Case 1:17-cv-00770-JDW Document 411 Filed 06/13/24 Page 1 of 3 PageID #: 38669
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`WILMINGTON
`RODNEY SQUARE
`
`NEW YORK
`ROCKEFELLER CENTER
`
`CHARLOTTE
`CARILLON TOWER
`
`Adam W. Poff
`P 302.571.6642
`apoff@ycst.com
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`
`
`June 13, 2024
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`
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`VIA CM/ECF
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`The Honorable Joshua D. Wolson
`United States District Court
`for the Eastern District of Pennsylvania
`James A. Byrne United States Courthouse
`601 Market Street, Room 3809
`Philadelphia, PA 19106
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`
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`Re: Wirtgen America, Inc. v. Caterpillar Inc. - C.A. No. 17-770-JDW
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`Dear Judge Wolson:
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`We write in response to Caterpillar’s June 10, 2024 letter, which attempts to improperly
`broaden the scope of the case under the guise of “potential” discovery issues.
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`First, the principal dispute between the parties concerns whether Caterpillar is entitled to
`seek new discovery, including inspections, on Wirtgen machines that were made and sold well
`before Caterpillar served its March 10, 2023, Final Infringement Contentions in accordance with
`the Court’s scheduling order. On May 24, 2024, Caterpillar served Third Amended Infringement
`Contentions that added seventeen Wirtgen models to its list of accused machines and asserted
`four additional patent claims that had had not been previously asserted.1 Although Wirtgen has
`no objection to supplementing discovery on machines that were first released after the March 30,
`2023, close of fact discovery, Wirtgen objects to Caterpillar seeking new discovery on machines
`that it had a full and fair opportunity to investigate before. Sixteen of the newly accused Wirtgen
`machines were on sale well before the close of fact discovery and Wirtgen made all the
`associated technical documentation available to Caterpillar via the WIDOS system, an online
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`1 Should the Court permit Caterpillar to amend its infringement contentions to include
`new previously un-asserted patent claims, there will also be the need for additional claim
`construction procedures relating to certain mean-plus-function claim language implicated by the
`newly-asserted claims.
`
`
`Young Conaway Stargatt & Taylor, LLP
`Rodney Square | 1000 North King Street | Wilmington, DE 19801
`P 302.571.6600 F 302.571.1253 YoungConaway.com
`
`

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`Case 1:17-cv-00770-JDW Document 411 Filed 06/13/24 Page 2 of 3 PageID #: 38670
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`Young Conaway Stargatt & Taylor, LLP
`The Honorable Joshua D. Wolson
`June 13, 2024
`Page 2
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`repository that contains instruction manuals, electrical diagrams, hose diagrams, hydraulic
`diagrams, parts catalogs, and training manuals for machines sold by Wirtgen. Wirtgen also
`produced other documents concerning these newly asserted machines, including sales
`information before the close of fact discovery. Despite this, Caterpillar elected not to include
`these sixteen machines in its March 10, 2023, Final Infringement Contentions, did not ask that
`they be covered by the parties’ stipulation on representative machines, and did not seek to inspect
`these machines. Caterpillar has offered no explanation for its failure to comply with the Court’s
`Scheduling Order which required final infringement contentions to be disclosed by March 10,
`2023. (D.I. 28 modified by D.I. 159, D.I. 176.)
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`Second, Caterpillar’s suggestion that Wirtgen has “refused” to produce technical
`documents regarding the newly accused machines is false. Caterpillar has had continuous access
`to the WIDOS system throughout this case and has used it extensively for its infringement
`contentions. Wirtgen, however, does object to any request for additional documents or
`inspections of these machines as any such discovery should have occurred before the March 30,
`2023, close of fact discovery. Caterpillar’s insinuation that the stay of the case pertaining its
`patents impacted its ability to obtain the discovery it needed is also demonstrably false. The
`parties sought a joint stay of the case on April 10, 2023. (D.I. 185.) This was well after the close
`of fact discovery (March 30, 2023) and well after the deadline to serve final infringement
`contentions (March 10, 2023).
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`Third, none of the other “issues” raised by Caterpillar are ripe for the Court’s
`consideration. These include Caterpillar’s request for a three-day source code inspection,
`Caterpillar’s request to serve new subpoena on John Deere (which was served with two
`subpoenas already, including for the prior art referenced in Caterpillar’s letter), and a request for
`further discovery from Wirtgen GmbH. Caterpillar never raised these issues with Wirtgen prior
`to submitting its letter to the Court and never raised these issues on any of the multiple meet-and-
`confers the parties have had over the past few weeks.
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`Fourth, the parties have met-and-conferred and reached an impasse on another issue
`relating to Caterpillar’s amended interrogatory responses. In particular, Caterpillar now asserts
`that it is preserving the right to pursue a permanent injunction after having affirmatively
`represented in an earlier interrogatory response that it would not seek injunction in this matter.
`Wirtgen intends to file a motion seeking the Court’s assistance with this issue.
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`Lastly, the parties have met-and-conferred on a schedule and Wirtgen proposed a few
`minor modifications to Caterpillar’s proposal to allow for a couple of additional weeks for
`conducting expert depositions and for the parties to prepare statements of undisputed material
`fact in accordance with the Court’s policies. Caterpillar is considering Wirtgen’s proposal,
`which Wirtgen provides below for the Court’s convenience.
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`Case 1:17-cv-00770-JDW Document 411 Filed 06/13/24 Page 3 of 3 PageID #: 38671
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`Young Conaway Stargatt & Taylor, LLP
`The Honorable Joshua D. Wolson
`June 13, 2024
`Page 3
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`AWP
`cc: All Counsel of Record (vial E-mail)
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`Respectfully,
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`/s/ Adam W. Poff
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`Adam W. Poff (No. 3990
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