Case 1:17-cv-00770-JDW Document 459-1 Filed 09/24/24 Page 1 of 6 PageID #: 40860
`
`THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF DELAWARE
`
`
`WIRTGEN AMERICA, INC.,
`
`
`Plaintiff
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 17-770-JDW
`
`JURY TRIAL
`
`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).
`
`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
`
`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
`1
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 459-1 Filed 09/24/24 Page 2 of 6 PageID #: 40861
`
`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
`
`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
`
`

`

`Case 1:17-cv-00770-JDW Document 459-1 Filed 09/24/24 Page 3 of 6 PageID #: 40862
`
`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.
`
`[Disputed Language]
`
`Consistent with the Memorandum (Dkt. No. 456 at 63) and Order (Dkt. No. 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 or shall require Caterpillar to breach contractual obligations (including service
`
`agreements) regarding products reflected in Exhibit 3322 or Caterpillar Inc.’s supplemental
`
`accounting, including shipping, distributing, providing sales variance, servicing (including
`
`technical support and repair services), providing 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
`
`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
`
`

`

`Case 1:17-cv-00770-JDW Document 459-1 Filed 09/24/24 Page 4 of 6 PageID #: 40863
`
`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.
`
`Dkt. 381 at 18-19; Dkt. 429 at 10-11. Wirtgen argued that the evidence of Feature A was substantial
`
`evidence supporting the jury’s verdict of infringement. Dkt. 406 at 17. The Court ruled that Feature
`
`B—not Feature A—provided substantial evidence for the jury’s verdict. Dkt. 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
`
`

`

`Case 1:17-cv-00770-JDW Document 459-1 Filed 09/24/24 Page 5 of 6 PageID #: 40864
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on September 24, 2024, I caused the foregoing document to be
`
`served by email upon the following counsel:
`
`Lucy Yen
`Michelle Dang
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`lyen@wsgr.com
`mdang@wsgr.com
`
`Matthew A. Macdonald
`Naoya Son
`Alexander Turner
`Neil N. Desai
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`953 East Third Street, Suite 100
`Los Angeles, CA 90013
`matthew.macdonald@wsgr.com
`nson@wsgr.com
`aturner@wsgr.com
`ndesai@wsgr.com
`
`caterpillar@wsgr.com
`
`
`
`Attorneys for Defendant
`
`Bindu A. Palapura
`Andrew L. Brown
`POTTER ANDERSON & CORROON, LLP
`1313 N. Market Street, 6th Floor
`Wilmington, DE 19801
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`James C. Yoon
`Ryan R. Smith
`Christopher Mays
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`jyoon@wsgr.com
`rsmith@wsgr.com
`cmays@wsgr.com
`
`Daniel C. Cooley
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190
`daniel.cooley@finnegan.com
`
`James R. Barney
`David K. Mroz
`Jason L. Romrell
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`james.barney@finnegan.com
`david.mroz@finnegan.com
`jason.romrell@finnegan.com
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 459-1 Filed 09/24/24 Page 6 of 6 PageID #: 40865
`
`
`
`
`
`
`
`
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Alexis N. Stombaugh (No. 6702)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`astombaugh@ycst.com
`
`Attorneys for Plaintiff
`
`