Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 1 of 38 PageID #: 39080
`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 1 of 38 PagelD #: 39080
`
`EXHIBIT 7
`EXHIBIT 7
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 2 of 38 PageID #: 39081
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Plaintiff/Counterclaim-Defendant,
`
`
`
`v.
`
`Defendant/Counterclaim-Plaintiff.
`
`
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’
`EYES ONLY
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`
`CATERPILLAR INC.,
`
`
`
`
`
`
`PLAINTIFF/COUNTERCLAIM-DEFENDANT WIRTGEN AMERICA, INC.’S
`AMENDED FINAL INVALIDITY CONTENTIONS
`
`Pursuant to the Court’s instructions during the parties’ April 1, 2024 hearing,
`
`Plaintiff/Counterclaim-Defendant Wirtgen America, Inc. (“Plaintiff,” “Wirtgen,” or “Wirtgen
`
`America”) provides these Amended Final Invalidity Contentions (“Wirtgen America’s Amended
`
`Final Invalidity Contentions”) to Defendant/Counterclaim-Plaintiff Caterpillar Inc. (“Defendant”
`
`or “Caterpillar”), in response to Caterpillar’s Amended Identification of Asserted Claims, dated
`
`May 10, 2024, and in anticipation of Caterpillar’s Amended Infringement Contentions, dated
`
`May 24, 2024 (“Caterpillar’s Amended Infringement Contentions”).
`
`I.
`
`RESERVATION OF RIGHTS
`
`A.
`
`Construction of Caterpillar’s Amended Infringement Contentions
`
`Caterpillar alleges infringement of the following claims of Caterpillar’s Asserted Patents:
`
`•
`
`•
`
`U.S. Patent No. 7,523,995 (“the ’995 patent”): claims 45, 46, 49, 57, 60, and 63;
`and
`
`U.S. Patent No. 9,975,538 (“the ’538 patent”): claim 13.
`
`Wirtgen America’s Amended Final Invalidity Contentions are based upon Wirtgen
`
`America’s current understanding of the asserted claims, the Court’s Claim Construction Order
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 3 of 38 PageID #: 39082
`
`(D.I. 167), and Caterpillar’s apparent application of those claim constructions. Because
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`Caterpillar is serving its Amended Infringement Contentions simultaneously with the service of
`
`these Amended Final Invalidity Contentions, Wirtgen America reserves the right to modify,
`
`amend, or supplement these Amended Final Invalidity Contentions.
`
`By including prior art that would anticipate or render obvious the asserted claims based
`
`on Caterpillar’s application of the claims, Wirtgen America is not conceding that Caterpillar’s
`
`interpretation is correct. To the extent Wirtgen America’s Amended Final Invalidity Contentions
`
`reflect positions consistent with or implicit in Caterpillar’s Infringement Contentions and any
`
`supplements or amendments thereto, neither by implication nor interpretation should it be drawn
`
`that Wirtgen America agrees with Caterpillar’s interpretation or understanding of any claim
`
`limitation under a theory of literal infringement or under a theory of infringement by doctrine of
`
`equivalents, and Wirtgen America expressly reserves the right to challenge, contest, or dispute
`
`Caterpillar’s reading, interpretation, or understanding of such claim limitations.
`
`Moreover, Caterpillar’s infringement contentions to date lack proper and complete
`
`disclosure as to the purported infringement of each of the asserted claims, with respect to
`
`Wirtgen America’s accused products. Accordingly, Wirtgen America reserves the right to further
`
`modify, supplement, amend, or correct Wirtgen America’s Amended Final Invalidity
`
`Contentions, including the prior art disclosed and the stated grounds of invalidity.
`
`B.
`
`Expert Discovery
`
`Wirtgen America reserves the right to modify, correct, amend, or supplement Wirtgen
`
`America’s Amended Final Invalidity Contentions depending upon the positions that Caterpillar
`
`or its experts take concerning claim construction, infringement, and/or invalidity issues.
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 4 of 38 PageID #: 39083
`
`C.
`
`Prior Art – ’995 patent
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`Each of the asserted claims of the ’995 patent is anticipated or rendered obvious in view
`
`of one or more items of prior art (alone and/or in combination thereof). The prior art discloses
`
`the elements of the asserted claims of the ’995 patent, either explicitly or inherently. Wirtgen
`
`America may also rely upon the prior art to show the state of the art in the relevant timeframe for
`
`the ’995 patent. Prior art not included in these contentions, whether known or not known to
`
`Wirtgen America, may become relevant. In particular, Wirtgen America is currently unaware of
`
`the extent, if any, to which Caterpillar will contend that limitations of the asserted claims are not
`
`disclosed in the prior art identified in Wirtgen America’s Amended Final Invalidity Contentions.
`
`Accordingly, Wirtgen America reserves the right to identify other references that would
`
`anticipate and/or render obvious the allegedly missing limitation(s) of the disclosed
`
`apparatus(es), system(s), and/or method(s).
`
`Wirtgen America identifies exemplary portions of prior art references that disclose the
`
`elements of the asserted claims. In an effort to focus the issues, Wirtgen America identifies only
`
`limited portions of the cited references. Although Wirtgen America has identified at least one
`
`citation per element for each reference, each and every disclosure of the same element in said
`
`reference has not been identified. It should be recognized that a person of ordinary skill in the art
`
`must read a prior art reference as a whole and in the context of other publications, literature, and
`
`general knowledge in the field. To understand and interpret any specific statement or disclosure
`
`in a prior art reference, a person of ordinary skill in the art would rely upon other information
`
`including other publications and general scientific or engineering knowledge.
`
`Where Wirtgen America identifies a particular figure in a prior art reference, the
`
`identification should be understood to encompass the caption and description of the figure as
`
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 5 of 38 PageID #: 39084
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`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`well as any text relating to the figure in addition to the figure itself. Similarly, where an
`
`identified portion of text refers to a figure or other material, the identification should be
`
`understood to include the referenced figure or other material as well.
`
`Investigation in this case is progressing and limited discovery is ongoing. As such,
`
`Wutgen America anticipates that additional prior art may be found. Wirtgen America expressly
`
`reserves the right to modify, amend, supplement, and/or correct the information provided in
`
`Wutgen America’s Amended Final Invalidity Contentions, including identifying, charting, and
`
`relying on additional references, should such prior art be found.
`
`工 .
`
`Prior Art Patents, Published Patent Applications, and Publications
`
`The following patents and published patent applications are prior art under 35 U.S.C.
`
`§§ 102(a), (b), and/or (e) (Pre-AIA) and are relied upon in these contentions.
`
`
`
`
`
`Name
`Skotnikov
`
`pane ion
`3 11.79 N°
`
`To Bates Numbers
`| November 6, 2001 | WA-0032166
`
`
`
`Feliz
`
`ot 1 CDG 9
`
`September 1
`
`|
`
`WA-0031995
`
`
`
`Piccoli
`
`oy on eon
`
`aaron oS
`
`WA-0031896
`
`
`
`Titford
`
`ue 135.766
`
`August 20,2002
`
`|
`
`WA-0032183
`
`
`
`Whitaker
`
`oe 1 本 a
`
`July 7, 1992
`
`WA-0032133
`
`
`
`
`
`
`
`
`
`
`
`
`
`Gutman 人 October 22, 1974
`Bitelli 088
`EP 1001088
`May 17 2000
`,693 Patent
`7 110.693 ”
`November 28,
`
`| WA-0031941
`WA-0031855
`| CAT-770 070258
`
`
`
`Bitelli 037
`
`EP 1039037
`
`Dubay
`
`WO 2002/0103117A1
`
`aren a
`
`Decemoet ils
`
`WA-0031868
`
`WA-0032280
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 6 of 38 PageID #: 39085
`
`The following publications are prior art under 35 U.S.C. §§ 102(a) and/or (b) and are
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`relied upon in these contentions.
`
`
`
`Name
`
`
`
`Issue or Pub.
`Date
`
`Bates Numbers
`
` Commander III New Generation
`Trimmer/Paver Operator/Service Manual
`GOMACO_0000361-
`April 2002
`G21 Controls (“GCI Manual NC-3N0402-
`
`
`
`
`
`| GOMACO_00000788
`
`
`
`Cc 1 7)
`
`
`
`2:
`
`Prior Art Public Uses/Sales/Offers for Sale
`
`The following products are prior art under 35 U.S.C. § 102(a) and (b) (Pre-AIA) and are
`
`relied upon in these contentions.
`
`
`
` Product Name Description
`
` CMI SF-2204 The CMI SF2204 qualifies as prior art under
`
`at least 35 U.S.C. §§ 102(a) and 102(b)
`because it was known or used by others in
`this country, in public use in this country, on
`sale in this country, and/or otherwise
`available to the public in this country more
`than one year before the 995 patent’s July
`14, 2005 filing date.!
`The Bitelli SF102C qualifies as prior art
`under at least 35 U.S.C. §§ 102(a) and 102(b)
`because it was known or used by others in
`this country, in public use in this country, on
`sale in this country, and/or otherwise
`available to the public in this country more
`than one year before the July 14, 2005 filing
`date of US 7,523,995.?
`
`Bitelli SF102C
`
`
`
`
`
`
`
`
`
`
`
`1 See, e.g., CMI Roadbuilding00757, CMI Roadbuilding00762, CMI Roadbuilding00765,
`CMI Roadbuilding00771, CMI Roadbuilding00774, CMI Roadbuilding00781. Wirtgen may also
`rely on additional expert testimony, witness testimony, responses to interrogatories, and
`responses to requests for admission.
`
`2 See, e.g., CAT20266576, CAT20271434, CAT20266582, CAT20266614, CAT20266617,
`CAT20266629, CAT20266558, CAT20266588, CAT20266586, CAT20266608, CAT20266621,
`CAT20266627, CAT20266631, CAT20266594, CAT20266598, CAT20266600, CAT20266584,
`CAT20266606, CAT20266625, CAT20266602, CAT20266604, CAT20266623, CAT20266596,
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 7 of 38 PageID #: 39086
`
`GOMACO Commander III
`
`CMI PR260 Spitfire
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`The GOMACO Commander III qualifies as
`prior art under at least 35 U.S.C. §§ 102(a)
`and 102(b) (pre-AIA) because it was known
`or used by others in this country, in public
`use in this country, on sale in this country,
`and/or otherwise available to the public in
`this country more than one year before the
`July 14, 2005 filing date of US 7,523,995.3
`The CMI PR260 Spitfire qualifies as prior art
`under at least 35 U.S.C. §§ 102(a) and 102(b)
`(pre-AIA) because it was known or used by
`others in this country, in public use in this
`country, on sale in this country, and/or
`otherwise available to the public in this
`country more than one year before the July
`14, 2005 filing date of US 7,523,995.4
`
`D.
`
`Prior Art – ’538 patent
`
`Each of the asserted claims of the ’538 patent is anticipated or rendered obvious in view
`
`of one or more items of prior art (alone and/or in combination thereof). The prior art discloses
`
`the elements of the asserted claims of the ’538 patent, either explicitly or inherently. Wirtgen
`
`America may also rely upon the prior art to show the state of the art in the relevant timeframe for
`
`the ’538 patent. Prior art not included in these contentions, whether known or not known to
`
`Wirtgen America, may become relevant. In particular, Wirtgen America is currently unaware of
`
`
`CAT20266612, CAT20266619, CAT20267609, CAT20266590, CAT20266592, CAT20266580,
`CAT20266610, CAT20271438, CAT20266548, CAT20266564, WV-1088-00477138, WV-
`1088-00477139. Wirtgen may also rely on additional expert testimony, witness testimony,
`responses to interrogatories, and responses to requests for admission.
`
`3 See, e.g., GOMACO_00000071, GOMACO_00000078, GOMACO_00001636,
`GOMACO_00001640. Wirtgen may also rely on additional expert testimony, witness testimony,
`responses to interrogatories, and responses to requests for admission.
`4 See, e.g., CMI Roadbuilding00779, CMI Roadbuilding00781, CMI Roadbuilding00782,
`CMI Roadbuilding00783, CMI Roadbuilding00787, CMI Roadbuilding00793. Wirtgen may also
`rely on additional expert testimony, witness testimony, responses to interrogatories, and
`responses to requests for admission.
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 8 of 38 PageID #: 39087
`
`the extent, if any, to which Caterpillar will contend that limitations of the asserted claims are not
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`disclosed in the prior art identified in Wirtgen America’s Amended Final Invalidity Contentions.
`
`Accordingly, Wirtgen America reserves the right to identify other references that would
`
`anticipate and/or render obvious the allegedly missing limitation(s) of the disclosed
`
`apparatus(es), system(s), and/or method(s).
`
`Wirtgen America identifies exemplary portions of prior art references that disclose the
`
`elements of the asserted claims. In an effort to focus the issues, Wirtgen America identifies only
`
`limited portions of the cited references. Although Wirtgen America has identified at least one
`
`citation per element for each reference, each and every disclosure of the same element in said
`
`reference has not been identified. It should be recognized that a person of ordinary skill in the art
`
`must read a prior art reference as a whole and in the context of other publications, literature, and
`
`general knowledge in the field. To understand and interpret any specific statement or disclosure
`
`in a prior art reference, a person of ordinary skill in the art would rely upon other information
`
`including other publications and general scientific or engineering knowledge.
`
`Where Wirtgen America identifies a particular figure in a prior art reference, the
`
`identification should be understood to encompass the caption and description of the figure as
`
`well as any text relating to the figure in addition to the figure itself. Similarly, where an
`
`identified portion of text refers to a figure or other material, the identification should be
`
`understood to include the referenced figure or other material as well.
`
`Investigation in this case is progressing and discovery is ongoing. As such, Wirtgen
`
`America anticipates that additional prior art may be found. Wirtgen America expressly reserves
`
`the right to modify, amend, supplement, and/or correct the information provided in Wirtgen
`
`7
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 9 of 38 PageID #: 39088
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`America’s Amended Final Invalidity Contentions, including identifying, charting, and relying on
`
`additional references, should such prior art be found.
`
`i.
`
`Prior Art Patents and Published Patent Applications
`
`The following patents and published patent applications are prior art under 35 U.S.C.
`
`§§ 102(a) and/or (b) (AIA) and are relied upon in these contentions.
`
`
`
`Name
`
`Patent or
`Publication
`
`Issue or Pub.
`Date
`
`Bates Numbers
`
`
`
`a9
`Sheidler
`
`U.S. Patent No. 9,
`975.538
`
`，
`July 15, 2014
`
`WA-0035378
`
`
`
`1.
`Parker
`
`US. Patent No.
`8,465,105
`
`June 18, 2013
`
`WA-0035338
`
`
`
`Willis
`
`U.S. Patent App. Pub.
`No. 2010/0014917
`
`January 21, 2010
`
`WA-0035511
`
`
`
`
`
`U.S. Patent No.
`9.864.347
`
`January 9, 2018
`
`WA-0035422
`
`U.S. Patent App.
`Publ. No.
`2015/0091363
`USS. Patent No.
`8.622.871
`
`April 2, 2015
`
`January 7, 2014
`
`WA-0035656
`
`WA-0035349
`
`
`
`
`
`
`
`Laux
`
`Schomaker
`
`Hoff
`
`
`
`
`
`
`
`2:
`
`Prior Art Public Uses/Sales/Offers for Sale
`
`The following systems are prior art under 35 U.S.C. § 102(a) (ATA) and are relied upon
`
`in these contentions.
`
`
`
` Product or System Name Description
`
` Wiutgen W220 milling machine The Wirtgen W220 milling machine was in
`
`public use, on sale, or otherwise available to
`the public before at least May 18, 2015, and
`is thus prior art under at least 35 U.S.C. §
`102(a) (AIA). °
`
`
`
`
`
`
`
`
`
`
`
`> See, e.g., WA-0133806. Wirtgen may also rely on additional expert testimony, witness
`testimony, responses to interrogatories, and responses to requests for admission.
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 10 of 38 PageID #: 39089
`
`
`
`Product or System Name
`
`Description
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`
`| The JD8370R was in public use, on sale, or
`John Deere 8370R tractor equipped with the
`AutoPowr™/IVT™ transmission (“JD8370R”) | otherwise available to the public before at
`least May 18, 2015, and is thus prior art
`under at least 35 U.S.C. § 102(a) (AIA). °
`
`
`
`
`
`
`
`For the systems identified above, Wirtgen America is investigating the identities of the
`
`individuals who knew about and/or were involved in the making, first public use, offer for sale
`
`and/or sale of these systems. Wirtgen America is also investigating the exact date that these
`
`systems were first made, first publicly used, offered for sale and/or sold. In addition, Wirtgen
`
`America is currently investigating the dates of conception and reduction to practice of these
`
`systems and when these systems were first known or used by others. In the course of its
`
`investigation, and during discovery, Wirtgen America may identify additional prior art
`
`documents describing these systems, and take testimony thereon, and Wirtgen America reserves
`
`the right to rely on such additional documentation and testimony about these systems. In
`
`addition, that discovery may reveal additional prior art systems. Any citation to one or more of
`
`these prior art references, or other prior art references regarding these systems should be
`
`construed to constitute not only a citation to the prior art reference itself, but also a reference to
`
`the system itself.
`
`E.
`
`Other Reservations
`
`Wirtgen America reserves the right to rely on inventor’s (or applicant’s, or assignee’s)
`
`admissions concerning the scope or state of the prior art relevant to the asserted claims of the
`
`
`6 See, e.g., DEERE28266, DEERE28267, DEERE28233. Wirtgen may also rely on
`additional expert testimony, witness testimony, responses to interrogatories, and responses to
`requests for admission.
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 11 of 38 PageID #: 39090
`
`’995 and ’538 patents; the prosecution histories for the ’995 and ’538 patents (including all cited
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`references), as well as related patents and/or patent applications; any deposition or trial testimony
`
`of the named inventors on the ’995 and ’538 patents; and the papers filed and any evidence
`
`produced or submitted by Caterpillar in connection with this or related litigation. Wirtgen
`
`America also reserves the right to rely on the “Background of the Invention,” the “Summary of
`
`the Invention,” and other relevant portions of the ’995 and ’538 patents, and fact and expert
`
`testimony about the prior art to prove that the asserted claims are invalid.
`
`F.
`
`General Reservations
`
`Wirtgen America notes that its disclosure obligations, pursuant to the Default Standard,
`
`are limited by the Federal Rules of Civil Procedure, the Local Rules for the District of Delaware,
`
`and any governing case law.
`
`Wirtgen America further reserves the right to modify, correct, supplement, or amend
`
`Wirtgen America’s Amended Final Invalidity Contentions in response to: (i) any amendment or
`
`supplement by Caterpillar of Caterpillar’s Amended Infringement Contentions; (ii) arguments
`
`made and positions taken by Caterpillar during fact or expert discovery; (iii) any original or
`
`rebuttal expert report; or (iv) any rebuttal evidence offered or submitted by Caterpillar or as
`
`otherwise may be necessary or appropriate under the circumstances.
`
`II.
`
`INVALIDITY
`
`Each asserted claim of the ’995 and ’538 patents, as identified by Caterpillar on
`
`May 10, 2024, is invalid at least because each asserted claim: (i) fails to qualify as patent-eligible
`
`subject matter under 35 U.S.C. § 101, (ii) is anticipated under 35 U.S.C. § 102 or rendered
`
`obvious under 35 U.S.C. § 103, (iii) fails to satisfy the written description, definiteness, and/or
`
`10
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 12 of 38 PageID #: 39091
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`enablement requirements under 35 U.S.C. § 112, and/or (iv) are invalid based on non-statutory
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`double patenting, including (but not limited to) obviousness-type double patenting.
`
`To the extent Caterpillar contends that any of the grounds set forth below are subject to
`
`IPR estoppel, Wirtgen could not have reasonably raised the grounds identified in these
`
`Contentions in the IPR petitions for the ’995 and ’538 patents. See 35 U.S.C. § 315(e)(2). And
`
`Caterpillar bears the burden of proof to “show that each and every material limitation present in
`
`the physical device is disclosed in the estopped reference.” Bos. Sci. Corp. v. Cook Grp. Inc., 653
`
`F. Supp. 3d 541, 594 (S.D. Ind. 2023). Caterpillar has the burden “to show why said limitation is
`
`(1) either not material or (2) is in fact specifically disclosed in the estopped reference.” Bos. Sci.
`
`Corp., 653 F. Supp. 3d at 594; see also D.I. 272 at 24.
`
`Regardless, the physical machines used in these contentions include material features
`
`claimed in the ’995 and ’538 patents that are not included in any patent or printed publication,
`
`and thus are superior and separate references from any publication. See, e.g., D.I. 272 at 24. As a
`
`non-limiting example, the physical machines used in Exhibits A-15–A-18 disclose details about
`
`the specific configurations of the actuators, sensors, and controls not disclosed in any patent or
`
`printed publication. And as a non-limiting example, the physical machines used in Exs. B-1-B-4
`
`disclose detailed performance characteristics (e.g., fuel efficiency map for W220 engine) or
`
`control schemes (e.g., engine and transmission control software for the John Deere tractor) not
`
`disclosed in any patent or printed publication. These details are not disclosed in any patent or
`
`publication.
`
`Additionally, IPR estoppel does not apply to invalidity arguments based on non-statutory
`
`double patenting, including (but not limited to) obviousness-type double patenting, see Exhibits
`
`A-1–A-14, as inter partes review proceedings are limited to §§ 102 and 103 grounds. See 35
`
`11
`
`

`

`Case 1:17-cv-00770-JDW Document 428-7 Filed 06/28/24 Page 13 of 38 PageID #: 39092
`
`U.S.C. § 311(b). Invalidity charts for the prior art references (the “Invalidity Charts”) are
`
`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES ONLY
`
`
`attached as follows:
`
`• With respect to the ’995 patent, the Invalidity Charts are attached as Exhibits
`
`A-1–A-18; and
`
`• With respect to the ’538 patent, the Invalidity Chart is attached as Exhibits B-1–
`
`B-4.
`
`The Exhibits identify prior art that anticipate or render obvious one or more of the
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`asserted claims of the ’995 and ’538 patents under 35 U.S.C. §§ 102 and/or 103, and patents and
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`prior art that invalidate one or more of the asserted claims of the ’995 patent based on
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`obviousness-type double patenting.7 Wirtgen America reserves the right to revise, correct,
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`supplement, or amend Wirtgen America’s Amended Final Invalidity Contentions, or subsequent
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`invalidity contentions, by further mapping, charting, or identifying additional relevant
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`disclosures of prior art references.
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`A.
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`Anticipation
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`Anticipation under 35 U.S.C. § 102 is a question of fact, see, e.g., Microsoft Corp. v.
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`Biscotti, Inc., 878 F.3d 1052, 1068 (Fed. Cir. 2017), which “must be proven by clear and
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`convincing evidence.” ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314, 1322 (Fed. Cir.
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`2012). “[A] claim is anticipated if each and every limitation is found either expressly or
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`inherently in a single prior art reference.” Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d
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`1354, 1361 (Fed. Cir. 1998); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d
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`7 Title 35 U.S.C. §§ 102 and/or 103 (Post-AIA) shall be applied with respect to the ’538 patent.
`Title 35 U.S.C. §§ 102 and/or 103 (Pre-AIA) shall be applied with respect to the ’995 patent.
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`1360, 1369 (Fed. Cir. 1991) (“Anticipation can occur when a claimed limitation is ‘inherent’ or
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`otherwise implicit in the relevant reference.”).
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`B.
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`Obviousness
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`Obviousness under 35 U.S.C. § 103 is a question of law based on factual underpinnings.
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`Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “The obviousness inquiry entails
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`consideration of whether a person of ordinary skill in the art would have been motivated to
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`combine the teachings of the prior art references to achieve the claimed invention, and . . . would
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`have had a reasonable expectation of success in doing so.” PGS Geophysical AS v. Iancu,
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`891 F.3d 1354, 1363 (Fed. Cir. 2018). A “motivation and reasonable expectation may be present
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`where the claimed invention is the ‘combination of familiar elements according to known
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`methods’ that ‘does no more than yield predictable results.’” PGS Geophysical, 891 F.3d at 1363
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`(quoting KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415-16 (2007)).
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`The Supreme Court has held that “[t]he combination of familiar elements according to
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`known methods is likely to be obvious when it does no more than yield predictable results.”
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`KSR, 550 U.S. at 416. “When a work is available in one field of endeavor, design incentives and
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`other market forces can prompt variations of it, either in the same field or a different one.” Id. at
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`417. Similarly, “if a technique has been used to improve one device, and a person of ordinary
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`skill in the art would recognize that it would improve similar devices in the same way, using the
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`technique is obvious unless its actual application is beyond his or her skill.” Id.
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`To determine whether there is an apparent reason to combine the known elements in the
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`fashion claimed by the patent-at-issue, a court can “look to interrelated teachings of multiple
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`patents; the effects of demands known to the design community or present in the marketplace;
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`and the background knowledge possessed by a person having ordinary skill in the art.” Id. at 418.
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`For example, obviousness can be demonstrated by showing “there existed at the time of
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`invention a known problem for which there was an obvious solution encompassed by the patent's
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`claims.” Id. at 420. “[A]ny need or problem known in the field of endeavor at the time of
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`invention and addressed by the patent can provide a reason for combining the elements in the
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`manner claimed.” Id. Common sense also teaches that “familiar items may have obvious uses
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`beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle.” Id.
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`Thus, the motivation to combine the teachings of the prior art disclosed in Exhibits A-1–
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`A-18 and B-1–B-4 is found in the prior art and (i) the nature of the problem being solved; (ii) the
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`teachings of the prior art; (iii) the knowledge of persons of ordinary skill in the art; (iv) the fact
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`that the prior art is generally directed towards the same or similar problems; and (v) the
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`predictable results obtained in combining the different elements of the prior art.
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`Indeed, to the extent not anticipated, the prior art, either alone or in combination with
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`other prior art references, may also render obvious the asserted claims of Caterpillar’s Asserted
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`Patents. Each asserted claim merely combines known elements to achieve predictable results or
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`offers clear alternatives known to those of ordinary skill in the art. It would have been obvious to
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`a person of skill in the art at the time of the alleged invention to combine the references cited in
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`Exhibits A-1–A-18 and B-1–B-4 so as to practice each of the Asserted Claims. Each prior art
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`reference may also be combined with information known to a person of ordinary skill in the art
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`at the time of the alleged invention, including admissions describing the state of the art or other
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`prior art references that show motivation to combine, a reasonable expectation of success, or the
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`state of the art.
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`Applicable law does not require evidence of teaching(s), suggestion(s), and/or
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`motivation(s) to combine. Nevertheless, teaching(s), suggestion(s), and/or motivation(s) exist to
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`combine one or more prior art references identified in Exhibits A-1–A-18 and B-1–B-4 and the
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`Invalidity Charts therein. Teachings, suggestions, and/or motivations to modify (or combine) one
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`or more prior art references may derive or stem from, or be premised on: (i) the nature of the
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`problem being solved; (ii) the teachings (whether express or implied) of the prior art; (iii) the
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`knowledge of a person of ordinary skill in the art at the time of the alleged invention; (iv) the fact
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`that all of the prior art references teach systems, apparatuses, and methods related to the subject
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`matter of Caterpillar’s Asserted Patents or related to a similar field of the patented technology
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`covered in Caterpillar’s Asserted Patents; and (v) considerations of efficiency, effectiveness,
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`convenience, cost-savings, and accessibility, to combine the various teachings. Teachings,
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`suggestions, and/or motivations to modify (or combine) the one or more prior art references may
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`also derive from the problems or objectives identified in the “Background,” “Summary of
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`Invention,” and other relevant portions of Caterpillar’s Asserted Patents.
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`Combination of the one or more prior art references identified in the Invalidity Charts
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`may also be supported by exemplary rationales supporting a conclusion of obviousness,
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`including: (i) a combination of prior art elements according to known methods to yield
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`predictable results; (ii) a substitution of one known element for another to obtain predictable
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`results; (iii) use of a known technique to improve similar systems, methods, and/or apparatuses
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`in the same way; (iv) an application of a known technique to known systems, methods, and/or
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`apparatuses ready for improvement to yield predictable results; (v) a choice of a finite number of
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`identified, predictable solutions, with a reasonable expectation of success; or (vi) a known work
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`in one field of endeavor prompting variations of it for use in either the same field or a different
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`one based on design incentives or other market forces.
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`A combination of the one or more prior art references listed in Exhibits A-1–A-18 and
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`B-1–B-4, and identified in the Invalidity Charts, may also be used to overcome any secondary
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`considerations—objective indicia—of non-obviousness8 advanced by Caterpillar. To the extent
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`Caterpillar argues non-obviousness on the basis of these secondary considerations, Wirtgen
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`America reserves the right to contest or combat these rationales. These rationales include: (i) the
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`invention satisfied a long felt but unmet need; (ii) the technology is contrary to the accepted
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`teaching of experts in the field or was received with skepticism by them; (iii) there is a long
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`history of unsuccessful attempts to overcome the problems solved by the new invention; (iv) the
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`disclosed invention produced an unexpected result; or (v) the invention is highly commercially
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`successful.
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`1.
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`Motivation to Combine & Reasonable Expectation of Success.
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`The U.S. Supreme Court in KSR Int’l Co. v. Teleflex Inc. held that “[i]n determining
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`whether the subject matter of a patent claim is obvious, neither the particular motivation nor the
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`avowed purpose of the patentee controls. What matters is the objective reach of the claim.” KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). “Under the correct analysis, any need or
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`problem known in the field of endeavor at the ti