Case 1:17-cv-00770-JDW-MPT Document 134 Filed 01/09/23 Page 1 of 8 PageID #: 14757
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`WIRTGEN AMERICA, INC.
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`Plaintiff/Counterclaim-Defendant,
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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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`CATERPILLAR INC.
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`v.
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`Defendant/Counterclaim-Plaintiff.
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`WIRTGEN AMERICA, INC.’S MOTION TO COMPEL COMPLIANCE WITH
`THIRD-PARTY SUBPOENA TO CATERPILLAR TRIMBLE CONTROL
`TECHNOLOGIES LLC
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`Case 1:17-cv-00770-JDW-MPT Document 134 Filed 01/09/23 Page 2 of 8 PageID #: 14758
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`I.
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`INTRODUCTION
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`Wirtgen America, Inc. (“Wirtgen”) seeks an order compelling third party Caterpillar
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`Trimble Control Technologies LLC (“CTCT”) to comply with a subpoena properly served over
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`four months ago.1 Despite repeated efforts to meet-and-confer and multiple extensions, CTCT has
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`refused to produce even a single document from its files. Instead, CTCT asserts that any responsive
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`materials in its possession were produced by Caterpillar and refuses to produce any documents
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`unless Wirtgen identifies documents that are uniquely in CTCT’s possession. Ex. 4 (Dec. 28 Email
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`from L. Yen). This is not proper compliance with a subpoena by a third party, particularly one so
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`closely affiliated with Caterpillar, Inc. (“Caterpillar”). Now, more than four months after service
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`of Wirtgen’s subpoena, CTCT has not produced a single document.
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`II.
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`BACKGROUND
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`CTCT is no stranger to the ongoing dispute regarding Caterpillar’s infringement of
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`Wirtgen’s patented technology. CTCT was formerly involved in Certain Road Milling Machines
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`and Components Thereof, Inv. No. 337-TA-1067 (the “1067 Investigation”), because of its direct
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`role in developing machine control and guidance systems for Caterpillar’s infringing machines. It
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`actively supported Caterpillar in the parties’ ongoing dispute, including by providing supportive
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`witness testimony at the ITC evidentiary hearing. After the ITC issued a limited exclusion order,
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`Caterpillar relied on CTCT documents in two administrative ruling requests to U.S. Customs and
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`Border Protection (“CBP”) concerning purported machine redesigns. In view of this history of
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`involvement, Wirtgen filed and served its Notice of Subpoena to CTCT in this proceeding on
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`September 1, 2022. See Ex. 1.
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`1 Although the subpoena compels compliance in the Southern District of Ohio, CTCT has
`consented to this Court resolving this discovery dispute.
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`1
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`On September 7, 2022, Caterpillar’s counsel advised that it would also be representing
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`CTCT in connection with the subpoena. Counsel requested a 30-day extension to which Wirtgen
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`agreed. On October 17, 2022, CTCT served initial objections and responses. See Ex. 2. CTCT
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`indicated in response to all requests that it would produce only the documents it previously
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`produced in the 1067 Investigation. See, e.g., Ex. 2 at 5-13. It also refused to make a witness
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`available and improperly offered to “meet-and-confer” instead. See, e.g., Ex. 2 at 14-22.
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`The parties have held multiple meet-and-confers, exchanged numerous emails, and remain
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`at an impasse over CTCT’s refusal to produce any documents responsive to Wirtgen’s subpoena.
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`On November 22, CTCT served amended objections and responses in an apparent attempt to shore
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`up its deficient responses. See Ex. 3. Yet despite promising to produce responsive documents, none
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`have been forthcoming. On December 28, CTCT asserted that before it would produce any
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`discovery at all, Wirtgen should first “review Caterpillar’s production and inspect the source code”
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`and then if Wirtgen “still need[ed] additional materials from CTCT that [Wirtgen] believe[s] are
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`in [CTCT’s] unique possession, [CTCT] would be open to further discussion.” Ex. 4.
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`III. ARGUMENT
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`A. Wirtgen’s requests and topics are relevant to issues in this proceeding.
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`Wirtgen’s subpoena seeks information pertaining to CTCT’s relationship with Caterpillar
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`regarding Wirtgen’s patented technology, CTCT’s development efforts with respect to
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`Caterpillar’s infringing cold planer machines, the CTCT personnel involved in such efforts, and
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`technical documentation relating to the same. See Ex. 1. CTCT does not—and cannot—seriously
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`contest the relevance of Wirtgen’s subpoena requests and topics because it designed the very
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`software that performs several infringing functions of Caterpillar’s machines. Given its role,
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`there is information uniquely in CTCT’s possession that is directly relevant to issues of
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`2
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`Case 1:17-cv-00770-JDW-MPT Document 134 Filed 01/09/23 Page 4 of 8 PageID #: 14760
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`infringement, copying, and willfulness in this case.
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`B.
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`Caterpillar improperly uses CTCT as a discovery sword and shield.
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`Caterpillar capitalizes upon the joint venture status of CTCT to gain an improper discovery
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`advantage. When Caterpillar needs litigation support, it leverages its ownership interest in CTCT
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`to acquire the information it needs. But when Wirtgen seeks discovery to prosecute its case, CTCT
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`pretends to be an uninformed “non-party.” Yet Caterpillar Trimble Control Technologies is a joint
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`venture between Caterpillar and Trimble Inc., a fact that is material to its obligation to provide
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`discovery in this case. See, e.g., Software Rights Archive, LLC v. Google Inc., 2009 WL 1438249,
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`*2 (D. Del. 2009). The fact that Caterpillar and CTCT share counsel is further evidence of their
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`close ties. Indeed, CTCT was created in part to develop machine control and guidance systems for
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`Caterpillar’s machines. “[T]his is not a situation . . . where a non-party is burdened by a subpoena
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`relating to litigation to which it is has no or only a peripheral interest.” Software, 2009 WL at *2
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`(quotation omitted).
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`CTCT has actively supported Caterpillar throughout litigation with Wirtgen. In the 1067
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`Investigation, CTCT’s Paving Industry Manager—Mark Tarvin—voluntarily testified on
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`Caterpillar’s behalf without the need for a trial subpoena. CTCT also strategically provided
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`documentation used by Caterpillar to make various non-infringement positions throughout the
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`parties’ dispute. Given the dynamic between Caterpillar and CTCT, Wirtgen has strong reason to
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`believe CTCT is in possession of unproduced documents relevant to the matters at issue in this
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`case. As one concrete example, after the ITC found that Caterpillar infringed multiple Wirtgen
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`patents, Caterpillar submitted two separate administrative ruling requests to CBP asserting that it
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`had designed around Wirtgen’s patents and sought relief from the ITC’s remedial orders. Both
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`requests were supported by documents prepared by CTCT.
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`3
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`Now, in this proceeding, CTCT feigns ignorance of the potentially responsive documents
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`in its possession, offering a number of unconvincing justifications for its pretense. They blame
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`company turnover at CTCT, claiming no one seems to know what Wirtgen has in mind. But
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`Caterpillar relied on new CTCT documents before CBP only a few months ago. CTCT’s continual
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`references to the obstacles presented by the number of patents and features at issue in this
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`proceeding similarly ring hollow. CTCT is represented by the same counsel as Caterpillar who are
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`(1) intimately familiar with the features at issue in this case, and (2) aware that several of the
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`patents are overlapping. Rather than evaluating and responding to each of Wirtgen’s requests for
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`production, CTCT demanded that Wirtgen identify the specific documents it needs by title,
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`expecting Wirtgen to guess blindly. Wirtgen’s subpoena conveyed the types of information it seeks
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`to the best of its ability. CTCT is now “subject to the same scope of discovery under [Rule 45] as
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`[it] would be as a party to whom a request is addressed pursuant to Rule 34.” Software, 2009 WL
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`at *2 (quoting Advisory Committee Note to Fed. R. Civ. Proc. 45).
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`C.
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`CTCT has not produced a single document in this proceeding.
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`Against this backdrop, CTCT has not produced a single document in response to Wirtgen’s
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`subpoena despite promising documents months ago. See Ex. 3. Nor has CTCT provided any insight
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`regarding the nature of its search for responsive materials, thereby preventing Wirtgen from
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`evaluating the sufficiency of CTCT’s efforts to comply with the subpoena. CTCT unilaterally
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`claims to have conducted a thorough search, and yet it has produced nothing. Even after indicating
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`it would produce the previously produced documents from the 1067 Investigation, see Ex. 2, CTCT
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`has not done so.2 Even so, these outdated documents are not adequately responsive to Wirtgen’s
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`2 Documents produced by CTCT in the 1067 Investigation were produced subject to a third-party
`subpoena and, as a consequence, the ITC protective order prohibits their use outside of that
`proceeding. The protective order negotiated by the parties in this case, and entered by the Court,
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`Case 1:17-cv-00770-JDW-MPT Document 134 Filed 01/09/23 Page 6 of 8 PageID #: 14762
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`subpoena in this proceeding. They were produced roughly five (5) years ago. There are substantial
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`differences in scope between this district court action and the 1067 Investigation, including
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`additional asserted patents, Caterpillar’s “redesigned” machines, and revisions to the software
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`CTCT developed. Curiously, however, CTCT has failed to produce any documents related to these
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`redesign efforts.
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`The source code that Caterpillar provided for inspection does not satisfy CTCT’s
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`obligation to respond to Wirtgen’s subpoena. The subpoena seeks several other important
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`categories of information apart from source code, including documents that may help decipher and
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`understand the source code. See Ex. 1. And even if Caterpillar has produced some documents it
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`obtained from CTCT, “production of documents [from CTCT] is appropriate where those
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`documents constitute a ‘non-well-defined set’ ‘whose completeness is not readily verifiable.’”
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`Software, 2009 WL at *2 (quotation omitted). In other words, (1) CTCT’s separate production in
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`the 1067 Investigation, (2) Caterpillar’s history of opportunistic reliance on previously unproduced
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`CTCT documents, and (3) Caterpillar’s own insistence as a joint venture partner that CTCT is a
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`“non-party,” all suggest that CTCT maintains a unique set of responsive documents.
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`“[C]ompleteness of discovery is more likely to be achieved” by “allowing for discovery from both”
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`Caterpillar and CTCT. Software, 2009 WL at *2.
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`IV. CONCLUSION
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`For the foregoing reasons, the Court should grant Wirtgen’s motion to compel CTCT to
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`search for and produce all non-privileged documents in CTCT’s possession that are responsive to
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`Wirtgen’s Requests for Production within 14 days of resolution of Wirtgen’s motion to compel.
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`acknowledges these restrictions. See D.I. 52 § III.F.
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`5
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`Case 1:17-cv-00770-JDW-MPT Document 134 Filed 01/09/23 Page 7 of 8 PageID #: 14763
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
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`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
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`Attorneys for Wirtgen America, Inc.
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`Dated: January 9, 2023
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`OF COUNSEL:
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Dominic A. Rota
`Mark A. Kilgore
`PATTERSON INTELLECTUAL
`PROPERTY LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`dar@iplawgroup.com
`mak@iplawgroup.com
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`- and -
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`Daniel E. Yonan
`Paul A. Ainsworth
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1100 New York Ave., NW, Suite 600
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
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`Case 1:17-cv-00770-JDW-MPT Document 134 Filed 01/09/23 Page 8 of 8 PageID #: 14764
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`CERTIFICATION PURSUANT TO D. DEL. LR 7.1.1
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`Pursuant to Rule 7.1.1 of the Local Rules of Civil Practice and Procedure of the United
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`States District Court for the District of Delaware, I hereby certify that the parties have made
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`good faith, reasonable efforts to resolve the matters set forth in this motion, but were unable to
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`do so. These efforts include considerable written correspondence on the subjects of this motion.
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`These efforts also include multiple meet and confer teleconferences where counsel for the parties
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`verbally communicated to try to resolve the matters set forth in this motion, one of which
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`involved Delaware counsel for both parties.
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`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
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