[00:00:00] Speaker 03:
We'll move on to the separate, essentially, cross-appeal or what's been combined to be treated as a cross-appeal.

[00:00:09] Speaker 03:
Mr. Joffe, are you ready to proceed?

[00:00:13] Speaker 00:
Yes, I am, Your Honor.

[00:00:15] Speaker 03:
Okay.

[00:00:17] Speaker 03:
You may.

[00:00:20] Speaker 00:
May it please the Court, Birkin specifically argued in his pre-hearing and post-hearing briefs to the ALJ

[00:00:26] Speaker 00:
that Caterpillar indirectly infringes the 641 by, quote, facilitating others to perform actions using the heusmus scene, which Caterpillar knows will infringe and with the intent that performance of the actions will infringe.

[00:00:41] Speaker 00:
At no point did Caterpillar argue either that it didn't have knowledge or that Birkin failed to prove Caterpillar's knowledge.

[00:00:48] Speaker 00:
And it couldn't do that because Caterpillar had already made binding admissions that it knew about the patent.

[00:00:54] Speaker 00:
Under commission regulations,

[00:00:55] Speaker 00:
20131, that means that under that mission, the issue is conclusively established.

[00:01:04] Speaker 00:
Therefore, the issue of whether Caterpillar had knowledge was conclusively established by the regulations.

[00:01:09] Speaker 00:
But only after the party's briefs and evidence were in did the ALJ

[00:01:14] Speaker 00:
make the argument the category never made?

[00:01:18] Speaker 04:
Mr. Jeffrey, I suggest a couple of things.

[00:01:20] Speaker 04:
There are obviously, as you know, two forms of knowledge, knowledge of the existence of the patent and knowledge of the infringing character of the encouraged act.

[00:01:30] Speaker 04:
The admission that you talked about applies only to the first, right?

[00:01:35] Speaker 00:
The admission applies only to the knowledge of the patent itself.

[00:01:38] Speaker 00:
That's correct under the RFA.

[00:01:39] Speaker 00:
Right.

[00:01:39] Speaker 04:
And in, you did not point, is this right, point the ALJ specifically to the admission?

[00:01:48] Speaker 04:
Is that right?

[00:01:50] Speaker 00:
We did not point in our briefs to the RFA.

[00:01:53] Speaker 00:
We pointed instead to our expert essentially reciting the admission.

[00:01:58] Speaker 04:
Okay.

[00:01:59] Speaker 04:
And that's all about the citation to Q416.

[00:02:05] Speaker 00:
Yes, and generally the statements that are found on appendix page 15.520, which is Q15 and Q16, yes.

[00:02:15] Speaker 04:
Right, and what I'm not sure about is whether anything except the citation to Q416 offers anything in support of knowledge.

[00:02:26] Speaker 04:
Q416 might be enough, I'd like to get to that, but I don't think, tell me if I'm wrong, if any of the other citations offer anything in support.

[00:02:34] Speaker 00:
The other citations that are found in the post-hering brief do not support specific knowledge.

[00:02:41] Speaker 00:
They support copying, but they do not support the same thing the RFA stated.

[00:02:48] Speaker 04:
And one final thing on this.

[00:02:51] Speaker 04:
Is it right that at page 8256 of the ALJ's decision when the ALJ says you didn't have enough evidence of knowledge

[00:03:02] Speaker 04:
drops a footnote, footnote 47 saying here's the evidence you cite from page 143 of your pre-hearing brief.

[00:03:12] Speaker 04:
What the ALJ cites there actually omits any mention of the Q416 citation, isn't that right?

[00:03:19] Speaker 00:
That's quite right, Your Honor.

[00:03:20] Speaker 04:
So the ALJ actually never even considered, as far as we can tell, the Q416 citation.

[00:03:26] Speaker 00:
That's right.

[00:03:27] Speaker 00:
And the ALJ did not consider, obviously, the other pieces of evidence that are all in the record, that all point to destruction.

[00:03:34] Speaker 00:
And that's part of the problem, is that none of you, to be clear, as none of the Verkins spent a lot of time or effort in their briefs talking about these things, the reason being is, at no point did Caterpillar ever say either, no, we don't have knowledge, or even,

[00:03:52] Speaker 00:
and this is important, that Birkin had never proven or cannot prove knowledge.

[00:03:57] Speaker 00:
Rather, the first time that argument ever appeared was in the ALJ's ID.

[00:04:02] Speaker 00:
And that essentially was the ALJ making an argument that Catechol or never did and holding it against Birkin after the point in time when Birkin could have supplemented the record, could have added more information.

[00:04:14] Speaker 00:
And to be quite clear, there was a lot of information that if Birkin was put on notice of this, that Birkin could have cited

[00:04:22] Speaker 00:
Birkin could have cited those RFAs.

[00:04:24] Speaker 00:
Birkin could have put in, there was interrogatories on the point.

[00:04:28] Speaker 00:
Birkin could have spent more time and yielded the lily on the issue.

[00:04:31] Speaker 00:
The problem, of course, is that Birkin had no idea that this was even a disputed issue.

[00:04:36] Speaker 00:
And to say, well, Birkin, it's your burden of proof simply doesn't get far enough along.

[00:04:41] Speaker 00:
To say that, of course, it's the case that Birkin has the burden of proof.

[00:04:45] Speaker 00:
The problem part is that

[00:04:46] Speaker 00:
Verkan stated this was an issue and put in a citation to its expert on the issue, and then heard nothing at all about whether or not this was going to be a further issue.

[00:04:56] Speaker 00:
And that itself is a violation of the APA, which requires that the matters of fact and law asserted be established.

[00:05:07] Speaker 00:
In fact, this is very, very similar to SAS Institute in the regard that in that case, ComplementSoft

[00:05:16] Speaker 00:
did not put in a different claim construction.

[00:05:18] Speaker 00:
In fact, it conceded that the claim construction that the PTAB eventually adopted was incorrect.

[00:05:27] Speaker 00:
And so there was simply no reason for SAS to spend briefing space and time talking about an issue that it did not believe was that issue.

[00:05:36] Speaker 00:
Similarly here, Caterpillar conceded that it had knowledge of the patent.

[00:05:40] Speaker 00:
it did similarly conceded by not opposing it or not putting in their pre-hearing or post-hearing briefs that it had either no knowledge of its infringement or that it lacked any intent.

[00:05:53] Speaker 00:
The sole thing that Cataplur argued in its briefing was that the underlying predicate active direct infringement did not occur.

[00:06:00] Speaker 00:
And the reason it said so is because it essentially said that its machines do not practice the method.

[00:06:07] Speaker 00:
It never said it didn't know about the patents, it didn't know about

[00:06:10] Speaker 00:
it's infringing and do not encourage that.

[00:06:13] Speaker 00:
And that, of course, doesn't make much sense, or that makes a lot of sense that they didn't argue that because, of course, they copied Birkin's machine in order to infringe these patents.

[00:06:24] Speaker 03:
Let's go to the direct infringement council.

[00:06:29] Speaker 03:
You know, you said that they legally erred because the ALJ required you to prove an actual infringer was out there and to identify one.

[00:06:40] Speaker 03:
But how do you square that with the fact that they found direct infringement with respect to the other two products?

[00:06:49] Speaker 00:
The reason that the LJ came to different points is not because it was legally correct on the issue of the PAM300, but on the other issues, there was actual testimony of specific individual customers using it.

[00:07:03] Speaker 00:
There's a specific quote in which Caterpillar's own

[00:07:08] Speaker 00:
a witness stated that yes, customers use the PM-600.

[00:07:12] Speaker 00:
That was lacking in the PM-300, but it was not a necessary point for a piece of evidence to be put forward.

[00:07:21] Speaker 00:
The reason being is that the product necessarily infringed and everyone admits that it was imported into the United States and sold to customers.

[00:07:29] Speaker 00:
So once it's in the customer's hands, that is sufficient under the law.

[00:07:34] Speaker 04:
Can I just follow up?

[00:07:40] Speaker 04:
You do seem to have some evidence on this point, but what, going back very specifically to what you pointed to the ALJ in your pre-hearing brief, what evidence of the PM300 infringement did you point to the ALJ to in the pre-hearing brief?

[00:08:01] Speaker 00:
in the pre-hearing brief.

[00:08:03] Speaker 04:
Or the post-hearing, but the post-hearing brief from yours, I think, the Joint Appendix contains a single page, and I don't think that page is even on this subject.

[00:08:11] Speaker 04:
It is on the induced subject.

[00:08:14] Speaker 00:
Right.

[00:08:14] Speaker 00:
So you can find, for example, at Appendix A-23294.

[00:08:20] Speaker 00:
I'll just direct you to that.

[00:08:24] Speaker 00:
That would be 2394.

[00:08:25] Speaker 00:
Oh, sorry.

[00:08:27] Speaker 00:
I'm sorry.

[00:08:28] Speaker 00:
23294.

[00:08:43] Speaker 04:
I'm afraid that, oh, 3294.

[00:08:45] Speaker 00:
3294, yes.

[00:08:50] Speaker 00:
Apologize.

[00:08:57] Speaker 00:
Here, you will see, Your Honor, that the argument, and you'll see here from hearing testimony from Engelman and from Alleen, that the agreeing that the monitoring, are you there, Your Honor?

[00:09:12] Speaker 03:
Yes.

[00:09:13] Speaker 00:
Agreeing that the monitoring device in all accused products monitors the position of the moldboard and side plates at all times when the rotor is engaged.

[00:09:21] Speaker 00:
And that is an automatic feature that cannot be disabled or shut off.

[00:09:25] Speaker 00:
Furthermore, obviously this gets tripped and automatically happens whenever you drive in reverse with these machines.

[00:09:31] Speaker 00:
And there's testimony, again, from kind of pillars from witness stating that.

[00:09:35] Speaker 00:
the normal operation driving inverse has to happen.

[00:09:40] Speaker 04:
I don't think I have all this in front of me.

[00:09:41] Speaker 04:
That's not in a 641 section, is it?

[00:09:45] Speaker 00:
It is.

[00:09:45] Speaker 00:
Oh, they're separate.

[00:09:47] Speaker 04:
It's 641.

[00:09:48] Speaker 04:
And is this, since we have so many missing pages, is this under a heading about why the 641 is being infringed?

[00:09:58] Speaker 00:
I believe that it is the, I think it might be the precursor describing how it all works.

[00:10:05] Speaker 00:
I don't know if it's under a specific section that says in here there is direct infringement later on.

[00:10:12] Speaker 00:
So this is specifically under the 641 patent, but I don't know if it is as precise.

[00:10:18] Speaker 04:
But then when you get to 3399, this is 142, that seems to be where you're talking about infringement of the 641 and as to the PM300 series,

[00:10:32] Speaker 04:
I'm not exactly sure what you cite.

[00:10:35] Speaker 04:
Maybe it's just this Alleyne testimony.

[00:10:41] Speaker 00:
Yes, and if you go to Appendix 3399, which is also on infringement, you'll note that it also discusses the IPM 300 in there as well, including encouraging and fulfilling others and the fact that it's a better practice than just a resumption.

[00:11:01] Speaker 00:
I see I have no further time.

[00:11:02] Speaker 03:
We'll restore your rebuttal time.

[00:11:04] Speaker 03:
Let's go and hear from Mr. Lieberman.

[00:11:09] Speaker 02:
May it please the court?

[00:11:13] Speaker 02:
So, Warden's appeal concerns the fact that it fails to timely and properly present and prove its claim of induced infringement before the ALJ.

[00:11:24] Speaker 02:
And as a result, Warden's claim is waived and there are at least three grounds for finding a waiver.

[00:11:32] Speaker 02:
So working failed to present its argument in its pre-hearing brief, arguments and evidentiary support, and thus it violated ground rules.

[00:11:42] Speaker 02:
And that's Appendix 20592.

[00:11:45] Speaker 03:
So I can work... Counsel, what do you do with the fact that the ALJ made a blanket statement in its opinion that work manuals, technical presentations, and expert testimony do not demonstrate Caterpillar's knowledge?

[00:12:01] Speaker 03:
That sort of implies that the ALJ knew that his obligation was to look at everything and now counsel has pointed us to things in the expert testimony at least and in the manuals that would support the knowledge component.

[00:12:19] Speaker 02:
Well, there are a couple of points.

[00:12:20] Speaker 02:
I will start with the last point.

[00:12:23] Speaker 02:
Even if you go to the expert testimony, it doesn't show

[00:12:27] Speaker 02:
the requisite knowledge elements of the induced claim infusion.

[00:12:30] Speaker 02:
For example, I would go straight to page 15-520, that's question 416.

[00:12:38] Speaker 02:
And here the expert defines about working belief that Caterpillar provides explicit instructions which infringes at least claims 11 and

[00:12:53] Speaker 02:
17 of 641 patents.

[00:12:55] Speaker 02:
So it doesn't show the knowledge on the part of Caterpillar.

[00:12:58] Speaker 02:
It shows belief on the part of organ.

[00:13:01] Speaker 03:
Now, the... What do you do with the fact that Caterpillar never denied knowledge?

[00:13:07] Speaker 02:
Well, Caterpillar did not have a burden to prove this claim of induced infringement in the first place.

[00:13:14] Speaker 02:
Now, in the second place, it didn't have a reason to rebut something that was not even

[00:13:21] Speaker 02:
put in front of the judge and in front of the Caterpillar, because Morgan failed to properly argue, it's prima facie case of induced infringement, inconsistently failed to do that.

[00:13:34] Speaker 04:
In order to- Mr. Liebman, this is Judge Taranto.

[00:13:38] Speaker 04:
I got to ask you to return to this 415 quote at A15520.

[00:13:43] Speaker 04:
This sentence does it not expressly says Caterpillar induced,

[00:13:51] Speaker 04:
others to infringe 11 and 17 and 641 by selling for importation, et cetera, machines, and encouraging and facilitating others to perform actions using those machines that Caterpillar knows will infringe.

[00:14:08] Speaker 04:
Is that an express?

[00:14:10] Speaker 02:
I'm sorry, what question are you referring to?

[00:14:14] Speaker 04:
I just wanted to... The very same one you were reading from.

[00:14:19] Speaker 02:
Well, I'm reading from...

[00:14:20] Speaker 02:
Question and answer 416 on page 15520.

[00:14:25] Speaker 02:
And I don't see this language that you refer to in this question.

[00:14:28] Speaker 04:
I'm sorry, I was reading from 415, which I thought is what you were referring to.

[00:14:34] Speaker 02:
Okay, 415, okay.

[00:14:35] Speaker 02:
So 415, now, the language you are referring to doesn't prove, number one, it wasn't

[00:14:48] Speaker 02:
It wasn't explicitly placed before the judge.

[00:14:51] Speaker 04:
Well, I guess I have two questions about that.

[00:14:54] Speaker 04:
One is the citation to Q416, the next one, is in the pre-hearing brief, but the ALJ seems to have overlooked it, right?

[00:15:07] Speaker 04:
Because it's not in footnote 47.

[00:15:11] Speaker 02:
Well, I have to double check that.

[00:15:12] Speaker 04:
I can go... Well, it's not in footnote 47.

[00:15:17] Speaker 04:
And then if you look at what the question is...

[00:15:20] Speaker 04:
that 416 asks is, do you have any examples of such actions on behalf of Caterpillar?

[00:15:29] Speaker 04:
That is 416.

[00:15:30] Speaker 04:
That is what was cited in the pre-hearing brief.

[00:15:33] Speaker 04:
Doesn't that, by its terms, examples of such actions immediately refer back to the answer just given in 415 and therefore

[00:15:44] Speaker 04:
constitute an answer about examples where Caterpillar knows it's encouraging infringement?

[00:15:54] Speaker 04:
The language of the cited question for 416.

[00:15:58] Speaker 02:
Well, I would respond to that, that number one, it doesn't expressly directly refer to 415, but even if you go from 416 to 415, then there is no fact

[00:16:13] Speaker 02:
that prove that Caterpillar knows that it will infringe.

[00:16:19] Speaker 02:
Even if the statement itself constitutes an allegation, there is no evidentiary proof for this statement.

[00:16:27] Speaker 02:
It's a conclusory statement.

[00:16:29] Speaker 02:
And the fact that it's an expert who is making that, it doesn't change the fact that it doesn't provide any evidence as required in this case.

[00:16:39] Speaker 02:
Okay, go ahead.

[00:16:41] Speaker 04:
No, no, no.

[00:16:44] Speaker 02:
Be a little cruel, even in light of the sentence.

[00:16:47] Speaker 03:
Okay, Mr. Lehman, this time I'm going to hold you to your time so we can give Mr. Barney his allotted time.

[00:16:55] Speaker 03:
Okay, I'm sorry, can I continue?

[00:16:57] Speaker 03:
No, we're going to hear from Mr. Barney.

[00:17:00] Speaker 03:
Okay, thank you.

[00:17:03] Speaker 01:
Thank you, Your Honor.

[00:17:03] Speaker 01:
This is Mr. Barney.

[00:17:07] Speaker 01:
I want to just go back to what Judge Toronto just asked, and I think everybody's clear here, but just to make sure we're clear, question and answer 416 was cited in the pre-hearing brief.

[00:17:19] Speaker 01:
Question and answer 415 was not, so that actually was not part of what Workin presented to the ALJ in support of its induced infringement argument.

[00:17:31] Speaker 01:
And I agree with that.

[00:17:35] Speaker 04:
I'm sorry to jump in, but this seems to me to be what this more or less comes down to.

[00:17:40] Speaker 04:
Except that citing 416, where the question begins, do you have examples of such actions?

[00:17:49] Speaker 04:
Just to understand what that language means necessarily refers you to the answer just given in 415, and that's the answer that has the knowledge element.

[00:18:00] Speaker 01:
Well, Your Honor, I would just go back and point out that the ICC's, you know, rules require that specific evidence be cited to, you know, in the pre-hearing and post-hearing briefs.

[00:18:12] Speaker 01:
Workin made a conscious decision for whatever tactical reason to only cite to 416, not to 415.

[00:18:19] Speaker 01:
But taking your point at face value, Your Honor, I agree with Mr. Lieberman that even if you were to consider 416, all that is is the conclusory opinion of an expert

[00:18:29] Speaker 01:
with no basis whatsoever to show the subjective intent of Caterpillar.

[00:18:35] Speaker 04:
Did the ALJ analyze the significance of the 416 with or without 415?

[00:18:43] Speaker 01:
I don't have, I don't know, Your Honor.

[00:18:47] Speaker 04:
I guess it is striking to me that in footnote 47, which is the footnote attached to the sentence where, you know, the conclusory ALJ sentence about the evidence says, here's the evidence that work can put on.

[00:19:04] Speaker 04:
And it cited everything in that paragraph on 3400, except the reference to 416.

[00:19:12] Speaker 01:
Your honor, I don't have the answer to the question other than to say that working for whatever tactical reason did not fight the 415.

[00:19:21] Speaker 01:
They want to fault the ALJ for not

[00:19:24] Speaker 01:
digging into the record and essentially making an argument on behalf of Workin to prove up one of Workin's burdens.

[00:19:31] Speaker 01:
That's not the ALJ's job.

[00:19:33] Speaker 01:
The ALJ, we believe, did what he had to do.

[00:19:36] Speaker 01:
Given the arguments and the evidence that was presented to him, he found that Workin failed to carry the burden on both of the knowledge prongs, knowledge of the patent as well as knowledge of infringement.

[00:19:45] Speaker 01:
The other thing is, you know, they keep pointing to the fact that, well, Caterpillar never put any counter-evidence

[00:19:52] Speaker 01:
Caterpillar was also responding to the arguments that Workin made.

[00:19:57] Speaker 01:
And you have to remember, just to put this all in context, the reason there's very little evidence on induced infringement is because it was always an afterthought for Workin.

[00:20:06] Speaker 01:
They focused 99% of their attention on the apparatus claims.

[00:20:10] Speaker 01:
And it was only after the ALJ found those apparatus claims invalid that they suddenly switched and started arguing inducement.

[00:20:17] Speaker 01:
But that was after the ALJ's initial determination.

[00:20:21] Speaker 01:
And so what they did at the commission level and what they're doing now is they're hunting and pecking through the record and trying to find... Mr. Burns, can I just ask this because I don't know

[00:20:33] Speaker 04:
as well as you do, how these things go in the ITC.

[00:20:37] Speaker 04:
So in a regular district court action, what Workin said as an allegation, which is plain on its face at 3400, right, including the assertion of knowledge, would provoke, on the other side, a response to the effect

[00:21:01] Speaker 04:
You have not supported that allegation with evidence, and yet you did not do that in response to the pre-hearing.

[00:21:11] Speaker 04:
You didn't say, we read on the face of your paragraph at 3400 what you were asserting, but we don't think you have enough evidence for that.

[00:21:20] Speaker 04:
You just didn't respond to it at all.

[00:21:24] Speaker 01:
Well, Your Honor, again, I would disagree that

[00:21:27] Speaker 01:
Their allegation is evidence.

[00:21:30] Speaker 01:
The allegation is an attorney argument.

[00:21:33] Speaker 01:
When it came time for them to put in the evidence, they didn't.

[00:21:36] Speaker 01:
They didn't cite to any evidence to show the subjective intent of Caterpillar.

[00:21:40] Speaker 01:
Now, had they made that allegation, and what we would point to is there's tremendous evidence of good faith basis for a belief of non-affringement.

[00:21:50] Speaker 04:
Are the post-hearing briefs submitted simultaneously or seriatim so that one responds to the other or what?

[00:21:59] Speaker 01:
They're submitted simultaneously and then both sides get a chance to reply.

[00:22:05] Speaker 04:
And did you in your reply raise this question of sufficiency of evidence of the two knowledge elements of inducement?

[00:22:15] Speaker 01:
No, Your Honor.

[00:22:16] Speaker 01:
The evidence went in exactly as it's been briefed.

[00:22:21] Speaker 01:
We contend they did not put in evidence on their two required knowledge prongs.

[00:22:26] Speaker 01:
The ALJ found they didn't put in evidence of the two knowledge prongs.

[00:22:30] Speaker 01:
There's substantial evidence in the record to support the ALJ's finding that they failed to prove the two knowledge prongs.

[00:22:37] Speaker 01:
If I could very briefly just turn to the direct infringement question that Judge O'Malley asked about.

[00:22:43] Speaker 03:
Give you one minute.

[00:22:44] Speaker 01:
Thank you, Your Honor.

[00:22:45] Speaker 01:
So on the question of the PM300, work and failure of proof is even more extensive.

[00:22:53] Speaker 01:
And that's because in addition to not proving the knowledge prongs, they failed to prove that any third party used the PM300 to practice the claim method.

[00:23:02] Speaker 01:
Now, working claims now that all it needed to show was that the machines were driven backwards.

[00:23:05] Speaker 01:
But that's incorrect.

[00:23:07] Speaker 01:
Worker needed to show that a third party practiced all the method steps of claims 11 and 17.

[00:23:13] Speaker 01:
They didn't carry that burden.

[00:23:14] Speaker 01:
They didn't even try.

[00:23:15] Speaker 01:
They didn't make any attempt to carry that burden.

[00:23:17] Speaker 01:
Now remember, only three PM300 machines were imported at the time of trial, and they were still undergoing field testing.

[00:23:24] Speaker 01:
Workin never presented any evidence as to the nature of that field testing.

[00:23:28] Speaker 01:
It presented no evidence that customers were using it.

[00:23:30] Speaker 01:
They point to evidence now.

[00:23:32] Speaker 01:
They want you to make inferences now.

[00:23:34] Speaker 01:
But they never pointed that evidence to the ALJ.

[00:23:38] Speaker 01:
They never presented evidence that the machines were driven backwards.

[00:23:40] Speaker 01:
They never presented the evidence that the machines were driven backwards with the rotor engaged.

[00:23:45] Speaker 01:
Because remember, it's not just driving backwards.

[00:23:46] Speaker 01:
You have to have the rotor engaged.

[00:23:48] Speaker 01:
You would have to know the nature of the field testing to know any of that.

[00:23:52] Speaker 01:
They just never even tried to put that evidence in.

[00:23:55] Speaker 01:
And so they are just now asking you to make factual inferences on appeal when they had the opportunity to do so at trial, and they simply did not do so.

[00:24:05] Speaker 03:
OK, thank you.

[00:24:06] Speaker 03:
All right, Mr. Duffy, can we start where Mr. Barney ended?

[00:24:17] Speaker 03:
with your rebuttal?

[00:24:19] Speaker 00:
Yes.

[00:24:20] Speaker 00:
On the PM300, Your Honor, there was specific evidence.

[00:24:25] Speaker 00:
And the ALJ, in fact, found multiple pieces of evidence that support Birkin.

[00:24:30] Speaker 00:
Namely, the ALJ found that Caterpillar imported the PM300 into the United States.

[00:24:35] Speaker 00:
And that can be found at appendix 96 through 100.

[00:24:38] Speaker 00:
Caterpillar's own witness admitted that at least one of those machines was being used by a customer.

[00:24:42] Speaker 00:
And that can be found at appendix 19215.

[00:24:45] Speaker 00:
Birkin explained, and as I pointed out in response to Toronto's questions.

[00:24:50] Speaker 04:
I'm sorry, what was the previous one, something about admitted?

[00:24:53] Speaker 00:
Yes, he admitted that at least one of those machines was being used by a customer.

[00:24:57] Speaker 04:
What was the citation for that?

[00:24:59] Speaker 00:
A19215.

[00:25:02] Speaker 00:
You can find that at 177.6 through 21.

[00:25:05] Speaker 04:
But that's not in the ALJ's... That's not, no.

[00:25:12] Speaker 04:
And was that cited by you in your argument about PM300 direct infringement to the data?

[00:25:19] Speaker 00:
We did not cite that specific point, Your Honor, that they witness you that knew of the machines being used.

[00:25:25] Speaker 00:
But we did say that the PM300 is an automatic feature that cannot be disabled or shut down and citing evidence for that in response as we went through last time on page 3294.

[00:25:39] Speaker 03:
Do you dispute that even that one customer was just doing the testing?

[00:25:47] Speaker 00:
No.

[00:25:47] Speaker 00:
What we simply state is that milling machines can't turn on a dime.

[00:25:53] Speaker 00:
They're these enormous machines.

[00:25:54] Speaker 00:
So in order to be driven or used normally in their ordinary course of operation, they have to be driven in reverse.

[00:26:00] Speaker 00:
And that's what the ALG actually found.

[00:26:03] Speaker 00:
ALG found at A53 to 54,

[00:26:06] Speaker 00:
that a normal part of roadmilling is that you reverse backwards at some point to cut a new track.

[00:26:11] Speaker 00:
Yes, correct.

[00:26:12] Speaker 00:
Fighting a caterpillar's own witness.

[00:26:15] Speaker 00:
And so the combination, the point being is, these things are in the United States, they're being used, they automatically infringe when used as directed.

[00:26:22] Speaker 03:
And that's... But could you go backwards without satisfying all the limitations of the precise claims?

[00:26:30] Speaker 00:
If you're going backwards, there is no... No, the evidence is that

[00:26:34] Speaker 00:
It's an automatic feature, you can't shut it off.

[00:26:37] Speaker 00:
It basically results in tracking.

[00:26:39] Speaker 04:
Mr. Barney, I think referred to a requirement that the rotor be engaged when you are going backwards.

[00:26:50] Speaker 04:
Is that necessary to going backwards?

[00:26:56] Speaker 00:
Or not a claim?

[00:26:57] Speaker 00:
That's true, but it doesn't get them very far, because the problem, of course, is the whole point of the patent is to be able to reverse when it is engaged.

[00:27:06] Speaker 00:
And the reason being is if you turn on and off the rotor too much, then you'll start stripping gears.

[00:27:12] Speaker 00:
And so the whole point of the patent is so that you could keep the rotor engaged while working and backwards.

[00:27:17] Speaker 00:
And that is the precise thing that Caterpillar copied, the ability to go backwards with the rotor engaged without causing catastrophic problems.

[00:27:27] Speaker 00:
And so therefore, it is the case that Caterpillar's own machine, PM300, does keep it engaged while it's going backwards.

[00:27:36] Speaker 03:
OK.

[00:27:37] Speaker 03:
Thank you.

[00:27:39] Speaker 00:
Thank you, Your Honor.

[00:27:42] Speaker 03:
All right, the case will be submitted.