Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 1 of 15 PageID #: 40839
`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 1 of 15 PagelD #: 40839
`
`EXHIBIT D
`EXHIBIT D
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 2 of 15 PageID #: 40840
`
`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Paul A. Ainsworth
`Mroz, David; Cooley, Daniel; Ryan D. Levy; Barney, James
`Fagan, Jonathan; Will Milliken
`RE: Wirtgen v. Cat - Call re Order
`Monday, September 23, 2024 5:59:29 PM
`image001.png
`shield-advisory.png
`chevron-light.png
`
`External email
`
`David,
`
`As we discussed, we disagree that this argument is proper, timely or correct. Nevertheless, we confirm
`
`that the portions of the Wirtgen briefs cited below are not confidential.
`
`Thanks,
`
`Paul
`
`From: Mroz, David <David.Mroz@finnegan.com>
`
`Sent: Monday, September 23, 2024 4:22 PM
`
`To: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Cooley, Daniel
`
`<Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney, James
`
`<James.Barney@finnegan.com>
`
`Cc: Fagan, Jonathan <Jonathan.Fagan@finnegan.com>; Will Milliken <WMilliken@sternekessler.com>
`
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`Paul and Ryan,
`
`Following up on what we discussed on our call, during the ITC investigation Wirtgen argued the
`
`following with respect to claim 23 of the ’530 patent: “Displaying an average of multiple signals is not
`
`the same as displaying the signal associated with single sensor.” Certain Road Milling Machines and
`
`Components Thereof, Inv. No. 337-TA-1067, Wirtgen America’s Pre-Hearing Statement and Brief, 205
`
`(Mar. 30, 2018); Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067,
`
`Wirtgen America’s Post-Hearing Brief, 132 (May 11, 2018).
`
`Although Wirtgen was discussing claim 23 and not claim 22 when making this statement, that makes no
`
`difference because the relevant portion of claim 22 is not meaningfully distinguishable from the
`portion of claim 23 that Wirtgen was discussing.
`
`Claim 22
`
`Claim 23
`
`22. The road construction machine of claim 1,
`
`23. The road construction machine of claim 22,
`
`further comprising:
`
`wherein:
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 3 of 15 PageID #: 40841
`
`an indicator device operable to display
`
`the plurality of lifting columns includes
`
`the lifting positions of each of the lifting
`
`two front lifting columns and two rear
`
`columns corresponding to the signals
`
`lifting columns; and
`
`produced by the lifting position sensors.
`
`
`
`
`
`
`
`the indicator device is operable to display
`
`the lifting positions of the two front
`
`lifting columns and two rear lifting
`
`columns.
`
`
`
`Please let us know by the end of the day today if Wirtgen agrees that the following portions of its ITC
`
`filings do not contain Wirtgen Confidential Business Information.
`
`
`
`Pages 204-205 of Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067,
`Wirtgen America’s Pre-Hearing Statement and Brief (Mar. 30, 2018)
`
`Pages 131-133 of Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067,
`Wirtgen America’s Post-Hearing Brief (May 11, 2018).
`
`We intend to rely on information from these pages in upcoming filings in Delaware.
`
`
`
`Regards,
`
`Dave
`
`
`
`
`David K. Mroz
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4022 | fax: 202.408.4400 | david.mroz@finnegan.com | www.finnegan.com
`
`
`
`
`
`From: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>
`
`Sent: Monday, September 23, 2024 3:30 PM
`
`To: Cooley, Daniel <Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney,
`
`James <James.Barney@finnegan.com>
`
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>; Will
`
`Milliken <WMilliken@sternekessler.com>
`
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`Dan,
`
`
`
`Attached is a draft form of final judgment. We understand that we disagree on whether a Rule 54(b)
`
`judgment ought to be entered, but let us know whether you have any concerns with the proposed
`
`form.
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 4 of 15 PageID #: 40842
`
`Thanks,
`
`Paul
`
`
`
`From: Paul A. Ainsworth
`
`Sent: Monday, September 23, 2024 3:20 PM
`
`To: 'Cooley, Daniel' <Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney,
`
`James <James.Barney@finnegan.com>
`
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>; Will
`
`Milliken <WMilliken@sternekessler.com>
`
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`Dan,
`
`
`
`We write to clarify two points.
`
`
`
`First, with respect to machines sold prior to the injunction going into effect, we have further considered
`
`your position in view of controlling law. Under the circumstances, we do not think we can agree to the
`
`language you have proposed. We agree that the law does not permit a double recovery for damages
`
`once a patentee has been fully compensated via a damages award. That is not quite the situation we
`
`are in here as that principle applies only after a patentee has actually collected on a damages award.
`
`See Gelayre Elecs., Inc. v. Jackson, 443 F.3d 851, 873 (Fed. Cir. 2006); Fuji Photo Film Co. v. Int'l Trade
`
`Comm'n, 474 F.3d 1281, 1294–95 (Fed. Cir. 2007). As Caterpillar has not satisfied the damages award
`
`here, we do not think the double recovery principle applies.
`
`
`
`Second, the sentence where we struck that sentence already referred to the “former design,” which we
`
`thought captured the point. By adding the language “that existed prior to the products post ITC
`
`redesigns” seemed to us as at best duplicative if not confusing. If you don’t think “former design”
`
`captures the point adequately, happy to discuss at 4.
`
`
`
`Thanks,
`
`Paul
`
`
`
`
`
`
`
`From: Cooley, Daniel <Daniel.Cooley@finnegan.com>
`
`Sent: Monday, September 23, 2024 1:36 PM
`
`To: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Ryan D. Levy <rdl@iplawgroup.com>;
`
`Barney, James <James.Barney@finnegan.com>
`
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>; Will
`
`Milliken <WMilliken@sternekessler.com>
`
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`Ryan and Paul,
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 5 of 15 PageID #: 40843
`
`
`
`For clarity, we wanted to memorialize a few points from our discussion today.
`
`
`
`
`
`Wirtgen agreed to reconsider our language starting “nothing in this order . . .,” which
`
`addresses activities that may occur on machines that Caterpillar sold prior to the
`
`injunction going into effect and would be accounted for in damages (either at trial or in
`
`supplemental damages). There was agreement that the law does not permit a double
`
`recovery, including both injunction and damages on the same sold machine. Wirtgen will
`
`consider sending revisions if it has particular issues.
`
`The parties are at an impasse regarding the argument in “Section A.” It is Wirtgen’s position
`
`that the jury decided this issue.
`
`The parties at an impasse on Rule 54(b). Wirtgen believes that the court should enter
`
`partial judgment. Caterpillar opposes partial judgment. Unless an agreement is reached,
`
`Wirtgen will send its 2.5 pages of argument today by midnight. Caterpillar will send its
`
`responsive 2.5 pages by noon tomorrow (9/24). The parties may then meet and confer.
`
`Wirtgen will file the briefing by 5:00 pm ET tomorrow.
`
`The parties agreed to continue to discuss prejudgment interest.
`
`Caterpillar will further consider Wirtgen’s additions to the order (e.g., “colorably different”
`
`language).
`
`One additional point that requires clarification: Wirtgen had removed the language “that existed
`
`prior to the post ITC redesigns.” Can you please clarify your opposition to the language?
`
`
`
`Thanks,
`
`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
`
`
`
`
`
`From: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>
`
`Sent: Friday, September 20, 2024 7:43 PM
`
`To: Cooley, Daniel <Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney,
`
`James <James.Barney@finnegan.com>
`
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>; Will
`
`Milliken <WMilliken@sternekessler.com>
`
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`
`
`Dan,
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 6 of 15 PageID #: 40844
`
`
`
`Thank you for sending the draft and for the discussion today. Attached are our edits to the draft. Happy
`
`to discuss on Monday. Also happy to consider any additional changes you may have beforehand.
`
`
`
`Thanks,
`
`Paul
`
`
`
`From: Cooley, Daniel <Daniel.Cooley@finnegan.com>
`
`Sent: Friday, September 20, 2024 12:06 PM
`
`To: Ryan D. Levy <rdl@iplawgroup.com>; Barney, James <James.Barney@finnegan.com>
`
`Cc: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Mroz, David <David.Mroz@finnegan.com>;
`
`Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
`
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`
`Ryan,
`
`
`
`Please see the attached draft language. We look forward to discussing this further today.
`
`
`
`Regards,
`
`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
`
`
`
`
`
`From: Ryan D. Levy <rdl@iplawgroup.com>
`
`Sent: Thursday, September 19, 2024 5:11 PM
`
`To: Barney, James <James.Barney@finnegan.com>
`
`Cc: painsworth@sternekessler.com; Mroz, David <David.Mroz@finnegan.com>; Cooley, Daniel
`
`<Daniel.Cooley@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
`
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`
`
`Thanks James. I’ll circulate a Teams meeting for noon CT.
`
`
`
`Ryan D. Levy | Managing Shareholder
`
`PATTERSON INTELLECTUAL PROPERTY LAW
`
`Phone: 615.242.2400 | Fax: 615.242.2221 | rdl@iplawgroup.com
`
`Roundabout Plaza | 1600 Division Street, Suite 500
`
`Nashville, TN 37203
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 7 of 15 PageID #: 40845
`
`
`
`This email message, including any attachment(s), is intended only for the named recipient(s) and may contain confidential, proprietary or
`
`attorney-client privileged information. Unauthorized individuals or entities are not permitted access to this information. Any dissemination,
`
`distribution, disclosure, or copying of this information by other than the intended recipient(s) is unauthorized and strictly prohibited. If you
`
`have received this message in error, please advise me by reply email, and delete this message and any attachments. Thank you.
`
`
`
`From: Barney, James <James.Barney@finnegan.com>
`
`Sent: Thursday, September 19, 2024 3:47 PM
`
`To: Ryan D. Levy <rdl@iplawgroup.com>
`
`Cc: painsworth@sternekessler.com; Mroz, David <David.Mroz@finnegan.com>; Cooley, Daniel
`
`<Daniel.Cooley@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
`
`Subject: Wirtgen v. Cat - Call re Order
`
`
`
`Ryan,
`
`
`
`Jim Yoon passed along your message regarding a potential call tomorrow at noon CT to
`
`discuss the next steps following the order on post-trial motions. We are available at noon CT
`
`tomorrow to discuss this. Let me know if that still works for you.
`
`
`
`FYI, Finnegan will be handling this case on behalf of Caterpillar going forward, so please direct all
`
`correspondence to our attention, including the attorneys copied. Thanks.
`
`
`
`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,
`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.
`
`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.
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 8 of 15 PageID #: 40846
`
`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.
`
`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.
`
`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.
`
`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.
`
`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.
`
`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.
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 9 of 15 PageID #: 40847
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, DC
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN ROAD MILLING MACHINES
`
`AND COMPONENTS THEREOF
`
`
`
`Investigation No. 337-TA-1067
`
`WIRTGEN AMERICA’S PRE-HEARING STATEMENT AND BRIEF
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 10 of 15 PageID #: 40848
`
`specific controller in Mannebach. Thus,it is unclear how Mannebach can supply the claimed
`
`controller in claim 16. CX-0005C (Lumkes Rebuttal WS) Q172.
`
`f)
`
`Claim 23 is not obvious over Swisher, Glasson, and Davis
`
`Claim 23 recites that “the indicator device is operable to displaythelifting positions of
`
`the two front lifting columnsandtworearlifting columns.” Claim 23 depends from claims 1 and
`
`22 and, thus, also requires each limitation of these two claims.
`
`As discussed above, the Swisher-Glasson combination does not render claim 1 obvious.
`
`Caterpillar does not rely on Davis for curing any of the deficiencies of Swisher and Glasson with
`
`respect to claim 1. Thus, claim 23 is not obvious over Swisher, Glasson, and Davis for same
`
`reasonsthat claim 1 is not obvious over Swisher and Glasson. Additionally, Swisher, Glasson,
`
`and Davisfail to disclose or render obvious “the indicator device is operable to display the lifting
`
`positions of the two frontlifting columnsandtworearlifting columns,” as recited in claim 23.
`
`Swisher and Glasson do not disclose “the indicator device is operable to display the
`
`lifting positions of the two frontlifting columnsand tworearlifting columns,” and Caterpillar
`
`doesnotassert that they do. Caterpillar admits that “the Swisher-Glasson combination does not
`
`disclose an indicator device operable to display the lifting positions of the two frontlifting
`
`columns andtworearlifting columns....” RX-0985C.0086 (Alleyne Direct WS).
`
`Davisfails to disclose an “indicator device [that] is operable to display the lifting
`
`positions of the two frontlifting columnsand tworear lifting columns,”as recited in claim 23.
`
`Caterpillar points to displays 161, 171, and 191 of Davis forallegedly disclosing this feature, but
`
`ignores the express disclosure of what valuesare actually displayed. As shown in Figure 3 of
`
`Davis, the machine includesa plurality of sensors 13 and 14 on both sides of the machine. As
`
`explained in RX-0023.0006 935 and §36 (Davis), the data processing systems average(i.e.,
`
`determine a mean) of the signals from each of sensors 13 and 14, and this average is displayed
`
`204
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 11 of 15 PageID #: 40849
`
`on displays 161 and 171. Not one value of a signal from an individual sensor13 or 14 is ever
`
`displayed on displays 161 and 171. Rather, only the average of the sensors are displayed.
`
`Displaying an average of multiple signals is not the same as displaying the signal associated with
`
`single sensor. As such, Davis fails to disclose an “indicator device [that] is operable to display
`
`the lifting positions of the two frontlifting columnsand tworearlifting columns.” CX-0005C
`
`(Lumkes Rebuttal WS) Q177.
`
`Caterpillar does not articulate any reason or motivation to combine Davis with Swisher
`
`and Glasson.It simply concludesthat a “skilled artisan would recognize that the Swisher-
`
`Glasson combination in further view of Davis teaches a machine with two front and two rear
`
`lifting columnsandan indicator device for displaying the lifting positions of each of these lifting
`
`columns in accordance with this claim, and thus is obvious.” RX-0985C.0087 (Alleyne Direct
`
`WS).
`
`There are multiple reasons not to combine Swisher, Glasson, and Davis. Modifying
`
`Swisherand Glasson to operate according to the control devices and displays of Davis is more
`
`than trivial, as both Swisher’s and Glasson’s control schemes input different measurements and
`
`values than that of Davis’s. Specifically, Swisher’s control scheme measures an external
`
`elevation by using reference elevation sensors suchasa string line sensor or an averaging bar,
`
`whereas Glasson measures a cylinder displacement by using in-cylinder displacement sensing
`
`sensors. After this proposed modification, the system of Swisher and Glasson must be modified
`
`to measure, calculate, and display right and left side elevation and machine inclination values on
`
`the control display as described in Davis. This would require a substantial change of the control
`
`scheme. CX-0005C (Lumkes Rebuttal WS) Q179.
`
`4.
`
`Validity over the PM565 Grounds
`
`205
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 12 of 15 PageID #: 40850
`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 12 of 15 PagelD #: 40850
`
`THE UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, DC
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN ROAD MILLING MACHINES
`AND COMPONENTS THEREOF
`
`
`
`Investigation No. 337-TA-1067
`
`WIRTGEN AMERICA’S POST-HEARING BRIEF
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 13 of 15 PageID #: 40851
`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 13 of 15 PagelD #: 40851
`
`Davis’s processing systems 16, 17, 19 and PLC 20 cannot perform this task. Thus, the controller
`
`of Davis cannotbe the controller of claim 16. CX-0005C (Lumkes Rebuttal WS) Q169.
`
`d)
`
`Claim 16 would not have been obvious over Swisher and
`Mannebach
`
`Caterpillar did not expressly identify an invalidity theory of claim 16 based on Swisher
`
`and Mannebach. Caterpillar only identifies a theory based Swisher, Glasson, and Davis. In RX-
`
`0985C.0085 (Alleyne Direct WS), Caterpillar’s expert attempts to rely upon an extraneous
`
`reference, namely RX-0034 (Mannebach)not included in any asserted obviousness
`
`combinations.
`
`The proposed combination of Swisher and Mannebachdoesnot render obvious every
`
`feature of claim 16. First, Caterpillar does not address every claim feature of claim 16 and
`
`claims 1 and 2, from which claim 16 depends. The argumentonly addressesa portion of the
`
`claim element disclosed in claim 16, namely, synchronousraising. Caterpillar does not point to a
`
`specific controller in Mannebach. Thus,it is unclear how Mannebachcan supply the claimed
`
`controller in claim 16. CX-0005C (Lumkes Rebuttal WS) Q172.
`
`e)
`
`Claim 23 would not have been obvious over Swisher, Glasson,
`and Davis
`
`Claim 23 recites that “the indicator device is operable to display the lifting positions of
`
`the two front lifting columns and tworearlifting columns.” Claim 23 depends from claims | and
`
`22 and, thus, also requires each limitation of these two claims.
`
`Asdiscussed above, the Swisher-Glasson combination doesnot render claim 1 obvious.
`
`Caterpillar does not rely on Davis for curing any of the deficiencies of Swisher and Glasson with
`
`respect to claim 1. Thus, claim 23 would not have been obvious over Swisher, Glasson, and
`
`Davis for same reasonsthat claim 1 would not have been obvious over Swisher and Glasson.
`
`131
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 14 of 15 PageID #: 40852
`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 14 of 15 PagelD #: 40852
`
`Additionally, Swisher, Glasson, and Davisfail to disclose or render obvious“the indicator device
`
`is operable to display the lifting positions of the two frontlifting columns and tworearlifting
`
`columns,”as recited in claim 23.
`
`Swisher and Glasson do not disclose “the indicator device is operable to display the
`
`lifting positions of the two frontlifting columnsand tworearlifting columns,” and Caterpillar
`
`doesnotassert that they do. Caterpillar admits that “the Swisher-Glasson combination does not
`
`disclose an indicator device operable to display the lifting positions of the two frontlifting
`
`columnsandtworearlifting columns....” RX-0985C.0086 (Alleyne Direct WS).
`
`Davis fails to disclose an “indicator device [that] is operable to display the lifting
`
`positions of the two frontlifting columns and tworearlifting columns,”as recited in claim 23.
`
`Caterpillar points to displays 161, 171, and 191 of Davis forallegedly disclosing this feature, but
`
`ignores the express disclosure of what valuesare actually displayed. As shown in Figure 3 of
`
`Davis, the machineincludesa plurality of sensors 13 and 14 on both sides of the machine. As
`
`explained in RX-0023.0006 935 and §36 (Davis), the data processing systems average(i.e.,
`
`determine a mean) of the signals from each of sensors 13 and 14, andthis averageis displayed
`
`on displays 161 and 171. Not one value of a signal from an individual sensor 13 or 14 is ever
`
`displayed on displays 161 and 171. Rather, only the average of the sensors are displayed.
`
`Displaying an average of multiple signals is not the sameas displaying the signal associated with
`
`single sensor. As such, Davisfails to disclose an “indicator device [that] is operable to display
`
`the lifting positions of the two frontlifting columnsand tworearlifting columns.” CX-0005C
`
`(Lumkes Rebuttal WS) Q177.
`
`Caterpillar does not articulate any reason or motivation to combine Davis with Swisher
`
`and Glasson. It simply concludesthat a “skilled artisan would recognize that the Swisher-
`
`132
`
`

`

`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 15 of 15 PageID #: 40853
`Case 1:17-cv-00770-JDW Document 458-4 Filed 09/24/24 Page 15 of 15 PagelD #: 40853
`
`Glasson combination in further view of Davis teaches a machine with two front and two rear
`
`lifting columns and an indicator device for displaying the lifting positions of each of these lifting
`
`columnsin accordance with this claim, and thus is obvious.” RX-0985C.0087 (Alleyne Direct
`
`WS).
`
`There are multiple reasons not to combine Swisher, Glasson, and Davis. Modifying
`
`Swisher and Glasson to operate according to the control devices and displays of Davis is more
`
`than trivial, as both Swisher’s and Glasson’s control schemes input different measurements and
`
`values than that of Davis’s. Specifically, Swisher’s control scheme measures an external
`
`elevation by using reference elevation sensors suchasa string line sensoror an averaging bar,
`
`whereas Glasson measures a cylinder displacement by using in-cylinder displacement sensing
`
`sensors. After this proposed modification, the system of Swisher and Glasson must be modified
`
`to measure, calculate, and display right and left side elevation and machineinclination values on
`
`the control display as described in Davis. This would require a substantial change of the control
`
`scheme. CX-0005C (Lumkes Rebuttal WS) Q179.
`
`4.
`
`Objective Indicia of Nonobviousness
`
`a)
`
`Copying
`
`The features of Caterpillar’s PM600 and PM800 machinesdo not merely infringe
`
`Wiutgen America’s 530 patent, these features are direct copies of Wirtgen America’s intelligent
`
`leg control disclosed and claimed in the ’530 patent. CX-0571C (Partial VOC List); CX-0566C
`
`(Controls & Electrical Ideas Review); CX-0500C.0016 (August 2010 Dealer VOC), CX-
`
`0324C.0022-24 (All CPLN GW1 Review- 2); CX-0968C.0208, 488-489 (CAT’s Responseto
`
`2° RFAs) (admitting the purchase, custody, and reverse-engineering of a Wirtgen America
`
`domestic-industry product); CX-0969C.0206-208 (CAT’s Responseto 3“¢ RFAs) (admitting the
`
`133
`
`