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`EXHIBIT B
`EXHIBIT B
`
`
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 1 of 9 PageID #: 175
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 1 of 9 PagelD #: 175
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 17-770-RGA-MPT
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff,
`
`v.
`
`CATERPILLAR INC.,
`
`Defendants.
`
`CATERPILLAR INC.’S FIRST SET OF REQUESTS FOR PRODUCTION TO
`WIRTGEN AMERICA, INC. (NOS. 1-91)
`
`Pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure and the Local Rules
`
`of the United States District Court for the District of Delaware, Defendant and Counterclaim-
`
`Plaintiff Caterpillar Inc. (“Caterpillar”) hereby requests that Plaintiff and Counterclaim-Defendant
`
`Wirtgen America, Inc. (“Wirtgen America”) produce for inspection and copying, or cause to be
`
`copied, the documents described below. Wirtgen America shall make such production within
`
`thirty (30) days after the service of these requests, at the law offices of Wilson Sonsini Goodrich
`
`& Rosati, P.C., 650 Page Mill Road, Palo Alto, California, 94304, in accordance with the Federal
`
`Rules of Civil Procedure, and in compliance with the Instructions and Definitions set forth below,
`
`unless the parties agree on another time or place for production.
`
`DEFINITIONS AND INSTRUCTIONS
`
`For the purposes of these Requests for Production, the following Definitions and
`
`Instructions shall apply:
`
`1.
`
`“Action” shall mean the action captioned, Wirtgen America, Inc. v. Caterpillar Inc.,
`
`C.A. No. 17-770-RGA-MPT, in the United States District Court for the District of Delaware.
`
`2.
`
`“Caterpillar” shall mean Defendant and Counterclaim-Plaintiff Caterpillar Inc.
`
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 2 of 9 PageID #: 176
`
`
`
`REQUEST FOR PRODUCTION NO. 6:
`
`All Documents related to any foreign equivalent patent applications of Wirtgen America’s
`
`Asserted Patents, including the prosecution histories of foreign counterparts to Wirtgen America’s
`
`Asserted Patents.
`
`REQUEST FOR PRODUCTION NO. 7:
`
`All Communications concerning Wirtgen America’s Asserted Patents or the technology
`
`underlying Wirtgen America’s Asserted Patents.
`
`REQUEST FOR PRODUCTION NO. 8:
`
`All Documents relating to when You first became aware of any alleged infringement of
`
`each of Wirtgen America’s Asserted Patents or related patents by Caterpillar.
`
`REQUEST FOR PRODUCTION NO. 9:
`
`All Documents relating to when You allege Caterpillar first became aware of Wirtgen
`
`America’s Asserted Patents and any alleged infringement of each of Wirtgen America’s Asserted
`
`Patents.
`
`REQUEST FOR PRODUCTION NO. 10:
`
`All Documents related to Your discovery (i.e., first awareness) of Caterpillar’s Asserted
`
`Patents, including actions that You took upon discovering (i.e., becoming first aware) of the
`
`existence of Caterpillar’s Asserted Patents.
`
`REQUEST FOR PRODUCTION NO. 11:
`
`All Documents supporting Your contention that You do not infringe Caterpillar’s Asserted
`
`Patents.
`
`8
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 3 of 9 PageID #: 177
`
`
`
`REQUEST FOR PRODUCTION NO. 12:
`
`All Communications regarding the infringement, or potential infringement, of any of
`
`Caterpillar’s Asserted Patents by any of the Accused Wirtgen America Products.
`
`REQUEST FOR PRODUCTION NO. 13:
`
`All Documents related to any comparisons between Caterpillar’s Asserted Patents on the
`
`one hand and the Accused Wirtgen America Products or technology practiced by the Accused
`
`Wirtgen America Products on the other hand.
`
`REQUEST FOR PRODUCTION NO. 14:
`
`All Document related to Your efforts to avoid or design-around any of Caterpillar’s
`
`Asserted Patents, including but not limited to:
`
`a.
`
`the financial costs and/or implications of making, testing, and implementing any
`
`actual or potential design-arounds;
`
`b.
`
`the technical or commercial feasibility of implementing any actual or potential
`
`design-around; and
`
`c.
`
`the identity of Persons involved in such attempts or efforts.
`
`REQUEST FOR PRODUCTION NO. 15:
`
`All Documents related to whether any of the Accused Wirtgen America Products have non-
`
`infringing uses as related to Caterpillar’s Asserted Patents.
`
`REQUEST FOR PRODUCTION NO. 16:
`
`Documents sufficient to identify any product that You contend constitutes a design-around
`
`or non-infringing alternative to the Accused Products.
`
`9
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 4 of 9 PageID #: 178
`
`
`
`REQUEST FOR PRODUCTION NO. 40:
`
`All Documents related to the operation, demonstration, use, instruction for use, training for
`
`use, intended use, or maintenance of any of the Accused Wirtgen America Products.
`
`REQUEST FOR PRODUCTION NO. 41:
`
`Documents sufficient to identify all predecessors in interest, subsidiaries, parents, related
`
`corporations, partnerships, joint ventures, affiliates, and any other entity related to or involved in
`
`the sales, offers to sell, and/or importation into the United States of the Accused Wirtgen America
`
`Products.
`
`REQUEST FOR PRODUCTION NO. 42:
`
`All purchase agreements with any entities from whom You purchase any hardware,
`
`components, or software used in the Accused Wirtgen America Patents.
`
`REQUEST FOR PRODUCTION NO. 43:
`
`An 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.
`
`REQUEST FOR PRODUCTION NO. 44:
`
`All Documents related to any inspection, teardown, and/or reverse engineering of any
`
`Caterpillar products, including any Caterpillar cold planers and/or paver machines.
`
`REQUEST FOR PRODUCTION NO. 45:
`
`All Documents related to or evidencing any intra-company agreements, including
`
`Information regarding transfer prices or profits between You and Wirtgen GmbH, or any other
`
`Wirtgen-affiliated entity, for each Accused Wirtgen America Product.
`
`14
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 5 of 9 PageID #: 179
`
`
`
`REQUEST FOR PRODUCTION NO. 46:
`
`All Communications between You and Wirtgen GmbH regarding Wirtgen America’s
`
`Asserted Patents.
`
`REQUEST FOR PRODUCTION NO. 47:
`
`All Documents related to the timing of the assignment of Wirtgen America’s Asserted
`
`Patents from Wirtgen GmbH to Wirtgen America.
`
`REQUEST FOR PRODUCTION NO. 48:
`
`All Documents related to Wirtgen GmbH’s decision to assign Wirtgen America’s Asserted
`
`Patents to Wirtgen America.
`
`REQUEST FOR PRODUCTION NO. 49:
`
`All Communications between You and Wirtgen GmbH regarding Caterpillar’s Asserted
`
`Patents.
`
`REQUEST FOR PRODUCTION NO. 50:
`
`All Communications between You and Wirtgen GmbH regarding the Accused Wirtgen
`
`America Products.
`
`REQUEST FOR PRODUCTION NO. 51:
`
`Documents sufficient to show all Persons with knowledge of territory outreach, sales,
`
`offers to sell, efforts to sell, contracts and contract negotiations, importation, offers to import,
`
`efforts to import, exportation, offers to export, or efforts to export into or from the United States
`
`any of the Accused Wirtgen America Products.
`
`REQUEST FOR PRODUCTION NO. 52:
`
`Documents sufficient to show the date of first sale and the date of last sale (if no longer
`
`sold) for each of the Accused Wirtgen America Products.
`
`15
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 6 of 9 PageID #: 180
`
`
`
`REQUEST FOR PRODUCTION NO. 69:
`
`All Documents related to any products that compete with any of the Accused Wirtgen
`
`America Products, including but not limited to any analyses of the strengths or weaknesses of
`
`those products compared to any of the Accused Wirtgen America Products.
`
`REQUEST FOR PRODUCTION NO. 70:
`
`All Documents supporting or refuting any claims for damages or other relief remedies,
`
`including any claim for an injunction, a reasonable royalty, lost profits, enhanced damages, or
`
`attorneys’ fees and/or expenses.
`
`REQUEST FOR PRODUCTION NO. 71:
`
`Documents sufficient to show Your policies, if any, to maintain Your right to exclude
`
`others from using patented inventions by not licensing others to use the invention, or by granting
`
`licenses under special conditions designed to preserve that exclusivity.
`
`REQUEST FOR PRODUCTION NO. 72:
`
`All Documents related to any potential license to any of Wirtgen America’s Asserted
`
`Patents, including without limitation, demand letters, notice letters, license offers, or other
`
`correspondence.
`
`REQUEST FOR PRODUCTION NO. 73:
`
`All Documents related to any royalties for Wirtgen America’s Asserted Patents and any
`
`patents that Wirtgen America contend are comparable to any of Wirtgen America’s Asserted
`
`Patents, including royalty rates and reports regarding royalties received by You.
`
`REQUEST FOR PRODUCTION NO. 74:
`
`All Documents related to any marking of, or failure to mark, products of licensees, or
`
`related materials with the patent number of any of Wirtgen America’s Asserted Patents.
`
`19
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 7 of 9 PageID #: 181
`
`
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`Dated: November 19, 2021
`7498016/44413
`
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`24
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 8 of 9 PageID #: 182
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Bindu A. Palapura, hereby certify that on November 19, 2021, true and correct copies
`
`of the within document were served on the following counsel of record at the addresses and in
`
`the manner indicated:
`
`VIA ELECTRONIC MAIL
`
`Adam W. Poff
`Pilar G. Kraman
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`apoff@ycst.com
`pkraman@ycst.com
`
`Daniel E. Yonan
`Paul A. Ainsworth
`R. Wilson Powers III
`Kyle E. Conklin
`Deirdre M. Wells
`Davin B. Guinn
`Joseph H. Kim
`STERNE, KESSLER, GOLDSTEIN & FOX, PLLC
`1100 New York Ave., NW, Suite 600
`Washington, DC 20005
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`tpowers@sternekessler.com
`kconklin@sternekessler.com
`dwells@sternekessler.com
`dguinn@sternekessler.com
`josephk@sternekessler.com
`
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Scott M. Douglass
`Dominic A. Rota
`Mark A. Kilgore
`John F. Triggs
`PATTERSON INTELLECTUAL PROPERTY
`LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, TN 37203
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`smd@iplawgroup.com
`dar@iplawgroup.com
`mak@iplawgroup.com
`jft@iplawgroup.com
`
` /s/ Bindu A. Palapura
`Bindu A. Palapura
`
`
`
`Case 3:23-mc-00003 Document 8-2 Filed 02/10/23 Page 9 of 9 PageID #: 183
`
`
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