`
`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
`
`Honorable David P. Shaw
`Chief Administrative Law Judge
`
`
`In the Matter of
`
`CERTAIN ROAD MILLING MACHINES
`AND COMPONENTS THEREOF
`
`Investigation No. 337-TA-1067
`
`
`WIRTGEN AMERICA’S DISCOVERY STATEMENT
`
`Pursuant to Order No. 5, Complainant Wirtgen America, Inc. (“Wirtgen America”)
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`submits this discovery statement.
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`1. The issues that Wirtgen America proposes to be litigated and any stipulations
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`a) Infringement: whether Respondents’ Accused Products infringe one or more of claims 1–
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`5, 7–12, and 14–17 of U.S. Patent No. 9,644,340; claims 1, 2, 5, 6, 9–22, and 27–29 of
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`U.S. Patent No. 9,624,628; claims 1–7, 13–24, and 26 of U.S. Patent No. 9,656,530;
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`claims 1, 2, 4, 6–8, 11, 12, and 15–17 of U.S. Patent No. 7,530,641; and claims 1–3, 5–
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`24, and 26–36 of U.S. Patent No. 7,828,309 (the “Asserted Patents”); either literally or
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`under the doctrine of equivalents;
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`b) Importation: whether each Respondent has engaged in unfair competition or unfair acts in
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`the sale of Accused Products for importation into the Unites States, in the importation of
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`Accused Products into the Unites States, or in the sale of Accused Products in the United
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`States; Wirtgen America proposes that the issue of importation may be resolved by
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`stipulation;
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`1
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`
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`c) Domestic Industry: whether a domestic industry exists with respect to the Asserted
`
`Patents; Wirtgen America proposes that the issue of the economic prong of domestic
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`industry may be resolved by stipulation;
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`d) Remedy: the form and scope of the limited exclusion orders and cease-and-desist orders
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`to be issued should a violation of section 337 be found;
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`e) Bond: the amount of any bond to be required during any Presidential review period;
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`f) Other Stipulations: The parties are discussing stipulations with regard to procedural
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`matters including the discovery of source code and electronic documents, service of
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`documents, and depositions.
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`2. Information and evidence that Wirtgen America intends to submit
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`a) Infringement: Documents and testimony, including fact and expert witness testimony,
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`regarding the development, composition, functionality, and use of the Accused Products,
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`including publicly available documents and documents sought from the Respondents
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`through discovery.
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`b) Importation: Documents and testimony showing the importation into the United States,
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`the sale for importation, or the sale within the United States after importation of the
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`Accused Products;
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`c) Domestic Industry: Documents and testimony showing Wirtgen America’s domestic
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`activities and investments with respect to its products that are covered by the Asserted
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`Patents (the “Domestic Industry Products”), and the development, composition,
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`functionality, and use of those products;
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`2
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`d) Remedy: Documents and testimony showing that the Commission should issue limited
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`exclusion orders and cease-and-desist orders should a violation of section 337 be found,
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`and the appropriate scope of those orders;
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`e) Bond: Documents and testimony showing the amount of any bond that the Commission
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`should require during any Presidential review period;
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`f) Rebuttal evidence: Documents and testimony rebutting any affirmative defenses that the
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`Respondents might properly raise.
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`3. Information and evidence that Wirtgen America intends to seek from Respondents and
`third parties
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`On August 28, 2017, Wirtgen America served interrogatories and requests for production
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`on each Respondent. Respondents responded to this discovery on September 18, 2017, but have
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`yet to produce documents. On September 19, 2017, Wirtgen America served requests for
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`admissions on each Respondent. Wirtgen America anticipates that it will make additional
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`discovery requests and will seek expert and fact depositions, additional interrogatories,
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`additional document requests, and additional requests for admission.
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`The information sought by Wirtgen America includes technical documents and reference
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`manuals specific to each Accused Product, as well as source code pertinent to specific features of
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`the Accused Products. Wirtgen America also seeks information concerning the design and
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`development of the Accused Products and the persons’ involved in this process. Wirtgen
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`America also seeks information related to the sales of the Accused Products, as well as
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`information related to promotion, pricing, manufacturing, and importation. This information and
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`evidence will be sought from Respondents and possibly from third parties, some of whom may
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`3
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`reside abroad. Wirtgen America also seeks to inspect the Accused Products as well as the
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`facilities in which they are manufactured.
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`4. Information and evidence that Wirtgen America proposes exchanging among the
`parties without the use of formal discovery methods
`
`Wirtgen America proposes that the parties exchange product marketing materials, user
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`manuals, and service and repair manuals of each of the Accused Products and the Domestic
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`Industry Products on September 29, 2017.
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`Wirtgen America also proposes that the parties’ respective document productions should
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`be substantially complete by November 20, 2017.
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`Wirtgen America also proposes that the parties stipulate as to the source code needed to
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`evaluate the presence of the patented functionality of both the Accused Products and the
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`Domestic Industry products. Wirtgen America proposes that the parties exchange this source
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`code on November 1, 2017.
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`Wirtgen America also proposes that the parties agree to complete inspections of the
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`Accused Products and Domestic Industry Products before any final contentions are exchanged.
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`Wirtgen America proposed the mutual exchange of these relevant documents and things
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`during a meet and confer with Respondents on September 21, 2017. Respondents refused. If a
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`date certain is not set for the mutual exchange of these relevant documents and things, Wirtgen
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`America is concerned that it will not timely receive the information it needs for its case—leading
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`to unnecessary, time-consuming, and costly motions practice.
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`5. Information and evidence that Wirtgen America believes can be obtained only by
`deposition, interrogatory, subpoena, or request for admission
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`The following topics might only be obtainable through formal discovery: information
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`concerning the design and development of the Accused Products, certain aspects of the
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`
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`4
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`
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`functionality of the Accused Products, and information concerning the importation of the
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`Accused Products. There is likely other such information and evidence that Wirtgen America
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`expects to learn of through discovery in this investigation.
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`6. Proposed procedural schedule
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`The parties have jointly proposed a procedural schedule attached hereto as Exhibit A.
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`Dated: September 22, 2017 (cid:9)
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`Respectfully submitted,
`
`Daniel E. Yonan )
`Michael E. Joffre
`Paul Ainsworth
`Kyle E. Conklin
`Ralph W. Powers III
`STERNE, KESSLER, GOLDSTEIN & Fox, P.L.L.C.
`1100 New York Avenue
`Washington, DC 20005
`(202) 371-2600
`
`John F. Triggs
`Ryan D. Levy
`William E. Sekyi
`Seth R. Ogden
`PATTERSON INTELLECTUAL PROPERTY LAW,
`P.C.
`Roundabout Plaza, Suite 500
`1 600 Division Street
`Nashville, TN 37203
`(615) 242-2400
`
`Counsel for Complainant Wirtgen America, Inc.
`
`
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`Exhibit A
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`
`
`Exhibit A
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`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`
`In the Matter of
`
`CERTAIN ROAD MILLING MACHINES
`AND COMPONENTS THEREOF
`
`
`
`
`
`
`
`Investigation No. 337-TA-1067
`
`JOINT PROCEDURAL SCHEDULE
`
`
`
`Description
`
`Institution
`
`Complainants to file first declaration detailing
`efforts to reduce the number of patent claims
`and patents at issue, as well as a list of the
`patents and claims remaining at issue (GR 6.a)
`
`File list of claim terms that each party contends
`should be construed (GR 6.b)
`
`Exchange initial contention interrogatory
`responses regarding issues as to which the
`party bears the burden of proof
`
`Complainants to file list of all products they
`will rely upon to satisfy domestic industry
`requirement (GR 6.h)
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`Date
`
`Friday, August 25, 2017
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`Monday, October 2, 2017
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`Wednesday, October 18, 2017
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`Friday, October 27, 2017
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`Friday, October 27, 2017
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`Deadline for first settlement conference (GR 3)
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`Friday, November 03, 2017
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`Exchange proposed constructions for the claim
`terms that the parties contend should be
`construed
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`Thursday, November 7, 2017
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`File Notice of Prior Art (GR 2)
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` Tuesday, November 7, 2017
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`Deadline to meet and confer in an attempt to
`reconcile or otherwise limit disputed claim
`terms and jointly identify terms most
`
`Thursday, November 09, 2017
`
`
`
`- 1 -
`
`
`
`
`
`Description
`
`Date
`
`significant to resolving disputes (GR 6.b)
`
`Submission of First Settlement Conference
`Joint Report (GR 3)
`
`Exchange initial contention interrogatory
`responses regarding issues as to which the
`party does not bear the burden of proof
`
`File proposed constructions of claim terms
`identified by each party (GR 6.c)
`
`File joint list of disputed claim terms and
`proposed constructions thereof and joint list of
`claim terms that must be construed but whose
`meanings are not disputed and the joint
`proposed constructions thereof (GR 6.b, c)
`
`Deadline to meet and confer to narrow issues
`in preparation of the Joint Claim Construction
`chart (GR 6.c)
`
`Parties to file joint statement identifying
`accused products (GR 6.h)
`
`File Joint Claim Construction chart containing
`construction of those terms on which the
`parties agree; including each party's proposed
`construction of disputed terms; the ten most
`significant terms; and any dispositive terms
`(GR 6.d)
`
`File identification of expert witnesses,
`including their expertise and curriculum vitae
`(GR 4.a)
`
`Complainants to file list of proposed
`representative accused products based on
`infringement contentions (GR 6.h)
`
`File tentative list of witnesses a party will call
`to testify at the hearing, with an identification
`of each witness's relationship to the party
`
`Friday, November 10, 2017
`
`Friday, November 10, 2017
`
`Tuesday, November 14, 2017
`
`Tuesday, November 21, 2017
`
`Tuesday, November 28, 2017
`
`Tuesday, November 28, 2017
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`Friday, December 01, 2017
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`Tuesday, December 05, 2017
`
`Tuesday, December 05, 2017
`
`Tuesday, December 05, 2017
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`Respondents file responses to Complainants'
`
`Wednesday, December 20, 2017
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`
`
`- 2 -
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`
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`
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`Description
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`Date
`
`proposed representative accused products (GR
`6.h)
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`Each party files initial claim construction brief
`(GR 6.e)
`
`Exchange final contention interrogatory
`responses regarding issues as to which the
`party bears the burden of proof (subject to
`supplementation based on later discovery)
`
`Each party files reply claim construction brief
`(GR 6.e)
`
`Parties to file joint stipulation regarding
`representative accused products (GR 6.h)
`
`Exchange final contention interrogatory
`responses regarding issues as to which the
`party does not bear the burden of proof (subject
`to supplementation based on later discovery)
`
`Tuesday, December 22, 2017
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`Wednesday, January 3, 2018
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`Friday, January 8, 2018
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`Monday, January 08, 2018
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`Wednesday, January 17, 2018
`
`Fact Discovery cutoff and completion
`
`Wednesday, January 17, 2018
`
`Deadline for motions to compel-discovery
`
`Monday, January 22, 2018
`
`Parties file joint technology stipulation (GR
`6.i)
`
`Deadline for responses to motions to compel
`discovery
`
`Tuesday, January 23, 2018
`
`Tuesday, January 30, 2018
`
`File initial expert reports (GR 4.b)
`
`Wednesday, January 31, 2018
`
`File rebuttal expert reports (GR 4.b)
`
`Tuesday, February 13, 2018
`
`Deadline for filing summary determination
`motions
`
`Parties to submit (to administrative law judge)
`PDF versions of initial and rebuttal expert
`reports on CD, DVD, or flash drive (GR4.b)
`
`Friday, February 16, 2018
`
`Thursday, February 22, 2018
`
`Expert discovery cutoff and completion
`
`Friday, March 02, 2018
`
`
`
`- 3 -
`
`
`
`
`
`Description
`
`Date
`
`Exchange of exhibit lists among the parties
`
`Friday, March 09, 2018
`
`Exchange direct exhibits (including witness
`statements), with physical and demonstrative
`exhibits available
`
`Deadline for second settlement conference
`(GR 3)
`
`Tuesday, March 13, 2018
`
`Wednesday, March 14, 2018
`
`Exchange deposition designations
`
`Friday, March 16, 2018
`
`Submission of Second Settlement Conference
`Joint Report (GR3)
`
`Exchange rebuttal exhibits (including witness
`statements), with physical and demonstrative
`exhibits available
`
`Exchange counter deposition designations
`
`File prehearing statements and brief, including
`(a) witness list (GR 7.a); (b) exhibit list (GR
`7.b); and (c) statement of issues to be
`considered at the hearing (GR 7.c)
`
`File High Priority Objections (GR 9.f)
`
`Deadline for filing motions in limine
`
`File receipt of evidence without a sponsoring
`witness
`
`File responses to high priority objections
`
`Deadline for filing responses to motions in
`limine
`
`Staff - File prehearing statements and brief,
`including (a) witness list (GR 7.a); (b) exhibit
`list (GR 7.b); and (c) statement of issues to be
`considered at the hearing (GR 7.c)
`
`Submit proposed exhibit lists and exhibits on a
`single drive, including witness statements in
`binders and on a single drive (GR 8.a, 9.d)
`
`
`
`- 4 -
`
`Wednesday, March 21, 2018
`
`Tuesday, March 27, 2018
`
`Friday, March 30, 2018
`
`Friday, March 30, 2018
`
`Monday, April 02, 2018
`
`Monday, April 02, 2018
`
`Monday, April 02, 2018
`
`Monday, April 9, 2018
`
`Monday, April 9, 2018
`
`Wednesday, April 11, 2018
`
`Tuesday, April 17, 2018
`
`
`
`
`
`
`
`Description
`
`Date
`
`Pre-Hearing Conference
`
`Thursday, April 19, 2018
`
`Hearing
`
`Thursday, April 19, 2018 to Tuesday, April
`24, 2018
`
`File initial post-hearing briefs, set of final
`exhibits (GR 9.g), final exhibit lists (GR 9.h),
`and joint outline of the issues to be decided in
`the final ID (GR 1l.a)
`
`Friday, May 11, 2018
`
`File reply post-hearing briefs
`
`Wednesday, May 23, 2018
`
`Deadline to submit binder set of final exhibit
`lists and exhibits to the Office of General
`Counsel (GR 9.i)
`
`Friday, June 22, 2018
`
`Initial Determination due
`
`Friday, August 24, 2018
`
`Target date for completion of Investigation
`
`Wednesday, December 26, 2018
`
`
`
`
`
`- 5 -
`
`
`
`CERTAIN ROAD MILLING MACHINES
`AND COMPONENTS THEREOF
`
`
`
`
`Docket No. 337-TA-1067
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`I, DuVon O. Floyd, hereby certify that on this day, September 22, 2017, a true and
`correct copy of the foregoing WIRTGEN AMERICA’S DISCOVERY STATEMENT was
`filed and served upon the following as indicated:
`
`The Honorable Lisa R. Barton
`Secretary to the Commission
`U.S. International Trade Commission
`500 E Street, S.W., Room 112
`Washington, DC 20436
`
`The Honorable David P. Shaw
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, DC 20436
`Attorney Advisor: John Thuermer
`JohnJames.Thuermer@usitc.gov
`
`Monisha Deka, Esq.
`Investigative Attorney
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Room 401
`Washington, D.C. 20436
`Monisha.Deka@usitc.gov
`
`
`
` Via Electronic filing (EDIS)
` Via Hand Delivery (8 copies)
` Via First Class Mail
` Via Electronic Mail
` Via Overnight Courier
`
` Via Hand Delivery (1 copy)
` Via First Class Mail
` Via Electronic Mail (attorney advisor only)
` Via Overnight Courier
`
`
`
` Via Hand Delivery
` Via First Class Mail
` Via Electronic Mail
` Via Overnight Courier
`
`On Behalf of Proposed Respondents Caterpillar Inc., Caterpillar Paving Products, Inc.,
`Caterpillar Bitelli SpA, Caterpillar Prodotti Stradali S.r.L., and Caterpillar Americas CV
`
`Christine Lehman, Esq.
`FINNEGAN, HENDERSON, FARABOW, GARRETT &
`DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`Email: CAT-ITC-SERVICE@finnegan.com
`
`
`
` Via Hand Delivery
` Via First Class Mail
` Via Electronic Mail
` Via FedEx (Next Business Day)
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` /s/ DuVon O. Floyd
`DuVon O. Floyd
`
`Litigation Paralegal
`
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`
`
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