Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 1 of 16 PageID #: 39123
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`Plaintiff,
`
`
`
`v.
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`
`
`Defendant.
`
`
`
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL DEMANDED
`
`
`
`)))))))))
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`
`
`WIRTGEN AMERICA, INC.,
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`
`
`
`
`CATERPILLAR INC.,
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`
`
`CATERPILLAR INC.’S REPLY BRIEF IN SUPPORT OF ITS RENEWED MOTION
`FOR JUDGMENT AS A MATTER OF LAW AND MOTION FOR NEW TRIAL
`
`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
`11587384 /11898.00005
`
`
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`

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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 2 of 16 PageID #: 39124
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`
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`TABLE OF CONTENTS
`
`I.
`
`
`
`1.
`2.
`3.
`
`1.
`2.
`
`PAGE
`
`The Accused Products Do Not “Pre-Set” an Operating Parameter ............ 2
`The Accused Products Do Not Have a “Switchover Device” .................... 3
`The Accused Products Do Not Display a “Current Actual Value” ............ 3
`
`No Substantial Evidence of Infringement of Claims 5 and 22 ................... 5
`No Substantial Evidence of Infringement of Claim 22 by the RMs ........... 5
`
`NO REASONABLE JURY COULD FIND INFRINGEMENT .........................................1
`A.
`’641 Patent: No Substantial Evidence of Induced Infringement of Claim 11 .........1
`1.
`No Direct Infringement by Users ................................................................ 1
`2.
`No Inducement ............................................................................................ 2
`B.
`’788 Patent: No Substantial Evidence of Infringement of Claim 5 .........................2
`C.
`’972 Patent: No Substantial Evidence of Infringement of Claim 12 .......................3
`D.
`’309 Patent: No Substantial Evidence of Infringement of Claim 29 .......................4
`E.
`’530 Patent ...............................................................................................................5
`THE ’641, ’972, AND ’788 PATENTS ARE INVALID ....................................................6
`II.
`A.
`’641 Patent: Claim 11 Was Anticipated by Caterpillar’s PM465 ............................6
`B.
`’972 Patent: Claim 13 Was Anticipated by Caterpillar’s PM565 ............................6
`C.
`’788 Patent: Claim 5 Is Obvious in View of PM465 and Davis ..............................6
`III.
`ALTERNATIVELY, GRANT A NEW TRIAL ON WILLFULNESS ...............................7
`A.
`No Substantial Evidence of Willfulness ..................................................................7
`B.
`A New Trial on Willfulness Is Proper .....................................................................8
`IV. WIRTGEN FAILED TO PRESENT A LEGALLY COGNIZABLE DAMAGES
`THEORY, AND THE DAMAGES AWARD SHOULD BE SET TO ZERO ....................9
`
`THE COURT SHOULD OVERTURN THE WILLFULNESS VERDICTS, OR
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`
`
`i
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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 3 of 16 PageID #: 39125
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`
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`TABLE OF AUTHORITIES
`
`PAGE(S)
`
`CASES
`ACCO Brands, Inc. v. ABA Locks Manufacturer Co.,
`501 F.3d 1307 (Fed. Cir. 2007)............................................................................................2
`AstraZeneca LP v. Apotex, Inc.,
`633 F.3d 1042 (Fed. Cir. 2010)............................................................................................1
`Brooke Grp. v. Brown & Williamson Tobacco Corp.,
`509 U.S. 209 (1993) .............................................................................................................5
`C R Bard Inc. v. AngioDynamics, Inc.,
`979 F.3d 1372 (Fed. Cir. 2020)............................................................................................1
`Caterpillar Prodotti Stradali S.R.L. v. ITC,
`847 F. App’x 893 (Fed. Cir. 2021) ......................................................................................2
`Content Guard Holdings, Inc. v. Amazon.com, Inc.,
`2015 WL 11089749 (E.D. Tex. Aug. 6, 2015) ..................................................................10
`Contour IP Holding, LLC v. GoPro, Inc.,
`2021 WL 75666 (N.D. Cal. Jan. 8, 2021) ..........................................................................10
`ePlus, Inc. v. Lawson Software, Inc.,
`700 F.3d 509 (Fed. Cir. 2012)..............................................................................................1
`Evolved Wireless, LLC v. Apple Inc.,
`2019 WL 1178517 (D. Del. Mar. 13, 2019) ......................................................................10
`Intel Corp. v. Future Link Sys., LLC,
`2017 WL 2482881 (D. Del. June 1, 2017) .........................................................................10
`Iplearn, LLC v. Blackboard Inc.,
`2014 WL 4967122 (D. Del. Oct. 2, 2014) ...........................................................................6
`Janssen Pharms., Inc. v. Mylan Labs. Ltd.,
`2023 WL 3605733 (D.N.J. May 23, 2023) ...................................................................... 1-2
`LaserDynamics, Inc. v. Quanta Comp., Inc.,
`694 F.3d 51 (Fed. Cir. 2012)................................................................................................9
`
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`
`580 F.3d 1301 (Fed. Cir. 2009)............................................................................................1
`
`Pact XPP Schweiz AG v. Intel Corp.,
`2023 WL 2631503 (D. Del. Mar. 24, 2023) (Wolson, J.) ................................................7, 8
`Philips Elecs. N. Am. Corp. v. Contec Corp.,
`411 F. Supp. 2d 470 (D. Del. 2006) .....................................................................................1
`
`ii
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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 4 of 16 PageID #: 39126
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`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`843 F.3d 1315 (Fed. Cir. 2016)............................................................................................1
`Promega Corp. v. Life Techs. Corp.,
`875 F.3d 651 (Fed. Cir. 2017)............................................................................................10
`Salazar v. AT&T Mobility LLC,
`64 F.4th 1311 (Fed. Cir. 2023) ............................................................................................3
`Teva Pharms. Int’l GmbH v. Eli Lilly & Co.,
`8 F.4th 1349 (Fed. Cir. 2021) ..............................................................................................7
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012)............................................................................................1
`
`
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`
`
`
`
`iii
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`

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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 5 of 16 PageID #: 39127
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`TABLE OF ABBREVIATIONS
`
`Abbreviation
`
`
`
`’309 patent
`’530 patent
`’641 patent
`’788 patent
`’972 patent
`Davis
`
`ITC
`JMOL
`Op. Br.
`
`Opp.
`
`POSA
`Trial Tr.
`Wirtgen
`
`
`*Unless otherwise noted, all emphases herein are added, and all internal citations and quotations
`are omitted.
`
`
`
`Word or Phrase
`U.S. Patent No. 7,828,309
`U.S. Patent No. 9,656,530
`U.S. Patent No. 7,530,641
`U.S. Patent No. 7,946,788
`U.S. Patent No. 8,424,972
`U.S. Patent Application Publication No.
`2002/0047301
`International Trade Commission
`Judgment as a matter of law
`Caterpillar Inc.’s Opening Brief in Support of
`its Renewed Motion for Judgment as a Matter
`of Law and Motion for New Trial (D.I. 381)
`Wirtgen America’s Opposition to Caterpillar
`Inc.’s Renewed Motion for Judgment as a
`Matter of Law, or Alternatively, Motion for
`New Trial (D.I. 406)
`Person of ordinary skill in the art
`Trial transcripts
`Wirtgen Group (including Wirtgen America
`and Wirtgen GmbH working in concert in
`connection with enforcement activities
`directed towards the asserted patents)
`
`iv
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`

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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 6 of 16 PageID #: 39128
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`I.
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`NO REASONABLE JURY COULD FIND INFRINGEMENT
`A.
`
`’641 Patent: No Substantial Evidence of Induced Infringement of Claim 11
`1.
`
`No Direct Infringement by Users
`
`Wirtgen failed to prove that Caterpillar’s machines (1) are capable of the claimed method
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`and (2) have actually been used by a customer in an allegedly infringing manner. First,
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`Caterpillar’s Drum Exposure operates independently of drum height, precluding performance of
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`the “predetermined distance” step. Trial Tr. at 1160:2-8 (Klopp); id. at 395:6-11 (Engelmann).
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`The 50 mm cited by Wirtgen refers only to the raising of the moldboard or side plates, irrespective
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`of any distance between the drum and ground.
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`Second, claim 26 of the ePlus patent (described by Wirtgen as the “determining” claim)
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`cannot remedy Wirtgen’s failure to prove an actual instance of direct infringement. Unlike claim
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`11’s method, the accused functionality in ePlus (“Core Procurement”) was regularly used by the
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`defendant and its customers and was “responsible for most of the basic operations of [defendant’s]
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`system.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 514 (Fed. Cir. 2012).
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`Wirtgen fails to cite any case finding direct infringement where there were non-infringing
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`ways to operate the device, and the accused method contravened instructions provided to users.
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`Its cited cases are therefore distinguishable. See Philips Elecs. N. Am. Corp. v. Contec Corp., 411
`
`F. Supp. 2d 470, 475 (D. Del. 2006) (“Defendants provided instructions on how to use the patented
`
`method”); C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372, 1379 (Fed. Cir. 2020) (same);
`
`Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1364-65 (Fed. Cir. 2012) (same); Lucent Techs.,
`
`Inc. v. Gateway, Inc., 580 F.3d 1301, 1318 (Fed. Cir. 2009) (same); AstraZeneca LP v. Apotex,
`
`Inc., 633 F.3d 1042, 1060-61 (Fed. Cir. 2010) (same); see also Power Integrations, Inc. v.
`
`Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315, 1333-35 (Fed. Cir. 2016) (“only non-infringing
`
`use of its controller chips was foreign use”); Janssen Pharms., Inc. v. Mylan Labs. Ltd., 2023 WL
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`

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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 7 of 16 PageID #: 39129
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`3605733, at *17 (D.N.J. May 23, 2023) (noting that instructions “do not discourage or make
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`optional the practice of Asserted Claims”).
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`The facts here are closer to ACCO, where the products were sold with instructions teaching
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`“non-infringing uses.” See ACCO Brands, Inc. v. ABA Locks Manufacturer Co., 501 F.3d 1307,
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`1313-14 (Fed. Cir. 2007) (“Because we find that the record lacks substantial evidence to support
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`the jury's finding of direct infringement, the jury verdict of inducement cannot stand.”).
`
`2.
`
`No Inducement
`
`Wirtgen lacks any direct evidence that Caterpillar “actively and knowingly aided,
`
`instructed, or otherwise acted with the specific intent to cause . . . direct infringement of the patent.”
`
`See Trial Tr. at 2084:19-22, 2085:6-10 (Final Jury Instructions). Without direct evidence, Wirtgen
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`argues that intent should nonetheless be inferred because the “claimed method [i]s an automatic
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`feature in [Caterpillar’s] machines,” and there are “instruct[ions] [to] its customers on how that
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`feature works.” Opp. at 4. However, Drum Exposure is not an automatic function; it is a backup
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`safety feature that activates if and only if a user ignores Caterpillar’s operator instructions. Op.
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`Br. at 1-2; Trial Ex. 4627. Moreover, even viewing the facts most favorably to Wirtgen, all it has
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`shown are “descriptions” or “enablement” of Drum Exposure; such a showing falls short of the
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`inducement standard. See Op. Br. at 4. Finally, Wirtgen’s reliance on Caterpillar Prodotti Stradali
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`S.R.L. v. ITC, 847 F. App’x 893, 899 (Fed. Cir. 2021) (see Opp. at 2-3, 5) is misguided since
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`Caterpillar’s said operator instructions (re: raising the machine) were not even at issue there.
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`B.
`
`’788 Patent: No Substantial Evidence of Infringement of Claim 5
`1.
`
`The Accused Products Do Not “Pre-Set” an Operating Parameter
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`Wirtgen attempts to read out the “pre-” in “pre-set” requirement. Specifically, Wirtgen
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`suggests that this claim element is met when the replacement sensor’s parameter is set any time
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`prior to completion of the swap operation. However, claim 5 requires “pre-set[ting] the operating
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`2
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`

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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 8 of 16 PageID #: 39130
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`parameter of the replacement sensor prior to effecting [i.e.¸ causing] the switchover.” ’788 patent
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`at 8:1:2; see also Trial Tr. at 864:9-12 (Rahn). But in the accused machines, the replacement
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`sensor’s parameter is set after the operator initiates the swap. The parameter is, in fact, set during
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`the benching function, the final step before conclusion of the sensor swap process. Opp. at 6.
`
`2.
`
`The Accused Products Do Not Have a “Switchover Device”
`
`Wirtgen asserts that “multiple components” (in combination) can serve as the “switchover
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`device” construed by the Court. However, a generic interface requiring navigating multiple
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`buttons and screens is not a “controller input and output switch.” See Salazar v. AT&T Mobility
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`LLC, 64 F.4th 1311, 1317 (Fed. Cir. 2023) (claim reciting “a microprocessor” requires at least one
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`microprocessor be capable of performing “each of the claimed functions” that refer back to “said
`
`microprocessor”).
`
`3.
`
`The Accused Products Do Not Display a “Current Actual Value”
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`Claim 5 requires displaying the current actual value, not just any measured value.
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`Caterpillar’s machines do not display what is required to prove infringement—the current actual
`
`value—but rather averages of values from multiple time points. Op. Br. at 6-7. Those averages
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`are not “current actual” values, and Wirtgen offered no theory under the doctrine of equivalents.
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`C.
`
`’972 Patent: No Substantial Evidence of Infringement of Claim 12
`
`The accused machines do not infringe claim 12 because they do not “automatically” control
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`the height of the lifting column in order “to establish a parallel orientation.” This was admitted by
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`Wirtgen’s expert. Opp. at 8-9; Trial Tr. 788:3-21 (Valerdi). Wirtgen itself also conceded this
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`point in opposing Caterpillar’s JMOL as to claim 13 (which has the same requirement as claim
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`12). See § II.B, infra.
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`Wirtgen resorts to arguing that “pre-calibration is a standard part of operation.” Opp. at 8.
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`But Wirtgen cites nothing in the record defining or supporting this assertion. Id. Instead, Wirtgen
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`3
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`

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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 9 of 16 PageID #: 39131
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`claims the machine ultimately knows when it is parallel. It also focuses on the use of the word
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`“automatically” in Caterpillar’s manuals. But these arguments proceed only by ignoring that there
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`is always a predicate manual calibration before any automatic operation.
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`D.
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`’309 Patent: No Substantial Evidence of Infringement of Claim 29
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`Wirtgen now expressly disclaims relying on inherency to prove the “four-sided stability
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`pattern” and states that it has “always maintained that four-sided stability patterns are not inherent.”
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`See id. at 9. Given that disclaimer, the jury’s verdict cannot stand. Dr. Lumkes conducted no tilt
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`testing, stability simulations, or any other measurements to determine whether Caterpillar’s
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`machines have a “four-sided stability pattern when ride control is engaged, and [ ] the widest
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`transverse dimension of that pattern falls within the required rotor footprint.” Id. In response to
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`its failure of proof, Wirtgen makes two arguments. First, Wirtgen claims that Dr. Lumkes’ CAD
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`drawings “show how Caterpillar’s machines satisfy the limitation” “due to certain undisputed
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`features.” Opp. at 9-10. But Dr. Lumkes annotated the purported stability patterns on the drawings
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`himself, did so with no “math or simulations,” and relied only on the inherency principle that
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`Wirtgen now disclaims: “I was able to determine the stability pattern, it has to occur at the
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`midpoints of the legs, since all the cylinders are equal value.” Trial Tr. at 649:6-9, 595:14-596:24
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`(Lumkes). The problem is not that Dr. Lumkes failed to undertake “Caterpillar’s preferred tests
`
`and measurements.” Opp. at 10. Rather, by failing to test or measure the machines, Dr. Lumkes
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`did nothing to consider the unavoidable “deviations” “influenc[ing] . . . the stability pattern” that
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`the CAD drawings do not show. See D.I. 369-1, Ex. 1 at 47-48.
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`Second, Wirtgen argues that “Caterpillar did not offer any witness on this issue.” Opp. at
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`10. Wirtgen cannot shift the burden to Caterpillar to disprove infringement. Wirtgen’s reliance on
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`deposition testimony that was never before the jury should similarly be disregarded.
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`4
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`

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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 10 of 16 PageID #: 39132
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`E.
`
`’530 Patent
`1.
`
`No Substantial Evidence of Infringement of Claims 5 and 22
`
`To meet the “coupled to two or more components” claim element, Dr. Lumkes testified
`
`based on his own ipse dixit. See Trial Tr. at 633:1-8 (Lumkes); Brooke Grp. v. Brown &
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`Williamson Tobacco Corp., 509 U.S. 209, 242 (1993). Wirtgen claims that Caterpillar ignores
`
`evidence “on which [Lumkes] relied,” but fails to show where Dr. Lumkes relied on anything
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`beyond his own say-so. Opp. at 11. Instead, Wirtgen points to testimony from Mr. Engelmann
`
`that the accused magnet is a target of the sensor, not a part of it—testimony which was not even
`
`the basis on which Dr. Lumkes offered his claim construction position. See, e.g., Trial Tr. at
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`524:12-15 (“[t]he magnet is the target, it’s what the sensor is looking for…”); id. at 633:1-8.
`
`2.
`
`No Substantial Evidence of Infringement of Claim 22 by the RMs
`
`Even if the jury found infringement of Caterpillar’s RMs—which is unclear based on the
`
`ambiguity in the verdict form—Wirtgen fails to cite substantial evidence supporting the verdict.
`
`See D.I. 389 at 25. Seemingly conceding so, Wirtgen resorts to calling Caterpillar’s position a
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`“belated claim construction.” Opp. at 12. However, the plain language of claim 22 requires an
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`“indicator device” that displays “the lifting position of each of the lifting columns.” Indeed, it is
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`Wirtgen that is now seeking to inject a new and belated construction by reading the word “each”
`
`out of the claims. There is no dispute that Trial Ex. 2996A—the only document on which Wirtgen
`
`relies—shows the lifting position of the two front columns but only an average of the back two
`
`legs. See Trial Tr. at 1742:14-21, 1746:11-13 (Sorini). Wirtgen claims “Caterpillar did not
`
`challenge” this issue and its expert “admitted” infringement. Opp. at 12. Dr. Sorini repeatedly
`
`testified—including on cross—that the RMs lack the claimed indicator device that must show
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`“each” leg’s lifting positions. See Trial Tr. at 1742:14-21, 1746:11-13, 1755:5-1756:18 (Sorini).
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`5
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`

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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 11 of 16 PageID #: 39133
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`II.
`
`THE ’641, ’972, AND ’788 PATENTS ARE INVALID
`A.
`
`’641 Patent: Claim 11 Was Anticipated by Caterpillar’s PM465
`
`Wirtgen attacks a straw man because Dr. Klopp did not (and could not) testify as to any
`
`legal standards. See, e.g., Iplearn, LLC v. Blackboard Inc., 2014 WL 4967122, at *2 (D. Del. Oct.
`
`2, 2014). Dr. Klopp’s testimony that the PM465 anticipates claim 11 was corroborated by the
`
`PM465’s technical operating documents (see Trial Exs. 379, 382, 771) and witness testimony that
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`the PM465’s kickback ski mechanism was placed behind the drum so that it could trigger rotor
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`disengagement when making unwanted contact with the ground or an obstacle. Trial Tr. at
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`1688:23-1690:18 (Rife); see also Op. Br. at 12-13. Notably, this is the very type of evidence
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`Wirtgen has acknowledged is sufficient to show performance of claim 11’s steps. Opp. at 3.
`
`B.
`
`’972 Patent: Claim 13 Was Anticipated by Caterpillar’s PM565
`
`Doubling down on its contradictory positions for infringement and invalidity, Wirtgen’s
`
`Opposition demonstrates exactly why JMOL of invalidity is required. Wirtgen asserts that the
`
`PM565 does not anticipate because it requires a manual calibration that is not “automatic.” Id. at
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`15. But with respect to alleged infringement of claim 12, Wirtgen took the opposite position,
`
`claiming that Caterpillar’s “creep-to-inclination” functions satisfy the same limitation, even
`
`though they too require manual calibration to establish a parallel orientation. Id. at 14; Op. Br.
`
`at 8 (citing 788:7-10 (Valerdi)); see supra § I.C. Wirtgen is talking out of both sides of its mouth—
`
`its concession that manual calibration does not “automatically” establish parallel orientation is
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`inconsistent with its infringement positions for claim 12.
`
`C.
`
`’788 Patent: Claim 5 Is Obvious in View of PM465 and Davis
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`Caterpillar is not “tak[ing] issue with the jury’s underlying fact findings,” Opp. at 15, but
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`the lack of factual support for the validity verdict. First, neither Wirtgen nor Dr. Rahn disputes
`
`that Davis discloses—and expressly uses—pre-setting. See Op. Br. at 15. Second, Wirtgen
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`6
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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 12 of 16 PageID #: 39134
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`
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`improperly suggests that Caterpillar was required to show the PM465 in operation to prove
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`obviousness. Claim 5 is an apparatus, not a method, and actual performance is not required. Also,
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`Wirtgen presented no evidence of a nexus between any secondary consideration of non-
`
`obviousness and claim 5. Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1360 (Fed.
`
`Cir. 2021). Wirtgen contends it showed the value attributable to “sensor switching” (Opp. at 15-
`
`16), but such generalized statements are unlinked to the actual claim language, and “sensor
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`switching” has long been known in the prior art.
`
`III. THE COURT SHOULD OVERTURN THE WILLFULNESS VERDICTS, OR
`ALTERNATIVELY, GRANT A NEW TRIAL ON WILLFULNESS
`A.
`
`No Substantial Evidence of Willfulness
`
`Wirtgen “must show the accused infringer had a specific intent to infringe at the time of
`
`the challenged conduct.” Pact XPP Schweiz AG v. Intel Corp., 2023 WL 2631503 (“Pact”), at *4
`
`(D. Del. Mar. 24, 2023) (Wolson, J.). It cannot do so for any of the patents.
`
`’530 Patent. Wirtgen does not dispute it failed to show Caterpillar had pre-suit knowledge
`
`of the ’530 patent. Trial Tr. at 364:20-21. This fact alone precludes willful infringement.
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`“[W]here the defendant’s alleged knowledge of the asserted patents is based solely on the content
`
`of that complaint . . . there is no claim for willful infringement.” Pact, 2023 WL 2631503, at *5.
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`’788 and ’972 Patents. Wirtgen’s claim that at some point Caterpillar learned about the
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`’788 and ’972 patents is “not sufficient for a finding of willfulness.” See Pact, 2023 WL 2631503,
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`at *4. As to the ’788 patent, Wirtgen’s virtual marking argument fails because Caterpillar’s 2010
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`competitive teardowns of the W 210 occurred before the ’788 patent issued (and also before any
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`marking occurred). See Trial Tr. at 364:22-23. Wirtgen’s copying argument fails because
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`Caterpillar’s design differs substantially from the W 210 and is based on Caterpillar’s legacy
`
`machines. See D.I. 389 at 5. As to the ’972 patent, there cannot be any copying because Wirtgen’s
`
`7
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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 13 of 16 PageID #: 39135
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`W 210 lacks the features that Wirtgen accuses of infringement (track sensors) and was also based
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`on PTS from Caterpillar’s 1990’s machines. See Opp. at 18 (referring to “first machines”); D.I.
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`389 at 4-5 (accused machines have track angle sensors, which W 210 lacks); supra §§ I.C, II.B.
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`’641 Patent. Wirtgen’s ITC-related argument for the ’641 fails to show specific intent to
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`infringe. Wirtgen claims Caterpillar initially prevailed on non-infringement of the ’641 patent
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`based on a mere “technical[ity].” Opp. at 17. Yet, the ITC found Wirtgen failed to prove
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`inducement of claim 11, the same theory at issue here. D.I. 226, Ex. 44 at 176. The ITC’s
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`repudiation of that theory is hardly a “technicality.” Next, Wirtgen’s claim about relocating
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`machine manufacturing has nothing do with the ’641 patent: when that move occurred, the ITC
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`had found that Caterpillar did not infringe. See id. Finally, Caterpillar’s conduct after the Federal
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`Circuit’s reversal in March 2021 is beyond reproach since it promptly removed the accused feature.
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`Trial Tr. at 510:5-19 (Engelmann).
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`’309 Patent. There is no substantial evidence that Caterpillar both knew of the ’309 patent
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`and had reason to believe it infringed prior to this suit. Wirtgen fails to tie the W 210 teardown to
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`any patented feature. Caterpillar’s invalidity defense on claim 29 was actively litigated until
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`February 2021, months after Caterpillar had removed the accused ride control feature in October
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`2020. See D.I. 409 ¶¶ 34-38 (and exhibits cited therein). Caterpillar’s ongoing defense of
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`Wirtgen’s allegations cannot constitute willful infringement. See Pact, 2023 WL 2631503, at *5.
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`B.
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`A New Trial on Willfulness Is Proper
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`Wirtgen’s claim that its statements about the ITC determination were “indisputably true”
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`are indisputably wrong. Opp. at 19-20. Wirtgen’s counsel repeatedly told the jury that Caterpillar
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`had been found to infringe the ’641 patent during a time when the ITC had found the opposite.
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`Such misleading statements falsely suggested to the jury that Caterpillar continued to infringe for
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`years, when in fact Caterpillar removed the accused feature within months of the Federal Circuit’s
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`8
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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 14 of 16 PageID #: 39136
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`ruling. Indeed, Wirtgen continues this same pattern now, alleging that Caterpillar’s manufacturing
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`relocation demonstrates willful infringement of the ’641 patent, even though the move occurred at
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`a time when Caterpillar had been found not to infringe the ’641 patent. Opp. at 17. A new trial is
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`necessary because Wirtgen’s constant blurring of the record confused the jury.
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`Wirtgen also argues that the Court correctly excluded lines of inquiry relevant to
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`willfulness because Caterpillar never showed how such inquiry was “probative of state of mind at
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`the relevant time.” Id. at 21. But that is precisely the problem: Caterpillar was prevented from
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`explaining how the precluded testimony (e.g., regarding the grape harvesting patent) shows
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`independent development, not copying.
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`Because Caterpillar could not rebut Wirtgen’s copying evidence, a new trial is warranted.
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`IV. WIRTGEN FAILED TO PRESENT A LEGALLY COGNIZABLE DAMAGES
`THEORY, AND THE DAMAGES AWARD SHOULD BE SET TO ZERO
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`Wirtgen attempts to resuscitate Dr. Seth’s damages methodology at the margins, but fails
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`to address a fundamental flaw: Why should the damages amount—and thus the value of Wirtgen’s
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`asserted patents—increase seven-fold simply because the accused machines did not practice
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`Caterpillar’s own patents? See Op. Br. at 23. That leap of logic highlights the lack of “sound
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`economic and factual predicates” underlying Dr. Seth’s methodology. LaserDynamics, Inc. v.
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`Quanta Comp., Inc., 694 F.3d 51, 67 (Fed. Cir. 2012). Wirtgen’s remaining arguments also fail.
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`Wirtgen’s waiver argument is both legally and factually unsupported. Wirtgen does not
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`cite any authority supporting waiver. See Opp. at 24. Moreover, it claims Caterpillar waived
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`because it did not “challenge [certain methodologies] in its original Daubert motion.” Id. But
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`even Wirtgen recognizes that Caterpillar raised additional challenges in its renewed Daubert
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`motion, which the Court considered. Id.; see also D.I. 326 at 8. There was no waiver.
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`Wirtgen appears not to understand its own expert’s damages opinion. Wirtgen claims the
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`9
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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 15 of 16 PageID #: 39137
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`“patent-practice rates inform … the Rubinstein bargaining model apportionment calculations.”
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`Opp. at. 22. But the patent-practice rates do not impact the outcome of the Rubinstein bargaining
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`model, which stays at a static 81.9% in favor of Wirtgen. See Trial Tr. 925:25-926:19 (Seth).
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`Moreover, Wirtgen does not cite a single case for the proposition that “[a]pportioning damages
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`using patent-practice rates … is a known and accepted methodology.” Opp. at 23. Indeed, even
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`the cited FPCA cases do not discuss patent-practice rates. See Intel Corp. v. Future Link Sys.,
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`LLC, 2017 WL 2482881, at *3 (D. Del. June 1, 2017); see generally Evolved Wireless, LLC v.
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`Apple Inc., 2019 WL 1178517 (D. Del. Mar. 13, 2019).
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`Further, the cases cited by Wirtgen do not support its contention that the “Rubinstein
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`bargaining model is a well-established economic model that can inform the apportionment of the
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`value of patented features from unpatented features.” Opp. at 25; see Content Guard Holdings,
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`Inc. v. Amazon.com, Inc., 2015 WL 11089749, at *3 (E.D. Tex. Aug. 6, 2015) (model used “to
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`determine at what point between the maximum and minimum willingness values the parties would
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`reach an agreement”); Contour IP Holding, LLC v. GoPro, Inc., 2021 WL 75666, at *13 n.3 (N.D.
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`Cal. Jan. 8, 2021) (model used as a “profit split methodology” like the Nash Bargaining Solution).
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`If anything, those cases demonstrate the Rubinstein bargaining model, as its name suggests, is
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`merely an economic model to divide an amount based on relative bargaining power, not the value
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`of unpatented features. Wirtgen also fails to respond to Caterpillar’s argument that Dr. Seth failed
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`to adjust the bargaining model’s inputs on a patent-by-patent basis. See Op. Br. at. 24 n.7.
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`Wirtgen was given every opportunity to present a legally cognizable theory. See Trial Tr.
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`748:13-20. Wirtgen failed to do so and has therefore “waive[d] its right to a damages award.”
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`Promega Corp. v. Life Techs. Corp., 875 F.3d 651, 666 (Fed. Cir. 2017). These are exactly the
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`kind of circumstances that should result in an award of zero damages.
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`10
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`Case 1:17-cv-00770-JDW Document 429 Filed 06/28/24 Page 16 of 16 PageID #: 39138
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`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`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.
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`
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`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
`11587384 /11898.00005
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`11
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