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`EXHIBIT D
`EXHIBIT D
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`Case 3:23-mc-00003 Document 8-4 Filed 02/10/23 Page 1 of 8 PageID #: 198
`Case 3:23-mc-00003 Document 8-4 Filed 02/10/23 Page 1 of 8 PagelD #: 198
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`The following definitions are applicable to terms employed in responding to these Requests
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`SCHEDULE A
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`for the Production of Documents:
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`DEFINITIONS
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`1.
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`“You,” “Your,” or “Wirtgen GmbH” shall mean Wirtgen GmbH, its predecessors
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`and successors, subsidiaries and related companies, and its present and former officers, directors,
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`employees, agents, representatives, consultants, attorneys, accountants, entities it was formerly
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`known as, and others acting or purporting to act on its behalf or subject to its control.
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`2.
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`“Action” shall mean the action captioned, Wirtgen America, Inc. v. Caterpillar Inc.,
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`C.A. No. 17-770-RGA-MPT, in the United States District Court for the District of Delaware.
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`3.
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`“Wirtgen America” shall mean Plaintiff and Counterclaim-Defendant Wirtgen
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`America, Inc. in the Action.
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`4.
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`“Caterpillar” shall mean Defendant and Counterclaim-Plaintiff Caterpillar Inc. in
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`the Action.
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`5.
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`“Complaint” shall mean the complaint filed by Wirtgen America on June 16, 2017
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`(D.I. 1) in the action captioned, Wirtgen America, Inc. v. Caterpillar Inc., C.A. No. 17-770-RGA-
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`MPT, in the United States District Court for the District of Delaware, as well as amended or
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`supplemented versions thereof, including but not limited to the Amended Complaint filed by
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`Wirtgen America on September 2, 2021 (D.I. 33).
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`6.
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`“Wirtgen America’s Asserted Patents” collectively refer to U.S. Patent Nos.
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`7,828,309, 8,118,316, 7,530,641, 8,113,592, 9,010,871, 9,656,530, 7,946,788, 8,511,932,
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`8,690,474, RE48,268, 8,424,972, 9,879,390, and 9,879,391.
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`Case 3:23-mc-00003 Document 8-4 Filed 02/10/23 Page 2 of 8 PageID #: 199
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`7.
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`“Caterpillar’s Asserted Patents” collectively refer to U.S. Patent Nos. 7,523,995,
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`9,975,538, and 9,371,618.
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`8.
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` “Accused Wirtgen America Product(s)” shall mean anything (e.g., products,
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`services, or functionality) which Caterpillar claims to be infringing one or more claims of
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`Caterpillar’s Asserted Patents. With respect to U.S. Patent No. 7,523,995, this includes, without
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`limitation, Wirtgen America’s paver machines and cold planer machines with pivoting track units,
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`including, without limitation, model numbers SP 64i, SP 94i, SP 124i, W 100 CFi, W 120 CFi,
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`and W 130 CFi to the extent made, used, sold, and/or offered for sale in the United States since at
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`least the filing of Caterpillar’s Counterclaims on October 14, 2021. With respect to U.S. Patent
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`No. 9,975,538, this includes, without limitation, Wirtgen America’s cold planer machines having
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`a multi-speed transmission, including, without limitation, model numbers W 210 Fi and W 220 Fi
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`to the extent made, used, sold, and/or offered for sale in the United States since at least May 22,
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`2018. With respect to the U.S. Patent No. 9,371,618, this includes without limitation, Wirtgen
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`America’s cold planer machines having an electronically controlled water system, including,
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`without limitation, model numbers W 210 Fi, W 220 Fi, and W 250 Fi to the extent made, used,
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`sold, and/or offered for sale in the United States since at least the filing of Caterpillar’s
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`Counterclaims on October 14, 2021.
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`9.
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`“Communication(s)” shall mean any instance in which any Person has had contact
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`with any other Person, including by any oral or written utterance, question, comment, inquiry,
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`notation, or statement of any nature whatsoever, by and to whomever made, including, but not
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`limited to, any conversation, correspondence, agreement, note, e-mail, voicemail, or other transfer
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`of Information, whether written, oral, electronic, or by any other means, and including any
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`Document or other medium which abstracts, digests, records, incorporates, summarizes, describes,
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`Case 3:23-mc-00003 Document 8-4 Filed 02/10/23 Page 3 of 8 PageID #: 200
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`or transcribes any such Communication, or any subsequent review or discussion of such
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`Communication, whether occurring at meetings or otherwise.
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`10.
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`“Date” means the exact day, month, and year if ascertainable, or if not, Your best
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`approximation thereof.”
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`11.
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`“Document(s)” has the meaning prescribed in Rule 34 of the Federal Rules of Civil
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`Procedure. The term “Document” shall be interpreted in the broadest sense possible and includes
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`Documents in any form, including by way of example and without limitation, originals and copies
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`of letters, memoranda, notes, records, minutes, reports, notebooks, messages, telegrams, ledgers,
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`legal instruments, legal opinions to the extent that they are not protected by the attorney-client
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`privilege or attorney work product doctrines, agreements, paper and electronic drawings,
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`specifications, purchase orders, circuit schematics, block diagrams, manuals, test procedures,
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`sketches, graphs, prints, rough drafts, secretarial notes, work pads, diaries, films, tapes,
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`photographs, computer disks and other electronic media, books, publications, advertisements,
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`literature, brochures, price lists, announcements, computer-based simulation tool input and output
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`files, or other writings or tangible objects whether stored, produced, or reproduced mechanically,
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`electrically, electronically, photographically, or chemically. Any comment or notation appearing
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`in any Document, and not part of the original text, is to be considered a separate “Document.”
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`12.
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`“Information” means and refers to Communications and Documents as those terms
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`are defined herein.
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`13.
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`“Person” or “Persons” shall include both natural Persons and entities, including,
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`without limitation, all predecessors in interest, groups, associations, partnerships, corporations,
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`agencies, or any other legal, business, or governmental entity. The acts “of” a Person are defined
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`Case 3:23-mc-00003 Document 8-4 Filed 02/10/23 Page 4 of 8 PageID #: 201
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`to include the acts of directors, officers, members, employees, agents, or attorneys acting on the
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`Person’s behalf.
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`14.
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`“Prior Art” means any reference, subject matter, event, or other matter relevant
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`under 35 U.S.C. § 102 and/or 35 U.S.C. § 103.
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`15.
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`“Thing” or “Things” has the meaning prescribed in Rule 34 of the Federal Rules of
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`Civil Procedure. “Thing” specifically includes, by way of example but not limitation, any disc,
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`tape, or other electronic media storage device, any product and any model, prototype, or
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`experimental device or part or assembly thereof.
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`16.
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`As used herein, the terms “and” and “or” should be understood either disjunctively
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`or conjunctively as necessary to bring within the scope of any request all responses that might
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`otherwise be construed to be outside of its scope.
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`17.
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`As used herein, the terms “each,” “any,” and “all” should be understood to include
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`“each and every, any, and all.”
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`18.
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`As used herein, the terms “relate,” “refer,” or “concern” (including any conjugation
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`thereof) mean directly or indirectly concerning, regarding, evidencing, mentioning, describing,
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`pertaining to, reflecting, being connected with, comprising, or constituting a subject matter.
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`19.
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`As used herein, use of a singular noun shall be construed to include the plural noun,
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`and use of a plural noun shall be construed to include the singular noun; and the use of a verb in
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`any tense shall be construed as the use of that verb in all other tenses whenever necessary to bring
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`within the scope of the request that which might otherwise be construed to be outside its scope.
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`INSTRUCTIONS
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`1.
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`It is Your duty in answering these requests to conduct a reasonable investigation so
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`that You disclose and produce all available responsive and non-privileged Documents.
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`Case 3:23-mc-00003 Document 8-4 Filed 02/10/23 Page 5 of 8 PageID #: 202
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`2.
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`If production of any responsive Documents is being withheld on the ground of the
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`attorney-client privilege, attorney work product, or any other privilege, immunity, or protection,
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`please provide a privilege log with the following information for each such Document: (a) the
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`name of the Document; (b) the name of the person(s) who prepared the Document; (c) the name
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`of the person(s) to whom the Document was directed or circulated; (d) the date(s) on which the
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`Document was prepared or transmitted; (e) the name of the person(s) now in possession of the
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`Document; (f) a description of the subject matter of the Document; and (g) the specific nature of
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`the privilege or protection claimed with respect to the Document.
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`3.
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`You are under a continuing obligation to respond to the requests set forth herein.
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`Accordingly, if You subsequently gain actual or constructive possession, custody, or control of
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`any Document called for in the requests set forth herein that has not been produced, You must
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`produce such Document as soon as possible or provide a written explanation as to why You will
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`not produce the Document.
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`4.
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`To the extent a Document is considered confidential in nature, You may designate
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`it in accordance with the Protective Order entered in the above-captioned matters, a copy of which
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`is attached as Exhibit 1.
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`5
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`Case 3:23-mc-00003 Document 8-4 Filed 02/10/23 Page 6 of 8 PageID #: 203
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`REQUESTS FOR PRODUCTION
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`REQUEST FOR PRODUCTION NO. 1:
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`Documents sufficient to show any intra-company agreements, including Information
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`regarding transfer prices or profits between You and Wirtgen America, or any other Wirtgen-
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`affiliated entity, for each Accused Wirtgen America Product.
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`REQUEST FOR PRODUCTION NO. 2:
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`All Documents related to Wirtgen GmbH’s decision to assign Wirtgen America’s Asserted
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`Patents to Wirtgen America.
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`REQUEST FOR PRODUCTION NO. 3:
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`Documents sufficient to show:
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`a. the ownership, title, transfer, or assignment of any interest in Wirtgen America’s Asserted
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`Patents;
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`b. the development of the subject matter of Wirtgen America’s Asserted Patents;
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`c. the development, conception, reduction to practice, diligence towards reduction to practice,
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`or priority date of each claim of Wirtgen America’s Asserted Patents.
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`d. filing and prosecution of patent applications underlying or related to Wirtgen America’s
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`Asserted Patents, including any foreign equivalent patent applications and their
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`prosecution histories; and
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`e. any obligation of inventor(s) and/or assignee(s) to cooperate or provide Information
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`relating to Wirtgen America’s Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 4:
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`All Communications between Wirtgen GmbH and any inventor concerning Wirtgen
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`America’s Asserted Patents or any related patent or application.
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`Case 3:23-mc-00003 Document 8-4 Filed 02/10/23 Page 7 of 8 PageID #: 204
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`REQUEST FOR PRODUCTION NO. 5:
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`Documents sufficient to show the research, development, design, functionality,
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`implementation, structure, manufacture, assembly, testing and/or operation of each accused feature
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`of each version of each Accused Wirtgen America Product, including, without limitation, hardware
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`and software thereof, or prior designs or prototypes thereof.
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`7
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`Case 3:23-mc-00003 Document 8-4 Filed 02/10/23 Page 8 of 8 PageID #: 205
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