Case 1:17-cv-00770-JDW Document 458-1 Filed 09/24/24 Page 1 of 5 PageID #: 40821
`Case 1:17-cv-00770-JDW Document 458-1 Filed 09/24/24 Page 1 of 5 PagelD #: 40821
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 1:17-cv-00770-JDW Document 458-1 Filed 09/24/24 Page 2 of 5 PageID #: 40822
`
`
`
`THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF DELAWARE
`
`
`WIRTGEN AMERICA, INC.,
`
`
`Plaintiff
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 17-770-JDW
`
`
`
`v.
`
`
`
`
`
`
`CATERPILLAR INC.,
`
`
`Defendant
`
`[PROPOSED] PERMANENT INJUNCTION
`
`[Agreed-Upon Language]
`
`Defendant Caterpillar Inc. was found to infringe claims of Wirtgen America Inc.’s U.S.
`
`Patent Nos. 8,424,972 (claim 12); 7,946,788 (claim 5); 9,656,530 (claims 5 and 22); 7,530,641
`
`(claim 11); and 7,828,309 (claim 29).
`
`I impose a permanent injunction for the reasons that I outline in my Memorandum issued
`
`on September 17, 2024. D.I. 456.
`
`IT IS HEREBY ORDERED that pursuant to 35 U.S.C. § 283, Caterpillar Inc. and its
`
`officers, agents, servants, employees, attorneys, and any other persons who are in active concert
`
`or participation with them, are hereby permanently enjoined
`
`
`
`from infringing U.S. Patent No. 8,424,972 (the ’972 Patent) by making, using, selling, or
`
`offering to sell in the United States, or importing into the United States the product numbers
`
`PM620, PM622, PM820, PM822, and PM825 that infringe claim 12 of the ’972 Patent, or
`
`products that are not more than colorably different from these adjudicated products, during
`
`the period commencing on today’s date and through the remaining enforceable term of the
`
`patent;
`
`
`
`from infringing U.S. Patent No. 7,946,788 (the ’788 Patent) by making, using, selling, or
`1
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 458-1 Filed 09/24/24 Page 3 of 5 PageID #: 40823
`
`offering to sell in the United States, or importing into the United States the product numbers
`
`PM620, PM622, PM820, PM822, PM825, PM310, PM312, and PM313 that infringe claim
`
`5 of the ’788 Patent, or products that are not more than colorably different from these
`
`adjudicated products, during the period commencing on today’s date and through the
`
`remaining enforceable term of the patent;
`
`
`
`from infringing U.S. Patent No. 9,656,530 (the ’530 Patent) by making, using, selling, or
`
`offering to sell in the United States, or importing into the United States the product numbers
`
`RM600 and RM800 that infringe claim 22 of the ’530 Patent, or products that are not more
`
`than colorably different from these adjudicated products, during the period commencing
`
`on today’s date and through the remaining enforceable term of the patent;
`
`
`
`from infringing the ’530 Patent by making, using, selling, or offering to sell in the United
`
`States, or importing into the United States the former designs of product numbers PM620,
`
`PM622, PM820, PM822, and PM825 that infringe claims 5 and 22 of the ’530 Patent or
`
`products that are not more than colorably different from these adjudicated products as to
`
`Caterpillar’s prior machine design (the design Caterpillar used before the post-ITC
`
`redesign), during the period commencing on today’s date and through the remaining
`
`enforceable term of the patent;
`
`
`
`from infringing U.S. Patent No. 7,530,641 (the ’641 Patent) by making, using, selling, or
`
`offering to sell in the United States, or importing into the United States the former designs
`
`of product numbers PM620, PM622, PM820, PM822, PM825, PM310, PM312, and
`
`PM313 that infringe claim 11 of the ’641 Patent or products that are not more than
`
`colorably different from these adjudicated products as to Caterpillar’s prior machine design
`
`(the design Caterpillar used before the post-ITC redesign), during the period commencing
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 458-1 Filed 09/24/24 Page 4 of 5 PageID #: 40824
`
`
`
`on today’s date and through the remaining enforceable term of the patent;
`
`
`
`from infringing U.S. Patent No. 7,828,309 (the ’309 Patent) by making, using, selling, or
`
`offering to sell in the United States, or importing into the United States the former designs
`
`of product numbers PM620, PM622, PM820, PM822, and PM825 that infringe claim 29
`
`of the ’309 Patent or products that are not more than colorably different from these
`
`adjudicated products as to Caterpillar’s prior machine design (the design Caterpillar used
`
`before the post-ITC redesign), during the period commencing on today’s date and through
`
`the remaining enforceable term of the patent.
`
`[Defendant’s Proposed Language]
`
`Consistent with the Memorandum (D.I. 456 at 63) and Order (D.I. 457 at 1), by October
`
`11, 2024, Caterpillar Inc. shall serve on Wirtgen a supplemental accounting of its sales of the
`
`above-listed products through September 30, 2024, that are not reflected in Exhibit 3322. Wirtgen
`
`has 28 days from receipt of this accounting to file a supplemental damages calculation for approval.
`
`Notwithstanding the foregoing, nothing in this order shall enjoin Caterpillar Inc’s activity
`
`regarding products reflected in Exhibit 3322 or Caterpillar Inc.’s supplemental accounting,
`
`including shipping or distributing, re-sale, or on providing sales support to dealers (including
`
`rebates to dealers upon re-sale of machines to the end user), financing, servicing (including
`
`technical support and repair services), replacement parts, or training relating to such products.
`
`Further, nothing in this order shall prohibit independent dealers of Caterpillar Inc.’s products from
`
`selling through the above-listed products already in their inventories.
`
`Section A: The jury saw evidence of two features in RM machines that Wirtgen alleged
`
`infringed claim 22 of the ’530 patent. Feature A was illustrated in Trial Exhibit 2996A, an image
`
`of a screen showing an average lifting position of the back two legs. Feature B was illustrated in
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 458-1 Filed 09/24/24 Page 5 of 5 PageID #: 40825
`
`
`
`Trial Exhibits 4656 and 4657, images of screens showing the lifting position of the left and right
`
`legs, respectively. In its briefing for judgment as a matter of law, Caterpillar argued that Feature
`
`A could not infringe claim 22 of the ’530 patent, because a screen showing an average of both legs
`
`is not “display[ing] the lifting positions of each of the lifting columns,” as required by claim 22.
`
`D.I. 381 at 18-19; D.I. 429 at 10-11. Wirtgen argued that the evidence of Feature A was substantial
`
`evidence supporting the jury’s verdict of infringement. D.I. 406 at 17. The Court ruled that Feature
`
`B—not Feature A—provided substantial evidence for the jury’s verdict. D.I. 456 at 22-23 (citing
`
`trial testimony discussing Trial Exhibits 4656 and 4657—illustrating Feature B—as substantial
`
`evidence and not 2996A—illustrating Feature A. Because this Court decided that evidence
`
`illustrating Feature B was the substantial evidence supporting the jury’s verdict as to claim 22 of
`
`the ’530 patent, this injunction against infringement of claim 22 of the ’530 patent does not apply
`
`to RM machines with Feature A but where Feature B has been removed.
`
`IT IS HEREBY ORDERED
`
`Date: _______________
`
`____________________________
`
`United States District Judge
`
`
`
`