Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 1 of 11 PageID #: 14905
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`IN THE UNITED STATES DISTRICT COURT
`FOR 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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`Plaintiff/Counterclaim-Defendant,
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`v.
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`CATERPILLAR INC.,
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`Defendant/Counterclaim-Plaintiff.
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`NON-PARTY CATERPILLAR TRIMBLE CONTROL TECHNOLOGIES LLC’S
`OPPOSITION TO PLAINTIFF/COUNTERCLAIM-DEFENDANT’S MOTION TO
`COMPEL COMPLIANCE WITH THIRD-PARTY SUBPOENA
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`

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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 2 of 11 PageID #: 14906
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`I.
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`INTRODUCTION
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`Wirtgen America, Inc.’s (“Wirtgen’s”) Motion to Compel (the “Motion”), requesting that
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`non-party Caterpillar Trimble Control Technologies LLC (“CTCT”) produce all documents
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`responsive to Wirtgen’s Requests for Production should be denied as moot, premature, and
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`overbroad. Wirtgen’s Motion reflects a failure to cooperate in the discovery process, review
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`responsive documents and source code, and seek narrowly tailored relief from a third party. Fact
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`discovery is ongoing; CTCT has already agreed to produce all relevant, responsive materials;
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`hundreds of CTCT-related documents have already been produced; and CTCT has further
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`offered to meet and confer regarding any category of information that Wirtgen believes is
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`missing from the current production. For the reasons stated below, Wirtgen’s Motion should be
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`denied as moot, premature, and overbroad.
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`II.
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`PROCEDURAL BACKGROUND
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`On June 16, 2017, Wirtgen filed its original Complaint, asserting infringement of 12
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`patents. D.I. 1. On August 28, 2017, pending resolution of a related ITC matter, the parties
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`jointly moved for a stay of this action. After resolution of certain ITC proceedings, the stay in
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`this action was lifted on May 27, 2021. On September 2, 2021, Wirtgen filed its Amended
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`Complaint, asserting infringement of 13 patents. D.I. 33. On October 14, 2021, Caterpillar Inc.
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`(“Caterpillar”) filed its Answer and Counterclaims, asserting three counts of patent infringement
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`and one count of prosecution laches. D.I. 43. On September 1, 2022, Wirtgen served CTCT
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`with a third-party subpoena in this Action. D.I. 97. Fact discovery is set to close on March 31,
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`2023. D.I. 88.
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`1
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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 3 of 11 PageID #: 14907
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`III.
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`FACTUAL BACKGROUND
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`A.
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`CTCT
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`CTCT, a fifty-fifty joint venture owned by Caterpillar and Trimble Inc., develops grade
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`control systems, which are sold to the two parent companies. CTCT developed the “Grade and
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`Slope” control system for certain accused Caterpillar cold planer machines. The “Grade and
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`Slope” control system refers generally to a system that allows operators to easily set up grade as
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`well as quickly and accurately change cut depth and/or percentage of slope during operation.
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`The system encompasses an expansive number of operations and functionalities that have
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`nothing to do with the accused features.
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`B.
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`Subpoenas on CTCT
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`In a prior ITC investigation involving the parties, Certain Road Milling Machines and
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`Components Thereof, Inv. No. 337-TA-1067 (the “1067 Investigation”), Wirtgen served a
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`subpoena duces tecum and ad testificandum on CTCT, and a CTCT employee was called as a
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`witness by Caterpillar at an evidentiary hearing. Opp., Ex. 1 (Wirtgen’s Application for
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`Subpoena Duces Tecum and Ad Testificandum to CTCT in the 1067 Investigation). On
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`September 1, 2022, Wirtgen served a subpoena on CTCT in this Action, including nearly
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`identical requests for production as those in the prior subpoena. Compare Motion, Ex. 1 (District
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`Court subpoena) with Opp., Ex. 1 (ITC subpoena). On October 17, 2022, CTCT served its initial
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`objections and responses. Motion, Ex. 2.
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`C.
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`CTCT’s Extensive Meet and Confer Efforts
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`At every juncture, and in connection with its exhaustive meet and confer efforts, CTCT
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`has agreed to provide the materials requested by Wirtgen. First, based on representations from
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`Wirtgen, CTCT initially agreed to produce the entire universe of materials previously produced
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`2
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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 4 of 11 PageID #: 14908
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`in the 1067 Investigation in response to the nearly identical subpoena. See Opp., Ex. 2 (Sept. 7,
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`2022 Email from P. Ainsworth to J. Yoon et al.) (“As a starting point, if CTCT would agree that
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`documents produced in the ITC case are available here, that would be helpful and help move
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`things along.”).
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`During the parties’ first meet and confer call on October 26, and as noted in Wirtgen’s
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`follow-up correspondence, Wirtgen then claimed that “Caterpillar relied upon certain CTCT
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`generated documents during two separate Part 177 Ruling Request proceedings before Customs”
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`that were not produced in the 1067 Investigation. Motion, Ex. 4 at 12. In response, CTCT
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`determined that the CTCT materials referenced in the 177 proceedings were produced in this
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`Action. Nonetheless, out of an abundance of caution, CTCT asked Wirtgen to identify those
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`materials with more specificity, as Wirtgen clearly had certain documents in mind. See Motion,
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`Ex. 4 at 7. Rather than offering any guidance, Wirtgen accused CTCT of “feign[ing] ignorance
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`of what it has in its possession.” Id. Such positions taken by Wirtgen are characteristic of how it
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`has approached its meet and confer obligations from the start.
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`At that same October 26 meet and confer, when asked what specific categories of
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`documents Wirtgen believes should be produced, Wirtgen indicated that it needed design-related
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`documentation to understand the source code. See Motion at 5 (“The subpoena seeks . . .
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`documents that may help decipher and understand the source code.”). CTCT then further
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`inquired into the design-related documents Wirtgen sought, including by speaking with CTCT
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`and Caterpillar employees, who further confirmed that they believed that responsive and relevant
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`materials were already in the production.
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`3
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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 5 of 11 PageID #: 14909
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`On November 10, CTCT informed Wirtgen that CTCT “Grade and Slope” code had been
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`provided for inspection.1 Motion, Ex. 4 at 6. To date, and months later, Wirtgen still has never
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`inspected the source code it both claimed was absent from the production and necessary for its
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`defense. The parties met and conferred again the next day, during which Wirtgen noted that it
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`needed CTCT documents “to prepare for inspections of Caterpillar’s source code.” Id. at 5. But
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`it appears that software specifications associated with the source code, which may have been
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`what Wirtgen needed to understand the code, also has been produced in the Action.
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`Accordingly, on November 20, CTCT conveyed this information to Wirtgen—including by
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`citing to an example of a software specification—and encouraged Wirtgen to review
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`Caterpillar’s production, inspect the source code, and follow-up with any questions. See id. at 4.
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`To further demonstrate CTCT’s willingness to cooperate should Wirtgen need anything
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`further, CTCT amended its objections and responses on November 22, agreeing to “produce
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`reasonably accessible, non-privileged documents, communications, and things in CTCT’s
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`possession, custody, or control that are relevant to this Action and that are not duplicative of
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`documents, communications, and things already produced by the parties to this Action.” Motion,
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`Ex. 3. On December 20, almost a month after CTCT served its amended objections and
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`responses, Wirtgen resurfaced its demand for responsive materials. See Motion, Ex. 4 at 3.
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`CTCT reiterated that it believed reasonably accessible, relevant materials had already been
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`produced in the Action, and urged Wirtgen to review the production and let CTCT know if
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`Wirtgen needed additional materials. See id. at 2. In response, Wirtgen stated that it planned to
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`file a motion to compel. See id. This Motion followed.
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`1 The source code provided by Caterpillar included all of the relevant and responsive source code
`from CTCT.
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`4
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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 6 of 11 PageID #: 14910
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`IV.
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`ARGUMENT
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`A.
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`Wirtgen’s Motion Is Moot
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`As an initial matter, Wirtgen’s Motion is moot. There is nothing for the Court to order at
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`this time. Fact discovery remains open, and CTCT already agreed to provide all “reasonably
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`accessible, non-privileged documents, communications, and things in CTCT’s possession,
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`custody, or control that are relevant to this Action and that are not duplicative of documents,
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`communications, and things already produced by the parties to this Action.” Motion, Ex. 3.
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`Indeed, CTCT has expended considerable time and resources to comply with its
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`discovery obligations as a non-party and provide Wirtgen the documents it needs. Upon learning
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`that Wirtgen needed technical documentation to understand the source code, CTCT set up
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`several calls with CTCT and Caterpillar employees to determine what documentation existed and
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`where it was located. Through its investigation, CTCT ascertained that technical and design-
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`related documentation for the source code, like software specifications, had already been
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`produced in the Action, and promptly notified Wirtgen of that fact. It is unclear whether Wirtgen
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`has taken CTCT’s suggestion to review Caterpillar’s production and inspect the source code. If
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`it had, among other information, Wirtgen would already find in the production CTCT source
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`code, design documents, and related materials, including:2
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` Sycamore Project – CAT Grade Control Tier IV Final Cold Planer.3
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`CAT_00054732.
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`2 The CTCT documents described below were authorized by CTCT for Caterpillar to produce.
`To compel CTCT to simply reproduce the same documents with a CTCT Bates stamp would
`raise form over substance and be wasteful and inefficient.
`3 The development project for the Grade & Slope system was known internally at CTCT as the
`Sycamore Project.
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`5
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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 7 of 11 PageID #: 14911
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` Sycamore WTB.4 CAT_00054753.
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` Marketing Requirements Document. CAT_00054734.
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` Sycamore WTB Version 1.2. CAT-770_001209.
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` Tier 4f Cold Planer – Grade & Slope Interfaces. CAT-770_001448.
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` Tier 4f Cold Planers G&S System Can Protocol. CAT_00042435.
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` Project Status Report. CAT_00042016.
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` Sycamore Update – Cat Grade Control for Tier 4F Cold Planers.
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`CAT_00042147.
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` Sycamore Systems Engineering To-do. CAT_00042502.
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`CTCT has also remained open to further discussion if Wirtgen found that it needed additional
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`materials to understand the source code or the design documents.
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`Although it has not bothered to review the relevant source code, Wirtgen appears to be
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`complaining about the scope of information produced to date. Fact discovery is ongoing, and
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`yet, Wirtgen has failed to specify what it believes to be deficient. As discussed above, both
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`technical and design documents related to CTCT’s Grade and Slope system have been produced.
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`Should Wirtgen specifically identify what it believes is missing from the existing productions
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`and/or hindering its inspection of the source code, CTCT remains open to considering Wirtgen’s
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`informal requests.5
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`4 “WTB” stands for “What to Build.”
`5 Wirtgen cites Software Rts. Archive, LLC v. Google Inc., No. 07-CV-511, 2009 WL 1438249
`(D. Del. May 21, 2009), throughout its Motion. That case is entirely distinguishable. In
`Software, the subpoenaed non-parties were direct and indirect parent entities of a party in the
`underlying action, and therefore had a financial interest in the outcome of the case. Id. at *1-2.
`Here, CTCT has no similar financial interest in the case. Moreover, there is no indication in
`Software that relevant documents had already been produced in the action.
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`6
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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 8 of 11 PageID #: 14912
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`B.
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`Wirtgen’s Requests and Topics Are Overly Broad and Unduly Burdensome
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`Although during meet and confer discussions Wirtgen has focused almost exclusively on
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`source code and related documentation, to the extent Wirtgen now seeks CTCT’s compliance
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`with the full scope of Wirtgen’s subpoena, CTCT objects to the subpoena as overly broad and
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`unduly burdensome. Wirtgen argues that CTCT “designed the [] software that performs several
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`infringing functions of Caterpillar’s machines,” and therefore cannot “contest the relevance of
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`Wirtgen’s subpoena requests and topics.” Motion at 2. But CTCT believes it has already
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`produced the relevant materials, and “[r]equests to non-parties” must “be narrowly drawn to
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`meet specific needs for information.” Convolve, Inc. v. Dell, Inc., No. C 10-80071 WHA, 2011
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`WL 1766486, at *2 (N.D. Cal. May 9, 2011) (emphasis added); see also Verisign, Inc. v.
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`XYZ.com, LLC, No. CV15-MC-175-RGA-MPT, 2015 WL 7960976, at *1 (D. Del. Dec. 4, 2015)
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`(“The standards for nonparty discovery . . . require a stronger showing of relevance than for
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`simple party discovery.”). Wirtgen’s subpoena seeks information outside the scope of this
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`Action, which would be unduly burdensome to a party much less a non-party, and is thus
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`improper.
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`For example, several of Wirtgen’s requests seek documents concerning any “control
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`system . . . capable of being implemented in” Caterpillar cold planer machines, which would
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`include control systems that were never actually implemented, or contemplated to be
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`implemented, in any Caterpillar cold planer machine. See Motion, Ex. 3 at 8-13. Moreover,
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`even if Wirtgen had defined the “control system” as the Grade and Slope system, that control
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`system is associated with a broad array of machine features, including numerous operations and
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`functionalities that are not within the purview of this Action. Wirtgen is not entitled to
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`documents concerning the Grade and Slope system that have no bearing on the accused features.
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`7
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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 9 of 11 PageID #: 14913
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`Not only are the requests facially overbroad, but Wirtgen has also been wholly
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`uncooperative during the parties’ meet and confer discussions. At every turn, Wirtgen has been
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`unreasonable and aggressive, contravening its obligations pursuant to Federal Rule of Civil
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`Procedure 45(d)(1) to “take reasonable steps to avoid imposing undue burden or expense on a
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`person subject to the subpoena.” Even when CTCT asked Wirtgen to identify the 177
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`proceeding materials that it claimed CTCT should have produced, Wirtgen inexplicably refused,
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`even though it clearly had specific materials in mind, and CTCT was eager to provide them to
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`Wirtgen.
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`Because Wirtgen’s requests are not reasonably tailored to its claims or defenses, and
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`because Wirtgen has refused to meet and confer in good faith, the Court should deny Wirtgen’s
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`motion to compel compliance with the full subpoena.
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`V.
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`CONCLUSION
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`For the foregoing reasons, non-party CTCT respectfully requests that the Court deny
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`Wirtgen’s Motion to Compel. CTCT remains willing to meet and confer with Wirtgen.
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`8
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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 10 of 11 PageID #: 14914
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`Wilson Sonsini Goodrich & Rosati, P.C.
`
`/s/ Ian R. Liston
`Ian R. Liston (DE Bar ID #5507)
`Jennifer A. Ward (DE Bar ID #6476)
`222 Delaware Ave, Suite 800
`Wilmington DE 19807
`Tel: (302) 304-7600
`iliston@wsgr.com
`jward@wsgr.com
`
`Attorneys for Non-party Caterpillar Trimble
`Control Technologies LLC
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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
`jyoon@wsgr.com
`rsmith@wsgr.com
`
`Lucy Yen
`Wilson Sonsini Goodrich & Rosati, P.C.
`1301 Avenue of the Americas, 40th
`Floor
`New York, NY 10019
`Tel: (212) 999-5800
`lyen@wsgr.com
`
`Dated: January 23, 2023
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`9
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`Case 1:17-cv-00770-JDW-MPT Document 137 Filed 01/23/23 Page 11 of 11 PageID #: 14915
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 23, 2023, a copy of the foregoing document was served via
`electronic mail upon all counsel of record.
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`/s/ Ian R. Liston
`Ian R. Liston
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`10
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