UNITED STATES DISTRICT
`FOR THE WESTERN DISTRICT OF WISCONSIN
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`Oxbo International Corp.,
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`Plaintiff,
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`vs.
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`H&S Manufacturing Company, Inc.,
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`Defendant.
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`Civil Action No. 15-cv-292-jdp
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`DEFENDANT'S ANSWERS TO PLAINTIFF'S FIRST SET OF INTERROGATORIES
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`Defendant H&S Manufacturing Company, Inc. ("H&S"), for its Answers to Plaintiffs
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`First Set oflnterrogatories, states under oath as follows:
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`RESERVATIONS OF RIGHTS
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`1.
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`To the extent one is needed, H&S will produce a privilege log. H&S will not,
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`however, include documents created after the filing date of the Complaint in this action.
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`2.
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`H&S objects to each interrogatory to the extent it seeks information subject to the
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`attorney-client privilege, work product doctrine, or other privileges and rules of law on the
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`grounds that such matter is exempt from discovery.
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`3.
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`H&S objects to any and all instructions or definitions provided by Plaintiff which
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`seek to impose requirements beyond those required by the Federal Rules of Civil Procedure.
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`4.
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`H&S reserves the right to serve supplemental answers to these Interrogatories as
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`necessary or any reason, including, but not limited to, if it appears at any time that inadvertent
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`errors or omissions have been made, additional evidence is discovered or disclosed, or additional
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`evidence is determined to be otherwise responsive to any request(s).
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`5.
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`H&S reserves all objections as to the competency, relevancy, materiality,
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`privilege, and admissibility as evidence for any purpose of the information or documentation
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`referred to or responses given, or the subject matter hereof, in any subsequent proceeding in, or
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`in the trial of, this action or any other action or proceeding; and the right to object to other
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`discovery procedures involving or relating to the subject matter of the production of documents
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`to which H&S herein responds.
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`6.
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`H&S reserves the right to produce and to refer to, at trial or in any other hearing,
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`any evidence, facts, documents, or information not yet discovered, or the relevance of which has
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`not yet been determined, by H&S or its counsel.
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`7.
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`In setting forth these responses, H&S does not waive the attorney-client, work
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`product, or any other privilege or immunity from disclosure which may attach to the information
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`or material pursuant to or responsive of any request.
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`In answering all or any portion of any
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`request, H&S does not concede the relevance or materiality of the request or the subject matter to
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`which the request refers.
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`8.
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`The above-stated reservations are hereby made applicable to each and every
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`answer stated herein and are incorporated by reference as if fully set forth in each response to
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`Plaintiffs Interrogatories.
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`ANSWERS TO INTERROGATORIES
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`I.
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`Describe in detail the design, development, manufacture, structure, function, operation,
`marketing, sales and distribution of each Accused Product, including when you first
`began designing said product, what prompted development,
`the
`location(s) of
`manufacture of the Accused Products and the three persons most knowledgeable in these
`areas.
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`ANSWER Objection. This request is overly broad and unduly burdensome, vague as
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`to time period, and seeks information not calculated to lead to the discovery of admissible
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`evidence. H&S also objects to this request to the extent it seeks information subject to the
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`attorney-client privilege, work product doctrine, or other privileges and rules of law on
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`the grounds that such matter is exempt from discovery Subject to and without waiving
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`the foregoing objections, H&S states that it will produce non-privileged, responsive
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`documents, to the extent such documents exist providing such information.
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`H&S states that windrow mergers utilizing a pickup and belt-type cross conveyor
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`have been used to merge forage and other crops at least since New Holland introduced its
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`Model 144 in 1987. H&S began selling its first model, the HM2000, in May of 1998
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`after several years of development. Other models of single mergers followed from H&S
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`and numerous other companies. Greater horsepower and larger capacity choppers Jed to
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`demand for more hay or other forage crop to be combined into the windrows the
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`·choppers were picking up. This led to the introduction of double mergers that could pick
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`up two windrows and combine them onto a third windrow, often then merging two
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`additional windrows onto the combined windrow from the other side. H&S introduced
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`its Twin Merger, the Model TWM2 in February 2001, after several years of
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`development. Numerous other companies also introduced twin headed mergers.
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`In addition to the choppers being capable of ever greater capacities, the
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`technology of the forage cutters also evolved. To speed up the drying I harvesting
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`process, cutters evolved to Jay the cut crop out as widely as possible rather than gathering
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`freshly cut crop into windrows. These higher capacity cutting machines evolved to
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`generally utilize three separate cutting heads. On the self-propelled cutters, these heads
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`were generally all on the front of the machine in a line. The tractor mounted cutters
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`generally utilized one cutting head mounted on the front of the tractor and two bat wing
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`cutting heads mounted on the back of the tractor. Likewise, H&S introduced a front
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`mount merger, its Model FMM9 in March 2006, to be paired with its Twin Merger being
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`towed. It also introduced its 30' continuous head merger, the Model WMCH30 in April
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`2007. Because the combined front mount merger with a twin behind took so much field
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`space to turn and the 30' continuous merger utilized a stiff frame that made the machine
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`unwieldy on rolling terrain, planning and development of a triple head machine that could
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`follow the contour of the ground began even before those machines were introduced.
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`The planning and development of utilizing a windrow merger having three heads was the
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`obvious next step in the windrow merger technology at the time H&S began planning and
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`development of a triple head windrow merger.
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`The persons knowledgeable in these areas include Jim Kappel, Greg Landon and
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`Chris Heikenen.
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`2.
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`To the extent that Defendant contends it does not infringe any claim of the Patents in
`Suit, identify the complete factual and legal bases for that contention including
`identifying the limitation(s) of each patent claim you contend to be missing from the
`Accused Product(s), and for each identified limitation, identify the factual a basis for
`Defendant's interpretation of any relevant claim terms, and describe how Defendant has
`determined that the limitation or its equivalent is not part of the Accused Products.
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`ANSWER Objection. This request is overly broad and unduly burdensome, vague as to the
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`claims in the patents-in-suit, and seeks information not calculated to lead to the discovery of
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`admissible evidence. H&S also objects to this request to the extent it seeks information subject
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`to the attorney-client privilege, work product doctrine, or other privileges and rules of law on the
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`grounds that such matter is exempt from discovery. H&S further objects to this request as being
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`premature as Plaintiffs infringement contentions that were due on November 2, 2015 fail to
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`identify the complete factual and legal bases for their contentions, including identifying how
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`each limitation of the asserted claims are present in the accused products, along with any relevant
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`interpretation of claim terms of such asserted claims. H&S still further objects to this request as
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`being premature as the parties are to exchange claim terms with proposed constructions on
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`March 2, 2016, along with responses due on March 16, 2016. Subject to and without waiving
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`the foregoing objections, H&S states the following and specifically denies that its triple head
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`windrow mergers infringe any valid claim of the asserted patents-in-suit, as the accused products
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`do not have at least one claim limitation of the patents in suit. Discovery is ongoing and H&S
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`will H&S supplement its answer in due course after Plaintiff properly meets its infringement
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`contentions as set forth in the Court's Preliminary Pretrial Conference Order.
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`3.
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`Describe in detail the sales of each Accused Product in the United States and worldwide,
`including, but not limited to, offers for sale, the number of units sold, their serial numbers
`and sale price, gross and net margins, invoices, price quotes, identification and location
`information of each purchasing customer, and the locations of such Accused Products.
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`ANSWER Objection. This request is overly broad and unduly burdensome, vague as to time
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`period and worldwide location, and seeks information not calculated to lead to the discovery of
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`admissible evidence. Subject to and without waiving the foregoing objections, H&S states that it
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`will produce non-privileged, responsive documents providing information, to the extent it exists
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`that provides the requested information.
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`4.
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`If Defendant contends there are any non-infringing alternatives, wherein non-infringing
`alternatives has the meaning ascribed in Grain Processing Corp. v. American Maize(cid:173)
`Products Co. 185 F.3d 1341 (Fed. Cir. 1999), identify the name, model, make, and
`locations of each such non-infringing alternative device and identify whether such non(cid:173)
`infringing alternative has been sold and if so, to whom.
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`ANSWER Objection. This request is overly broad and unduly burdensome, vague as to the
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`claims in the patents-in-suit to which the non-infringing alternatives would apply, and seeks
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`information not calculated to lead to the discovery of admissible evidence. H&S also objects to
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`this request as being premature as discovery is ongoing and to the extent it seeks information not
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`in the custody or control of H&S. H&S also objects to this request to the extent it seeks
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`information subject to the attorney-client privilege, work product doctrine, or other privileges
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`and rules of law on the grounds that such matter is exempt from discovery. H&S further objects
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`to this request as being premature as Plaintiffs infringement contentions that were due on
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`November 2, 2015 fail to identify the complete factual and legal bases for their contentions,
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`including identifying how each limitation of the asserted claims are present in the accused
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`products such that proper non-infringing alternatives can be identified by H&S, along with any
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`relevant interpretation of claim terms of such asserted claims. H&S still further objects to this
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`request as being premature as the parties are to exchange claim terms with proposed
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`constructions on March 2, 2016, along with responses due on March 16, 2016. Subject to and
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`without waiving the foregoing objections, H&S states the following and specifically denies that
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`its triple head windrow mergers infringe any valid claim of the asserted patents-in-suit.
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`Discovery is ongoing and H&S will H&S supplement its answer in due course after Plaintiff
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`properly meets its infringement contentions as set forth in the Court's Preliminary Pretrial
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`Conference Order.
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`5.
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`If Defendant contends that any claim of the Patents in Suit is invalid or unenforceable,
`identify the complete factual and legal bases for that contention and identify any
`allegedly invalidating prior art. If relying on a combination of prior art, identify each
`specific combination relied upon, identify where each element of claim is found in the
`prior art, the reason for combining the prior art and the three persons most knowledgeable
`about the factual bases for Defendant's contention.
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`ANSWER Objection. This request is overly broad and unduly burdensome, vague as to the
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`claims in the patents-in-suit, and seeks information not calculated to lead to the discovery of
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`admissible evidence. H&S also objects to this request to the extent it seeks information subject
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`to the attorney-client privilege, work product doctrine, or other privileges and rules of law on the
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`grounds that such matter is exempt from discovery. H&S further objects to this request as being
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`premature as Defendant's invalidity and unenforceability contentions are due January 8, 2016
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`under the Court's Preliminary Pretrial Conference Order. H&S further objects to this request as
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`being premature as Plaintiffs infringement contentions that were due on November 2, 2015 fail
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`to identify the complete factual and legal bases for their contentions, including identifying how
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`each limitation of the asserted claims are present in the accused products, along with any relevant
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`interpretation of claim terms of such asserted claims. Subject to and without waiving the
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`foregoing objections, H&S states the following and specifically denies that its triple head
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`windrow mergers infringe any valid claim of the asserted patents-in-suit. Discovery is ongoing
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`and H&S will H&S supplement its answer in due course pursuant to the Court's Preliminary
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`Pretrial Conference Order.
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`6.
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`Provide a construction of each element of each claim in the Patents in Suit that Defendant
`contends that the Court should construe, along with a chart specifically identifying and
`describing in detail and intrinsic or extrinsic evidence supporting such construction,
`including without limitation all relied-upon citations to the claim language, the patent
`specification, and the prosecution history.
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`ANSWER Objection. This request is overly broad and unduly burdensome, vague as to the
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`claims in the patents-in-suit, and seeks information not calculated to lead to the discovery of
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`admissible evidence. H&S also objects to this request to the extent it seeks information subject
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`to the attorney-client privilege, work product doctrine, or other privileges and rules of law on the
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`grounds that such matter is exempt from discovery. H&S further objects to this request as being
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`premature as Plaintiffs infringement contentions that were due on November 2, 2015 fail to
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`identify the complete factual and legal bases for their contentions, including identifying how
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`each limitation of the asserted claims are present in the accused products, along with any relevant
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`interpretation of claim terms of such asserted claims. H&S still further objects to this request as
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`being premature as the parties are to exchange claim terms with proposed constructions on
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`March 2, 2016, along with responses due on March 16, 2016. Subject to and without waiving
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`the foregoing objections, H&S states the following and specifically denies that its triple head
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`windrow mergers infringe any valid claim of the asserted patents-in-suit. Discovery is ongoing
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`and H&S will H&S supplement its answer in due course pursuant to the Court's Preliminary
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`Pretrial Conference Order.
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`7.
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`State the date when Defendant had notice of the Patents in Suit and describe in detail the
`facts and circumstances surrounding such notice, including the identity of each person
`who received the notice, the method by which each person received notice, and the
`identity of all documents relating to each notice.
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`ANSWER Objection. This request is overly broad and unduly burdensome, vague as to the
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`phrase "the identity of documents relating to each notice," and seeks information not calculated
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`to lead to the discovery of admissible evidence. H&S also objects to this request to the extent it
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`seeks information subject to the attorney-client privilege, work product doctrine, or other
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`privileges and rules of law on the grounds that such matter is exempt from discovery. Subject to
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`and without waiving the foregoing objections, H&S states the following and specifically denies
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`that its triple head windrow mergers infringe any valid claim of the asserted patents-in-suit.
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`H&S had knowledge of U.S. Patent No. 7,310,929 at least as early as June 22, 2010, with at least
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`Chris Heikenen and Greg Landon having such knowledge. While discovery is ongoing, upon
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`information and belief H&S was not aware of U.S. Patent No. 8,166,739, U.S. Patent No.
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`8,863,488 and U.S. Patent No. 8,511,052 until being made aware of the present action being filed
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`by Oxbo by way of an email correspondence of Jeff Mcintyre with the law firm of Whyte
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`Hirschboeck Dudek S.C. to Chris Heikenen offering representation after suit was filed.
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`8.
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`State the factual and legal bases for Defendant's affirmative defenses that Plaintiffs
`claim is barred by the doctrines of !aches, equitable estoppel, acquiescence, implied
`license, unclean hands, and/or prosecution history estoppel, that Defendant has not
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`willfully infringed the Patents in Suit, that Plaintiffs claim for willful infringement is
`barred by !aches, and that Plaintiffs claim is barred for failure to give notice under 35
`u.s.c. § 287.
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`ANSWER Objection. This request is overly broad and unduly burdensome and constitutes
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`nine separate interrogatories as it seeks information about at nine different matters. H&S also
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`objects to this request to the extent it seeks information subject to the attorney-client privilege,
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`work product doctrine, or other privileges and rules of law on the grounds that such matter is
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`exempt from discovery, particularly to the extent that it seeks disclosure of the legal bases for
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`these matters separate from their relation to the facts as they are discovered. H&S further objects
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`to this contention interrogatory as premature given that discovery just commenced and the
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`complete factual basis for these affirmative defenses is not yet completely known or understood.
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`H&S further objects to this request as being premature as Defendant's invalidity and
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`unenforceability contentions are due January 8, 2016 under the Court's Preliminary Pretrial
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`Conference Order. H&S further objects to this request as being premature as Plaintiffs
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`infringement contentions that were due on November 2, 2015 fail to identify the complete factual
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`and legal bases for their contentions, including identifying how each limitation of the asserted
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`claims are present in the accused products, along with any relevant interpretation of claim terms
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`of such asserted claims.
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`Subject to and without waiving the foregoing objections, H&S states on information and
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`belief that Oxbo knew about sales and offers for sale of the accused products for an extended
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`period of time prior to filing suit during which time its actions and/or inaction was contrary to its
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`present enforcement of alleged rights. Further on information and belief, Oxbo is acting
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`unlawfully and in concert with Kuhn under terms of the March 2014 License Contract in its
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`present enforcement of alleged rights despite knowledge that one or more of the asserted claims
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`are invalid. In addition to the fact that none of H&S's products infringe any valid claim of the
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`patents-in-suit, H&S's lack of knowledge of the asserted patent claims and patents until recently
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`supports its contention that it is not willfully infringing any alleged rights of Oxbo. Moreover,
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`H&S is not aware that either Oxbo or Kuhn have properly marked their respective products
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`despite representations from Oxbo that Kuhn incorporated the patented technology into its
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`merger products. As discovery develops, H&S will supplement its response, as necessary.
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`Dated: Mtt1t1Wr 19 J()/S
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`I
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`::·poJibmZ/, ~d
`
`Eric H. Chadwick, Esq.
`Brian L. Stender, Esq.
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South Eighth Street, Suite 4800
`Minneapolis, MN 55402
`Phone:
`(612) 349-5740
`Facsimile:
`(612) 349-9266
`chadwick@ptslaw.com
`stender@ptslaw.com
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`ATTORNEYS FOR DEFENDANT
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`IO
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`