Case 1:17-cv-00770-JDW Document 438 Filed 07/25/24 Page 1 of 7 PageID #: 39243
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 17-770-JDW
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`JURY TRIAL DEMANDED
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`)))))))))
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`Defendant.
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`CATERPILLAR INC.’S MOTION TO COMPEL MACHINE INSPECTIONS
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
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`Attorneys for Defendant Caterpillar Inc
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`Plaintiff,
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`v.
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`WIRTGEN AMERICA, INC.,
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`CATERPILLAR INC.,
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`OF COUNSEL:
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`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, California 94304
`Telephone: (650) 493-9300
`
`Lucy Yen
`Cassie L. Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, New York 10019
`Telephone: (212) 999-5800
`
`Matthew A. Macdonald
`Neil N. Desai
`Naoya Son
`Alex J. Turner
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`953 E. 3rd Street #100
`Los Angeles, California 90013
`Telephone: (323) 210-2900
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`Dated: July 25, 2024
`11670051 /11898.00005
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`

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`Case 1:17-cv-00770-JDW Document 438 Filed 07/25/24 Page 2 of 7 PageID #: 39244
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`I.
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`INTRODUCTION
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`Although the parties negotiated—and the Court ordered—a supplemental discovery period
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`that would include machine inspections, Wirtgen has been evading Caterpillar’s multiple requests
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`for its technical experts to inspect certain accused products since March 2023. Because inspections
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`of accused machines are indisputably relevant, Caterpillar respectfully moves to compel inspection
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`of the accused SP 94i machine.1 Further, to the extent the Court grants Caterpillar’s Motion for
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`Leave to Amend (D.I. 426), Caterpillar moves to compel inspection of the newly-identified
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`machines (or their corresponding representative products) as well.
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`II.
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`FACTUAL BACKGROUND
`A.
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`Caterpillar’s Request for an Inspection of the SP 94i Has Been Outstanding
`Since Before the Stay Was Entered
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`Caterpillar’s request for an inspection of the SP 94i has been outstanding for over a year.
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`On March 12, 2023, the parties agreed on representative products for each asserted patent. D.I.
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`186 (Joint Stipulation Regarding Representative Accused Products). For the ’995 Patent, the
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`parties agreed that (i) the W 120 CFi is representative of the W100 CF, W100 CFi, W120 CF,
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`W120 CFi, W130 CF, and W130 CFi accused products; and (ii) the SP 94i is representative of the
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`SP 64i, SP 94i, and SP 124i accused products. Id. Before the close of fact discovery originally
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`scheduled for March 2023, Caterpillar requested an opportunity for Dr. Sorini, who had been
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`retained and disclosed earlier that month, to inspect, among other machines, the SP 94i. See Exs.
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`1 Caterpillar’s inspection requests are made pursuant to Request for Production No. 43, which
`seeks “[a]n example for inspection of each version of each Accused Wirtgen America Product
`sold, offered for sale, sold for importation into the United States, or imported into the United States
`by Wirtgen America.” In response, Wirtgen stated: “Wirtgen America will produce relevant, non-
`privileged documents that are responsive to this Request, to the extent they exist within Wirtgen
`America’s possession, custody, or control, and can be located after a reasonable search.” Ex. F at
`65-66.
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`Case 1:17-cv-00770-JDW Document 438 Filed 07/25/24 Page 3 of 7 PageID #: 39245
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`A-B. Soon thereafter, the parties reached an agreement on a stay of the ’995 and ’538 patents, and
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`the inspection request was held in abeyance during that stay.
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`B.
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`Caterpillar Repeatedly Renewed Its Request for an Inspection of the SP 94i
`After the Stay Was Lifted
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`On April 1, 2024, the Court lifted the stay. D.I. 360. As early as April 16, 2024, Caterpillar
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`informed Wirtgen that it sought additional machine inspections. Ex. C at 8. On April 23, 2024,
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`Caterpillar identified machines that its newly-retained expert (Dr. Charles Reinholtz) (Ex. D)
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`would need to inspect, including the SP 94i.2 Ex. C at 4. On June 14, 2024, the parties entered
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`into a stipulation regarding supplemental discovery, which expressly provided for the parties to
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`conduct machine inspections. D.I. 412 (agreeing to new deadline to “complete supplemental
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`interrogatory responses, document productions, and machine inspections”) (emphasis added).
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`Except for the W 220 XFi released after the stay, Wirtgen continues to refuse to permit any
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`inspections. Ex. C at 2. Wirtgen disputes whether certain accused products are part of these
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`proceedings, but also refuses inspections of products that have always been accused and are
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`indisputably relevant, including the representative SP 94i machine. Pursuant to Local Rule 7.1.1,
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`the parties exchanged written correspondence and held meet and confer teleconferences with
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`Delaware counsel on June 12 and July 10, but were unable to resolve the dispute. The parties
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`agree that they are at an impasse on this issue. Ex. E at 1.
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`III. ARGUMENT
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`2 At one point after the stay was lifted, Wirtgen claimed that it did not have a SP 94i available to
`inspect. If it is available now, Caterpillar is entitled to inspect it. Otherwise, Caterpillar requests
`that Wirtgen make available another representative slipform paver.
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`2
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`Case 1:17-cv-00770-JDW Document 438 Filed 07/25/24 Page 4 of 7 PageID #: 39246
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`A. Wirtgen Should Be Compelled to Permit an Inspection of the SP 94i
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`There is no dispute that the SP 94i inspection is highly relevant. This machine has been
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`accused from the beginning of this matter, and Wirtgen agreed that it is a representative product.
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`D.I. 186. Inspections of accused products are often “the most efficient and accurate method for
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`determining whether the patented technology or processes have been infringed.” Stamps.com, Inc.
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`v. Endicia, Inc., No. 06-7499-ODW(CTx), 2008 WL 11339110, at *1 (C.D. Cal. June 24, 2008)
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`(finding that inspection of accused servers is proper); see 3M v. Nippon Carbide Indus. Co., 171
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`F.R.D. 246, 248-49 (D. Minn. 1997) (“plant inspection provides the most efficient and effective
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`means for determining whether a patented process had been infringed”); Cuno Inc. v. Pall Corp.,
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`116 F.R.D. 279, 281 (E.D.N.Y. 1987) (granting plaintiff's motion to compel inspection of
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`manufacturing facility to assess infringement in part because “inspections are not an extraordinary
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`means of discovery in patent suits”).
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`Both parties have already inspected over a dozen Caterpillar and Wirtgen machines to
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`assess infringement, invalidity, and other issues. Discussion, photos, and videos of these
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`inspections were featured prominently in the first trial. See, e.g., Trial Tr. at 1081:9-1082:12 (Dr.
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`Klopp); id. at 1740:8-1741:13 (Dr. Sorini); id. at 1175:12-24 (Dr. Smith); id. at 1716:4-1717:8
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`(Dr. Rakow); id. at 537:16-541:6 (Mr. Engelmann); id. at 584:16-586:4 (Dr. Lumkes); id. at
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`675:23-676:1; 683:4-9 (Dr. Meyer); id. at 799:11-800:17, 807:8-808:17 (Dr. Rahn).
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`Wirtgen argues that Caterpillar’s inspection requests are untimely because the inspections
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`should have been conducted before the stay was entered. This claim is meritless. First, Caterpillar
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`has consistently and diligently sought an inspection of the SP 94i for its infringement experts since
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`before the expiration of the original fact discovery period and before the stay. See Exs. B-C
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`(seeking inspection at least six times since March 2023); see also Barry v. Stryker Corp., 2023
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`WL 3293057, at *2 (D. Del. May 2, 2023) (allowing deposition after deadline for completion of
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`3
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`Case 1:17-cv-00770-JDW Document 438 Filed 07/25/24 Page 5 of 7 PageID #: 39247
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`fact discovery because requesting party showed good cause: “Good cause is present when the
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`schedule cannot be met despite the moving party’s diligence”); Windsor Craft Sales, LLC v.
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`VICEM Yat Sanayi Ve Ticaret AS, No. 10-297 ADM/JJG, 2011 WL 4625761, at *3 (D. Minn. Oct
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`3, 2011) (permitting expert inspection after close of fact discovery when party seeking inspection
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`was “diligent in this case in . . . getting things to move forward”). When the stay lifted, Caterpillar
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`diligently renewed its request. Ex. C at 7-8.
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`Second, contrary to Wirtgen’s claims, Caterpillar’s inspection request is timely because
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`fact discovery remains open, and the parties have agreed to include machine inspections in the
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`supplemental discovery period. D.I. 412. If Wirtgen wished to preclude machine inspections or
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`limit them in some way, it could have included this limitation in the stipulation that the Court has
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`now ordered. But Wirtgen agreed to exactly the opposite in entering into a stipulation that
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`expressly provides for “machine inspections.”
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`Third, there have been material case developments that make a post-stay inspection not
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`only helpful but necessary. For example, on March 10, 2023, the Court issued its Claim
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`Construction Order construing terms of the ’995 patent. See D.I. 167 at 16-17. Also, during the
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`stay, the Patent Office issued its final written decisions, altering how the parties may litigate their
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`infringement and invalidity cases. Ex. C at 1. Additionally, after the parties agreed to a new round
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`of expert discovery, Caterpillar disclosed a new technical expert (Dr. Reinholtz) on April 25, 2024.
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`He is entitled to an independent inspection to formulate his opinions.3 See, e.g., Milazzo v. Elite
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`Contracting Grp., Inc., No. 19-cv-1607 (TSE/TCB), 2020 WL 13499534, at *3 (E.D. Va Aug. 10,
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`3 Wirtgen has had months to schedule the inspections. But to the extent Wirtgen requires
`additional time to arrange logistics, Caterpillar does not object to scheduling the inspection after
`the close of fact discovery but sufficiently in advance of opening expert reports. See Windsor
`Craft Sales, LLC v. VICEM Yat Sanayi Ve Ticaret AS, No. 10-297 ADM/JJG, 2011 WL 4625761,
`at *3 (D. Minn. Oct. 3, 2011) (permitting expert inspection after close of fact discovery).
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`4
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`Case 1:17-cv-00770-JDW Document 438 Filed 07/25/24 Page 6 of 7 PageID #: 39248
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`2020) (permitting inspection by “new expert witnesses in this matter” despite prior inspection);
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`Sindelar v. Dorman Prods. Inc., No. 8:14-cv-274, 2015 WL 12803647, at *1-2 (D. Neb. Mar. 31,
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`2015) (“Discovery has not closed in this suit, and Defendant should be allowed the opportunity to
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`have its expert test and examine the control arm”).
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`B. Wirtgen Should be Compelled to Permit an Inspection of the Other
`Identified Accused Products
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`As outlined in its Motion for Leave to Amend (D.I. 426), Caterpillar’s proposed amended
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`contentions identify additional accused products by model number. Those additional accused
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`products had previously been described in more general terms, but not specifically by model
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`number. In April 2024, along with the SP 94i, Caterpillar also requested inspections of these new
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`machines, or their corresponding representative products. While claiming that it would be
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`burdensome to arrange for multiple inspections, Wirtgen has inexplicably refused to discuss any
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`further stipulations on representativeness that would alleviate the claimed burden.
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`To the extent the Court grants Caterpillar’s Motion for Leave to Amend, Caterpillar seeks
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`an order compelling inspections of these machines and will work in good faith to minimize the
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`burden on both parties, including through the inspection of representative products.
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`IV. CONCLUSION
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`For the reasons outlined above, Caterpillar respectfully requests that the Court grant
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`Caterpillar’s Motion to Compel Wirtgen to permit inspections of the SP 94i, as well as the accused
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`products listed in Caterpillar’s Fourth Amended Infringement Contentions (or their corresponding
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`representative products).
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`5
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`Case 1:17-cv-00770-JDW Document 438 Filed 07/25/24 Page 7 of 7 PageID #: 39249
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`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
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`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
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`Attorneys for Defendant Caterpillar Inc.
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`
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`
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`
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`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`Cassie Leigh Black
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`Matthew A. Macdonald
`Neil N. Desai
`Naoya Son
`Alex J. Turner
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`953 E. 3rd St., #100
`Los Angeles, California 90013
`Tel: (323) 210-2900
`
`Jennifer (Celine) Liu
`Randal C. Miller
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`701 5th Avenue #5100
`Seattle, WA 98104
`Tel: (206) 883-2500
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`Dated: July 25, 2024
`11670051 /11898.00005
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`6
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