Case 1:17-cv-00770-JDW Document 408 Filed 06/10/24 Page 1 of 3 PageID #: 38025
`
`
`
`
`
`Potter Anderson & Corroon LLP
`1313 N. Market Street, 6th Floor
`Wilmington, DE 19801-6108
`302.984.6000
`potteranderson.com
`
`Bindu A. Palapura
`Partner
`bpalapura@potteranderson.com
`Direct 302.984.6092
`
`
`
`VIA ELECTRONIC FILING
`
`June 10, 2024
`
`The Honorable Judge Joshua D. Wolson
`United States District Court of the Eastern District of Pennsylvania
`James A. Byrne United States Courthouse
`601 Market Street
`Philadelphia, Pennsylvania 19106
`
`
`Re: Wirtgen America v. Caterpillar, C.A. No. 17-770-JDW
`
`Dear Judge Wolson:
`
`In advance of the June 14, 2024 telephone conference before the Court, Caterpillar submits
`the following update regarding U.S. Patent Nos. 7,523,995 (“the ’995 patent”) and 9,975,538 (“the
`’538 patent”). D.I. 360.
`
`Status of Patent Office Proceedings
`
`In May 2024, Wirtgen appealed the Patent Office’s Final Written Decisions regarding the
`’995 and ’538 patents. Caterpillar filed a cross-appeal on the ’538 patent with respect to a claim
`no longer asserted in this case. These appeals have been consolidated into two related matters.
`We currently expect briefing to be complete in October or November 2024. Wirtgen also filed a
`request for ex parte reexamination of the ’995 patent. The Patent Office has not decided whether
`to institute reeexamination.
`
`Potential Discovery Disputes
`
`The parties have identified the discovery responses they believe should be supplemented
`and have met and conferred regarding any disputes. However, there remain several unresolved
`discovery issues.
`
`First, Wirtgen has not agreed to produce technical documents, including instruction
`manuals, electrical diagrams, hose diagrams, hydraulic diagrams, parts catalogs, and training
`manuals, for all accused products. To date, Wirtgen has not produced such materials for at least
`the 2610 Series machines (including W 100 Fi, W 120 Fi, W 120 FTi, W 120 ZFi, W 130 Fi) or
`the W 220 XFi. The parties have met and conferred and reached an impasse. Caterpillar
`
`

`

`Case 1:17-cv-00770-JDW Document 408 Filed 06/10/24 Page 2 of 3 PageID #: 38026
`
`The Honorable Judge Joshua D. Wolson
`June 10, 2024
`Page 2
`anticipates filing a motion to compel, requesting that Wirtgen produce these materials by no later
`than August 2, 2024.
`
`Second, despite confirming that the following accused machines are within Wirtgen’s
`possession, custody, or control, Wirtgen has not agreed to make them available for inspection:
`
`• SP 15i / SP 25i / SP 61i (at least one representative model)
`• SP 94i
`• W 210 Fi
`• W 100 XFi
`• W 120 Fi
`• W 2201
`
`Even for the one accused machine Wirtgen has agreed to make available (the W 220 XFi), Wirtgen
`has not yet provided a date for an inspection where Caterpillar can observe it while milling. The
`parties have met and conferred and reached an impasse. Caterpillar anticipates filing a motion to
`compel, requesting that Wirtgen make all the above machines available for inspection by no later
`than August 2, 2024.
`
`Third, Wirtgen has not agreed to Caterpillar’s request for a three-day inspection of source
`code necessitated by Wirtgen’s supplemental non-infringement positions.
`
`Finally, Caterpillar intends to serve John Deere with a subpoena including discovery
`requests relating to the 8370R tractor, which Wirtgen identified as prior art to the ’538 patent.
`Similarly, to the extent Wirtgen plans to utilize any CAD files or other engineering materials from
`Wirtgen GmbH or any other corporate affiliate, Caterpillar requests production of such materials
`and an opportunity to seek related materials.
`
`Caterpillar’s Proposed Pretrial Schedule
`
`Given the outstanding issues discussed above, Caterpillar submits an updated case schedule
`as outlined below. The parties are continuing to meet and confer regarding the schedule.
`
`Event
`Deadline to Complete Supplemental Interrogatory
`Responses, Document Productions, and Machine
`Inspections
`Opening Expert Reports
`Rebuttal Expert Reports
`Reply Expert Reports
`
` Proposed Date
`August 2, 2024
`
`September 10, 2024
`October 8, 2024
`October 29, 2024
`
`
`1 Wirtgen has asserted that this machine is prior art to the ’538 patent. As such, Caterpillar
`requests an opportunity to inspect it as well.
`
`

`

`Case 1:17-cv-00770-JDW Document 408 Filed 06/10/24 Page 3 of 3 PageID #: 38027
`
`The Honorable Judge Joshua D. Wolson
`June 10, 2024
`Page 3
`
`Event
`Expert Discovery Cut Off
`Dispositive / Daubert Opening Briefs
`Dispositive / Daubert Answering Briefs
`Dispositive / Daubert Reply Briefs
`Pretrial Conference
`Jury Trial
`
`
`
` Proposed Date
`November 22, 2024
`December 18, 2024
`January 15, 2025
`January 29, 2025
`Three weeks before start of jury trial
`To be scheduled
`
`Respectfully,
`
`/s/ Bindu A. Palapura
`
`Bindu A. Palapura
`
`BAP:mes/11556302/11898.00005
`
`cc: Counsel of Record (via electronic mail)
`
`
`
`