Case 1:17-cv-00770-JDW Document 458-2 Filed 09/24/24 Page 1 of 7 PageID #: 40826
`Case 1:17-cv-00770-JDW Document 458-2 Filed 09/24/24 Page 1 of 7 PagelD #: 40826
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`EXHIBIT B
`EXHIBIT B
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`Case 1:17-cv-00770-JDW Document 458-2 Filed 09/24/24 Page 2 of 7 PageID #: 40827
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`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
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`Paul A. Ainsworth
`Cooley, Daniel; Ryan D. Levy; Barney, James
`Mroz, David; Fagan, Jonathan; Will Milliken
`RE: Wirtgen v. Cat - Call re Order
`Friday, September 20, 2024 7:44:14 PM
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`2024.09.20 DRAFT Injunction (wirtgen redline).docx
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`External email
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`Dan,
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`Thank you for sending the draft and for the discussion today. Attached are our edits to the draft. Happy
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`to discuss on Monday. Also happy to consider any additional changes you may have beforehand.
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`Thanks,
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`Paul
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`From: Cooley, Daniel <Daniel.Cooley@finnegan.com>
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`Sent: Friday, September 20, 2024 12:06 PM
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`To: Ryan D. Levy <rdl@iplawgroup.com>; Barney, James <James.Barney@finnegan.com>
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`Cc: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Mroz, David <David.Mroz@finnegan.com>;
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`Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
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`Subject: RE: Wirtgen v. Cat - Call re Order
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`EXTERNAL EMAIL: Use caution before clicking links or attachments.
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`Ryan,
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`Please see the attached draft language. We look forward to discussing this further today.
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`Regards,
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`Dan
`Daniel C. Cooley | Bio
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`1875 Explorer Street, Suite 800, Reston, Virginia 20190-6023
`571.203.2778 | fax: 202.408.4400 | daniel.cooley@finnegan.com | www.finnegan.com
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`From: Ryan D. Levy <rdl@iplawgroup.com>
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`Sent: Thursday, September 19, 2024 5:11 PM
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`To: Barney, James <James.Barney@finnegan.com>
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`Cc: painsworth@sternekessler.com; Mroz, David <David.Mroz@finnegan.com>; Cooley, Daniel
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`<Daniel.Cooley@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
`
`Subject: RE: Wirtgen v. Cat - Call re Order
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`Thanks James. I’ll circulate a Teams meeting for noon CT.
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`Ryan D. Levy | Managing Shareholder
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`PATTERSON INTELLECTUAL PROPERTY LAW
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`Phone: 615.242.2400 | Fax: 615.242.2221 | rdl@iplawgroup.com
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`Roundabout Plaza | 1600 Division Street, Suite 500
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`Nashville, TN 37203
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`

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`Case 1:17-cv-00770-JDW Document 458-2 Filed 09/24/24 Page 3 of 7 PageID #: 40828
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`This email message, including any attachment(s), is intended only for the named recipient(s) and may contain confidential, proprietary or
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`attorney-client privileged information. Unauthorized individuals or entities are not permitted access to this information. Any dissemination,
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`distribution, disclosure, or copying of this information by other than the intended recipient(s) is unauthorized and strictly prohibited. If you
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`have received this message in error, please advise me by reply email, and delete this message and any attachments. Thank you.
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`From: Barney, James <James.Barney@finnegan.com>
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`Sent: Thursday, September 19, 2024 3:47 PM
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`To: Ryan D. Levy <rdl@iplawgroup.com>
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`Cc: painsworth@sternekessler.com; Mroz, David <David.Mroz@finnegan.com>; Cooley, Daniel
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`<Daniel.Cooley@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
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`Subject: Wirtgen v. Cat - Call re Order
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`Ryan,
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`Jim Yoon passed along your message regarding a potential call tomorrow at noon CT to
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`discuss the next steps following the order on post-trial motions. We are available at noon CT
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`tomorrow to discuss this. Let me know if that still works for you.
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`FYI, Finnegan will be handling this case on behalf of Caterpillar going forward, so please direct all
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`correspondence to our attention, including the attorneys copied. Thanks.
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`Best Regards,
`
`James
`James R. Barney
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4412 | fax: 202.408.4400 | James.Barney@finnegan.com | www.finnegan.com
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
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`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
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`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
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`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
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`Case 1:17-cv-00770-JDW Document 458-2 Filed 09/24/24 Page 4 of 7 PageID #: 40829
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`THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF DELAWARE
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`C.A. No. 17-770-JDW
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`JURY TRIAL
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`) ) ) ) ) ) ) ) ) )
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`WIRTGEN AMERICA, INC.,
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`Plaintiff
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`v.
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`CATERPILLAR INC.,
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`Defendant
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`[PROPOSED] PERMANENT INJUNCTION
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`Defendant Caterpillar Inc. was found to infringe claims of Wirtgen America Inc.’s U.S.
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`Patent Nos. 8,424,972 (claim 12); 7,946,788 (claim 5); 9,656,530 (claims 5 and 22); 7,530,641
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`(claim 11); and 7,828,309 (claim 29).
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`Because I have concluded that (i) Wirtgen is suffering irreparable harm from Caterpillar’s
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`infringement, (ii) Wirtgen does not have an adequate remedy at law, (iii) the balance of hardships
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`weighs in Wirtgen’s favor, and (iv) the public interest would be served by granting injunctive
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`relief, see D.I. 456 at 52–62 (hereby incorporated by reference),
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`IT IS HEREBY ORDERED that, pursuant to 35 U.S.C. § 283, Caterpillar Inc. and its
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`officers, agents, servants, employees, attorneys, and any other persons who are in active concert
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`or participation with them, are hereby permanently enjoined
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`
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`from infringing U.S. Patent No. 8,424,972 (the ’972 Patent) by making, using, selling, or
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`offering to sell in the United States, or importing into the United States the product numbers
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`PM620, PM622, PM820, PM822, and PM825 that infringe claim 12 of the ’972 Patent or
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`products that are not colorably different from these adjudicated products, during the period
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`commencing on today’s date and through the remaining enforceable term of the patent;
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`
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`from infringing U.S. Patent No. 7,946,788 (the ’788 Patent) by making, using, selling, or
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`1
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`Case 1:17-cv-00770-JDW Document 458-2 Filed 09/24/24 Page 5 of 7 PageID #: 40830
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`offering to sell in the United States, or importing into the United States the product numbers
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`PM620, PM622, PM820, PM822, PM825, PM310, PM312, and PM313 that infringe claim
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`5 of the ’788 Patent or products that are not colorably different from these adjudicated
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`products, during the period commencing on today’s date and through the remaining
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`enforceable term of the patent;
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`
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`from infringing U.S. Patent No. 9,656,530 (the ’530 Patent) by making, using, selling, or
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`offering to sell in the United States, or importing into the United States the product numbers
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`RM600 and RM800 that infringe claim 22 of the ’530 Patent or products that are not
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`colorably different from these adjudicated products, using features addressed in Section A
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`below, during the period commencing on today’s date and through the remaining
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`enforceable term of the patent;
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`from infringing the ’530 Patent by making, using, selling, or offering to sell in the United
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`States, or importing into the United States the former designs of product numbers PM620,
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`PM622, PM820, PM822, and PM825 that infringe claims 5 and 22 of the ’530 Patent or
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`products that are not colorably different from these adjudicated products, and that existed
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`prior to the products’ post-ITC redesigns, during the period commencing on today’s date
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`and through the remaining enforceable term of the patent;
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`
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`from infringing U.S. Patent No. 7,530,641 (the ’641 Patent) by making, using, selling, or
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`offering to sell in the United States, or importing into the United States the former designs
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`of product numbers PM620, PM622, PM820, PM822, PM825, PM310, PM312, and
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`PM313 that infringe claim 11 of the ’641 Patent or products that are not colorably different
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`from these adjudicated products, and that existed prior to the products’ post-ITC redesigns,
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`during the period commencing on today’s date and through the remaining enforceable term
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`Case 1:17-cv-00770-JDW Document 458-2 Filed 09/24/24 Page 6 of 7 PageID #: 40831
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`of the patent;
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`
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`from infringing U.S. Patent No. 7,828,309 (the ’309 Patent) by making, using, selling, or
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`offering to sell in the United States, or importing into the United States the former designs
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`of product numbers PM620, PM622, PM820, PM822, and PM825 that infringe claim 29
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`of the ’309 Patent or products that are not colorably different from these adjudicated
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`products, and that existed prior to the products’ post-ITC redesigns, during the period
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`commencing on today’s date and through the remaining enforceable term of the patent.
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`Consistent with the Memorandum (Dkt. No. 456 at 63) and Order (Dkt. No. 457 at 1), by
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`October 11, 2024, Caterpillar Inc. shall serve on Wirtgen a supplemental accounting of its sales of
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`the above-listed products through September 30, 2024 that are not reflected in Exhibit 3322.
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`Wirtgen has 28 days from receipt of this accounting to file a supplemental damages calculation for
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`approval. Notwithstanding the foregoing, nothing in this order shall enjoin Caterpillar Inc.’s
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`activity or shall
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`require Caterpillar
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`to breach contractual obligations (including service
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`agreements) regarding products reflected in Exhibit 3322 or Caterpillar Inc.’s supplemental
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`accounting,
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`including shipping, distributing, providing sales variance, servicing (including
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`technical support and repair services), providing replacement parts, or training relating to such
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`products. Further, nothing in this order shall prohibit independent dealers of Caterpillar Inc.’s
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`products from selling through the above-listed products already in their inventories.
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`Section A: The jury saw evidence of two features in RM machines that Wirtgen alleged
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`infringed claim 22 of the ’530 patent. Feature A was illustrated in Trial Exhibit 2996A, an image
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`of a screen showing an average lifting position of the back two legs. Feature B was illustrated in
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`Trial Exhibits 4656 and 4657, images of screens showing the lifting position of the left and right
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`legs, respectively. In its briefing for judgment as a matter of law, Caterpillar argued that Feature
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`Case 1:17-cv-00770-JDW Document 458-2 Filed 09/24/24 Page 7 of 7 PageID #: 40832
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`A could not infringe claim 22 of the ’530 patent, because a screen showing an average of both legs
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`is not “display[ing] the lifting positions of each of the lifting columns,” as required by claim 22.
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`Dkt. 381 at 18-19; Dkt. 429 at 10-11. Wirtgen argued that the evidence of Feature A was substantial
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`evidence supporting the jury’s verdict of infringement. Dkt. 406 at 17. The Court ruled that Feature
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`B—not Feature A—provided substantial evidence for the jury’s verdict. Dkt. 456 at 22-23 (citing
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`trial testimony discussing Trial Exhibits 4656 and 4657—illustrating Feature B—as substantial
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`evidence and not 2996A—illustrating Feature A. Because this Court decided that evidence
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`illustrating Feature B was the substantial evidence supporting the jury’s verdict as to claim 22 of
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`the ’530 patent, this injunction against infringement of claim 22 of the ’530 patent does not apply
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`to RM machines with Feature A but where Feature B has been removed.
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`IT IS HEREBY ORDERED
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`Date: _______________
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`____________________________
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`United States District Judge
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