFi_0520_V2_EN.pdf (“W 120 CFi
`Brochure”)
`3. Wirtgen Instruction Manual for Cold Milling Machine W 100/120/130 CFi/XFi / W 120 XTi (“W 120 CFi Instruction Manual”): WA-
`0018460 - WA-0018938;
`4. Wirtgen Spare Parts Catalogue W 100/120/130 CFi/XFi / W 120 XTi (“W 120 CFi Spare Parts Catalogue”): WA-0019167 - WA-0020107;
`5. Wirtgen Track unit positions video, Example: Cold Milling Machine W 100 CFi, WIRTGEN YouTube page,
`https://www.youtube.com/watch?v=Oev676HM4eY (“CFI Track Unit Positions”)
`6. Source Code: WA-SRC-0000256 – WA-SRC-0000262, WA-SRC-0000294 – WA-SRC-0000378, WA-SRC-0000396 – WA-SRC-0000399.
`7. WIDOS Spare Parts Catalog and Wiring Diagrams.
`
`Accused Products
`’995 Patent Claim Language
`45. A self-propelled machine, comprising: The Accused Products are a self-propelled machines.
`For example, Wirtgen CFi series cold milling machines have an engine that propels the machine
`using tracks, as shown below.
`
`1 To the extent it is argued that any claim element is not literally present in the Accused Products, then the Accused Products still infringe under the
`doctrine of equivalents. Expert discovery will reveal that these differences are immaterial because, for example, the Accused Products’ perform
`substantially the same function (to move the ground engaging unit) in substantially the same way (through the use of an actuator) to achieve
`substantially the same result (the ground engaging unit is moved).
`
`

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`Case 1:17-cv-00770-JDW Document 428-5 Filed 06/28/24 Page 8 of 8 PageID #: 39074
`HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY
`SUBJECT TO PROTECTIVE ORDER
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`Exhibit C – U.S. Pat. No. 9,975,538 (“the ’538 patent”)
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`Wirtgen’s W 207 Fi, W 210 Fi, W 220 Fi and W 220 XFi cold planer machines (collectively, “Accused Products”) infringe claim 13 of the ’538
`patent. Exemplary information regarding Wirtgen’s infringement of the ’538 patent is listed below and cited throughout the following exemplary
`claim chart:1
`1. Wirtgen 210 Fi Brochure: CAT-770_023838 - CAT-770_023877
`2. Wirtgen Product Animation: https://www.youtube.com/watch?v=Hsf3ANGX0Po
`3. Wirtgen Website: CAT-770_023878 - CAT-770_023901
`4.
`Instruction Manual: WA-0014280 - WA-0014784
`5. Hydraulic Diagram: WA-0015923 - WA-0015954
`6. Spare Parts Catalog: WA-0015092 - WS-0015922
`7. Source Code: WA-SRC-0000077 - WA-SRC-0000098, WA-SRC-0000263 - WA-SRC-0000293, WA-SRC-0000379 - WA-SRC-0000385
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`’538 Patent Claim Language
`6. A machine, comprising:
`[6.a] an engine;
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`Accused Products
`The Accused Products include an engine:
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`1 To the extent it is argued that any claim element is not literally present in the Accused Products, then the Accused Products still infringe under the
`doctrine of equivalents. Expert discovery will reveal that these differences are immaterial because, for example, the Accused Products’ perform
`substantially the same function (to move the ground engaging unit) in substantially the same way (through the use of an actuator) to achieve
`substantially the same result (the ground engaging unit is moved).
`
`