Case 1:17-cv-00770-JDW-MPT Document 133 Filed 01/06/23 Page 1 of 8 PageID #: 14749
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`DEFENDANT/COUNTERCLAIM-PLAINTIFF CATERPILLAR INC.’S NOTICE OF
`SUBPOENA TO PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
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`PLEASE TAKE NOTICE that, pursuant to Rule 45 of the Federal Rules of Civil
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`Procedure, Defendant and Counterclaim-Plaintiff Caterpillar Inc. (“Caterpillar”) will serve the
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`attached subpoena (Exhibit 1) upon Patterson Intellectual Property Law, P.C in the above-
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`POTTER ANDERSON & CORROON LLP
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`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
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`Attorneys for Defendant Caterpillar Inc.
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`referenced
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`OF COUNSEL:
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`James C. Yoon
`Ryan R. Smith
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
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`Dated: January 6, 2023
`10530017/11898.00005
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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-MPT
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`JURY TRIAL DEMANDED
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`)))))))))
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`WIRTGEN AMERICA, INC.,
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`CATERPILLAR INC.,
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`Plaintiff,
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`v.
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`Defendant.
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`

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`Case 1:17-cv-00770-JDW-MPT Document 133 Filed 01/06/23 Page 2 of 8 PageID #: 14750
`Case 1:17-cv-00770-JDW-MPT Document 133 Filed 01/06/23 Page 2 of 8 PagelD #: 14750
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`EXHIBIT 1
`EXHIBIT 1
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`

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`Case 1:17-cv-00770-JDW-MPT Document 133 Filed 01/06/23 Page 3 of 8 PageID #: 14751
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`AO 88A (Rev. 12/20) Subpoena to Testify at a Deposition in a Civil Action
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`UNITED STATES DISTRICT COURT
`for the
`__________ District of __________
`District of Delaware
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`Civil Action No.
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`17-770-JDW-MPT
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`))))))
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`WIRTGEN AMERICA, INC.
`Plaintiff
`v.
`CATERPILLAR INC.
`Defendant
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`To:
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`SUBPOENA TO TESTIFY AT A DEPOSITION IN A CIVIL ACTION
`Patterson Intellectual Property Law, P.C.
`1600 Division Street, Suite 500, Nashville, TN 37203
`(Name of person to whom this subpoena is directed)
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`’ Testimony: YOU ARE COMMANDED to appear at the time, date, and place set forth below to testify at a
`deposition to be taken in this civil action. If you are an organization, you must promptly confer in good faith with the
`party serving this subpoena about the following matters, or those set forth in an attachment, and you must designate one
`or more officers, directors, or managing agents, or designate other persons who consent to testify on your behalf about
`these matters:
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`Place:
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`Patterson Intellectual Property Law, P.C.
`1600 Division Street, Suite 500, Nashville, TN 37203
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`Date and Time:
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`02/06/2023 9:00 am
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`The deposition will be recorded by this method:
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`video and stenographic recording
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`’ Production: You, or your representatives, must also bring with you to the deposition the following documents,
`electronically stored information, or objects, and must permit inspection, copying, testing, or sampling of the
`material:
`See Schedule A, attached hereto.
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`The following provisions of Fed. R. Civ. P. 45 are attached – Rule 45(c), relating to the place of compliance;
`Rule 45(d), relating to your protection as a person subject to a subpoena; and Rule 45(e) and (g), relating to your duty to
`respond to this subpoena and the potential consequences of not doing so.
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`Date:
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`01/06/2023
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`CLERK OF COURT
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`Signature of Clerk or Deputy Clerk
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`OR
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`Ryan R. Smith
`Attorney’s signature
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`Caterpillar Inc.
`The name, address, e-mail address, and telephone number of the attorney representing (name of party)
`, who issues or requests this subpoena, are:
`Ryan R. Smith, Wilson Sonsini Goodrich & Rosati, P.C., 701 Fifth Ave., Suite 5100, Seattle, WA 98104
`rsmith@wsgr.com, 206.883.2500
`Notice to the person who issues or requests this subpoena
`If this subpoena commands the production of documents, electronically stored information, or tangible things before
`trial, a notice and a copy of the subpoena must be served on each party in this case before it is served on the person to
`whom it is directed. Fed. R. Civ. P. 45(a)(4).
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`

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`Case 1:17-cv-00770-JDW-MPT Document 133 Filed 01/06/23 Page 4 of 8 PageID #: 14752
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`AO 88A (Rev. 12/20) Subpoena to Testify at a Deposition in a Civil Action (Page 2)
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`Civil Action No.
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`17-770-JDW-MPT
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`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
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`I received this subpoena for (name of individual and title, if any)
`.
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`on (date)
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`’ I served the subpoena by delivering a copy to the named individual as follows:
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`’ I returned the subpoena unexecuted because:
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`on (date)
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`; or
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`Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
`tendered to the witness the fees for one day’s attendance, and the mileage allowed by law, in the amount of
`$
`.
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`My fees are $
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`for travel and $
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`for services, for a total of $
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`0.00
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`.
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`.
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`I declare under penalty of perjury that this information is true.
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`Date:
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`Additional information regarding attempted service, etc.:
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`Server’s signature
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`Printed name and title
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`Server’s address
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`

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`Case 1:17-cv-00770-JDW-MPT Document 133 Filed 01/06/23 Page 5 of 8 PageID #: 14753
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`AO 88A (Rev. 12/20) Subpoena to Testify at a Deposition in a Civil Action (Page 3)
`Federal Rule of Civil Procedure 45 (c), (d), (e), and (g) (Effective 12/1/13)
`(i) disclosing a trade secret or other confidential research, development,
`or commercial information; or
`(ii) disclosing an unretained expert’s opinion or information that does
`not describe specific occurrences in dispute and results from the expert’s
`study that was not requested by a party.
`(C) Specifying Conditions as an Alternative. In the circumstances
`described in Rule 45(d)(3)(B), the court may, instead of quashing or
`modifying a subpoena, order appearance or production under specified
`conditions if the serving party:
`(i) shows a substantial need for the testimony or material that cannot be
`otherwise met without undue hardship; and
`(ii) ensures that the subpoenaed person will be reasonably compensated.
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`(c) Place of Compliance.
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`(1) For a Trial, Hearing, or Deposition. A subpoena may command a
`person to attend a trial, hearing, or deposition only as follows:
`(A) within 100 miles of where the person resides, is employed, or
`regularly transacts business in person; or
`(B) within the state where the person resides, is employed, or regularly
`transacts business in person, if the person
`(i) is a party or a party’s officer; or
`(ii) is commanded to attend a trial and would not incur substantial
`expense.
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`(2) For Other Discovery. A subpoena may command:
`(A) production of documents, electronically stored information, or
`tangible things at a place within 100 miles of where the person resides, is
`employed, or regularly transacts business in person; and
`(B) inspection of premises at the premises to be inspected.
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`(d) Protecting a Person Subject to a Subpoena; Enforcement.
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`(1) Avoiding Undue Burden or Expense; Sanctions. A party or attorney
`responsible for issuing and serving a subpoena must take reasonable steps
`to avoid imposing undue burden or expense on a person subject to the
`subpoena. The court for the district where compliance is required must
`enforce this duty and impose an appropriate sanction—which may include
`lost earnings and reasonable attorney’s fees—on a party or attorney who
`fails to comply.
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`(2) Command to Produce Materials or Permit Inspection.
`(A) Appearance Not Required. A person commanded to produce
`documents, electronically stored information, or tangible things, or to
`permit the inspection of premises, need not appear in person at the place of
`production or inspection unless also commanded to appear for a deposition,
`hearing, or trial.
`(B) Objections. A person commanded to produce documents or tangible
`things or to permit inspection may serve on the party or attorney designated
`in the subpoena a written objection to inspecting, copying, testing, or
`sampling any or all of the materials or to inspecting the premises—or to
`producing electronically stored information in the form or forms requested.
`The objection must be served before the earlier of the time specified for
`compliance or 14 days after the subpoena is served. If an objection is made,
`the following rules apply:
`(i) At any time, on notice to the commanded person, the serving party
`may move the court for the district where compliance is required for an
`order compelling production or inspection.
`(ii) These acts may be required only as directed in the order, and the
`order must protect a person who is neither a party nor a party’s officer from
`significant expense resulting from compliance.
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`(3) Quashing or Modifying a Subpoena.
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`(A) When Required. On timely motion, the court for the district where
`compliance is required must quash or modify a subpoena that:
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`(i) fails to allow a reasonable time to comply;
`(ii) requires a person to comply beyond the geographical limits
`specified in Rule 45(c);
`(iii) requires disclosure of privileged or other protected matter, if no
`exception or waiver applies; or
`(iv) subjects a person to undue burden.
`(B) When Permitted. To protect a person subject to or affected by a
`subpoena, the court for the district where compliance is required may, on
`motion, quash or modify the subpoena if it requires:
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`(e) Duties in Responding to a Subpoena.
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`(1) Producing Documents or Electronically Stored Information. These
`procedures apply to producing documents or electronically stored
`information:
`(A) Documents. A person responding to a subpoena to produce documents
`must produce them as they are kept in the ordinary course of business or
`must organize and label them to correspond to the categories in the demand.
`(B) Form for Producing Electronically Stored Information Not Specified.
`If a subpoena does not specify a form for producing electronically stored
`information, the person responding must produce it in a form or forms in
`which it is ordinarily maintained or in a reasonably usable form or forms.
`(C) Electronically Stored Information Produced in Only One Form. The
`person responding need not produce the same electronically stored
`information in more than one form.
`(D) Inaccessible Electronically Stored Information. The person
`responding need not provide discovery of electronically stored information
`from sources that the person identifies as not reasonably accessible because
`of undue burden or cost. On motion to compel discovery or for a protective
`order, the person responding must show that the information is not
`reasonably accessible because of undue burden or cost. If that showing is
`made, the court may nonetheless order discovery from such sources if the
`requesting party shows good cause, considering the limitations of Rule
`26(b)(2)(C). The court may specify conditions for the discovery.
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`(2) Claiming Privilege or Protection.
`(A) Information Withheld. A person withholding subpoenaed information
`under a claim that it is privileged or subject to protection as trial-preparation
`material must:
`(i) expressly make the claim; and
`(ii) describe the nature of the withheld documents, communications, or
`tangible things in a manner that, without revealing information itself
`privileged or protected, will enable the parties to assess the claim.
`(B) Information Produced. If information produced in response to a
`subpoena is subject to a claim of privilege or of protection as
`trial-preparation material, the person making the claim may notify any party
`that received the information of the claim and the basis for it. After being
`notified, a party must promptly return, sequester, or destroy the specified
`information and any copies it has; must not use or disclose the information
`until the claim is resolved; must take reasonable steps to retrieve the
`information if the party disclosed it before being notified; and may promptly
`present the information under seal to the court for the district where
`compliance is required for a determination of the claim. The person who
`produced the information must preserve the information until the claim is
`resolved.
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`(g) Contempt.
`The court for the district where compliance is required—and also, after a
`motion is transferred, the issuing court—may hold in contempt a person
`who, having been served, fails without adequate excuse to obey the
`subpoena or an order related to it.
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`For access to subpoena materials, see Fed. R. Civ. P. 45(a) Committee Note (2013).
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`

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`Case 1:17-cv-00770-JDW-MPT Document 133 Filed 01/06/23 Page 6 of 8 PageID #: 14754
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`SCHEDULE A
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`DEFINITIONS & INSTRUCTIONS
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`1.
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`“You,” or “Your” shall mean Patterson Intellectual Property Law, P.C., its
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`predecessors and successors, and its present and former partners, associates, or other attorneys.
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`2.
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`“Wirtgen America” shall mean Plaintiff and Counterclaim-Defendant Wirtgen
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`America, Inc. in Wirtgen America, Inc. v. Caterpillar Inc., C.A. No. 17-770-JDW (D. Del.).
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`3.
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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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`4.
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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 an appropriate privilege log.
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`5.
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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 matter, a copy of which
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`is provided with the Subpoena.
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`REQUESTS FOR PRODUCTION
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`1.
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`All Documents related to Wirtgen GmbH’s decision to assign Wirtgen America’s
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`Asserted Patents to Wirtgen America.
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`2.
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`All Documents related to the timing of the assignment of Wirtgen America’s
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`Asserted Patents from Wirtgen GmbH to Wirtgen America.
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`3.
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`All Documents related to the prosecution of U.S. Patent No. 9,010,871, including
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`the prosecution of U.S. Patent Application Nos. 13/351,305 and 11/991,846.
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`
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`1
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`

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`Case 1:17-cv-00770-JDW-MPT Document 133 Filed 01/06/23 Page 7 of 8 PageID #: 14755
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`4.
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`All Documents related to the prosecution of U.S. Patent No. 9,656,530, including
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`the prosecution of U.S. Patent Application No. 14/683,273.
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`5.
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`All Documents related to the prosecution of U.S. Patent No. RE48,268, including
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`the prosecution of U.S. Patent Application Nos. 12/985,400 and 11/918,247.
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`6.
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`All Documents related to the prosecution of U.S. Patent Nos. 9,879,390 and
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`9,879,391 including the prosecution of U.S. Patent Application Nos. 15/376,023, 14/341,191,
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`13/557,729, and 12/003,094.
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`7.
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`8.
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`All Documents related to Wirtgen GmbH’s IP strategy for the U.S.
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`All Documents related to Your knowledge, analysis, and commercial awareness of
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`Caterpillar cold planers.
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`DEPOSITION TOPICS
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`1.
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`The authenticity and business record status of all Documents produced in response
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`to this Subpoena.
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`2.
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`Wirtgen GmbH’s decision to assign Wirtgen America’s Asserted Patents to
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`Wirtgen America.
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`3.
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`The timing of the assignment of Wirtgen America’s Asserted Patents from Wirtgen
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`GmbH to Wirtgen America.
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`4.
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`The prosecution of U.S. Patent No. 9,010,871, including the prosecution of U.S.
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`Patent Application Nos. 13/351,305 and 11/991,846.
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`5.
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`The prosecution of U.S. Patent No. 9,656,530, including the prosecution of U.S.
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`Patent Application No. 14/683,273.
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`6.
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`The prosecution of U.S. Patent No. RE48,268, including the prosecution of U.S.
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`Patent Application Nos. 12/985,400 and 11/918,247.
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`2
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`Case 1:17-cv-00770-JDW-MPT Document 133 Filed 01/06/23 Page 8 of 8 PageID #: 14756
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`7.
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`The prosecution of U.S. Patent Nos. 9,879,390 and 9,879,391 including the
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`prosecution of U.S. Patent Application Nos. 15/376,023, 14/341,191, 13/557,729, and 12/003,094.
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`8.
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`9.
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`Wirtgen GmbH’s IP strategy for the U.S.
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`Your knowledge, analysis, and commercial awareness of Caterpillar cold planers.
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`3
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