Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 1 of 48 PageID #:
`14916
`
`Exhibit 1
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`

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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 2 of 48 PageID #:
`14917
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`In the Matter of
`
`
`
`CERTAIN ROAD MILLING MACHINES
`AND COMPONENTS THEREOF
`
`Investigation No. 337-TA-1067
`
`
`
`COMPLAINANT WIRTGEN AMERICA’S APPLICATION FOR
`SUBPOENA DUCES TECUM AND AD TESTIFICANDUM TO
`CATERPILLAR TRIMBLE CONTROL TECHNOLOGIES LLC
`
`Pursuant to 19 C.F.R. § 210.32 and Ground Rule 1(i), Complainant Wirtgen America,
`
`Inc. (“Wirtgen America”) hereby request that the Administrative Law Judge issue a subpoena
`
`duces tecum and ad testificandum directed to:
`
`Caterpillar Trimble Control Technologies LLC (“CTCT”)
`5475 Kellenburger Road
`Dayton, OH 45424
`
`Wirtgen America believes that CTCT is in possession of information relevant to this
`
`Investigation. The documents and testimony requested in Attachments B and C are relevant to
`
`this Investigation because Wirtgen America understands that Respondents Caterpillar Prodotti
`
`Stradali S.r.L., Caterpillar Americas CV, Caterpillar Paving Products, Inc., and Caterpillar Inc.
`
`(collectively, “Caterpillar”) conducts engineering work through CTCT—a joint venture owned
`
`by Caterpillar Inc. and Trimble—relating to the accused features on the accused products in this
`
`Investigation. For example, publicly available information explains that this joint venture will
`
`use “computing and software technologies,” that it “will develop machine control products,” and
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 3 of 48 PageID #:
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`that “Caterpillar will offer products as a factory-installed option.”1 Moreover, documents
`
`produced in this Investigation confirm that CTCT technology is included in the accused
`
`products. Information relating to the accused products’ control system is relevant to Wirtgen
`
`America’s infringement allegations relating to at least U.S. Patent Nos. 7,530,641 (the “’641
`
`Patent”), 9,656,530 (the “’530 Patent”), and 9,644,340 (the “’340 Patent”). For example, claim 1
`
`of the ’641 Patent requires that the milling drum of an automotive construction machine “is
`
`capable of being raised” and “is capable of being moved into a raised position,” which would
`
`require the use of a control system. Claim 1 of the ’530 Patent requires that “a working drum [is]
`
`supported from the machine frame,” which would require the use of a control system. Claim 1 of
`
`the ’340 Patent requires that “the milling drum [is] fixed relative to the machine frame,” which
`
`would require the use of a control system. Therefore, CTCT is believed to be in possession of
`
`documents and testimony at least relevant to the evaluation of infringement.
`
`Furthermore, the topics identified in Attachments B and C of the subpoena are narrowly
`
`tailored to address relevant subject matter; namely, the engineering work and testing that CTCT
`
`has performed on the accused products.
`
`For the reasons set forth above, Wirtgen America respectfully requests that its application
`
`for issuance of a subpoena duces tecum and ad testificandum be granted and the attached
`
`subpoena be issued. Wirtgen America will serve the subpoena on Caterpillar Trimble Control
`
`Technologies LLC by overnight delivery, if not sooner, or by any other method of service
`
`specified by the Administrative Law Judge. The proposed subpoena is attached to this
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`application.
`
`
`1 See Trimble and Caterpillar Create Joint Venture for Machine Control Technologies,
`https://www.pobonline.com/articles/89512-trimble-and-caterpillar-create-joint-venture-for-
`machine-control-technologies (Sep. 10, 2001).
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 4 of 48 PageID #:
`14919
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`Dated: November 29, 2017 (cid:9)
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`Respect iiy subnitted,
`
`USEL FOR COMPLAINANT WIRTGEN AMERICA, INC.
`
`Daniel E. Yonan
`Michael E. Joffre
`Paul A. Ainsworth
`Jonathan Tuminaro
`Kyle E. Conklin
`Ralph W. Powers III
`STERNE, KESSLER, GOLDSTEIN & Fox, P.L.L.C.
`1100 New York Avenue
`Washington, DC 20005
`(202) 371-2600
`
`John F. Triggs
`Ryan D. Levy
`William E. Sekyi
`Seth R. Ogden
`PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
`Roundabout Plaza
`1600 Division Street, Suite 500
`Nashville, TN 37203
`(615) 242-2400
`
`INVESTIGATION NO. 337-TA-1067 (cid:9)
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`-3-
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFJCANDUMTO CTCT
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`

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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 5 of 48 PageID #:
`14920
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`In the Matter of
`
`
`
`CERTAIN ROAD MILLING MACHINES
`AND COMPONENTS THEREOF
`
`Investigation No. 337-TA-1067
`
`
`
`
`
`SUBPOENA DUCES TECUM AND AD TESTIFICANDUM
`
`TO: Caterpillar Trimble Control Technologies LLC
`5475 Kellenburger Road
`Dayton, OH 45424
`
`
`TAKE NOTICE: By authority of section 337 of the Tariff Act of 1930, as amended (19
`
`U.S.C. § 1337), 5 U.S.C. § 556(c)(2), and pursuant to 19 C.F.R. § 210.32 of the Rules of Practice
`
`and Procedure of the United States International Trade Commission, and upon an application for
`
`subpoena made by Complainant Wirtgen America, Inc. (“Wirtgen America”),
`
`
`
`YOU ARE HEREBY ORDERED to produce at the offices of Sterne, Kessler, Goldstein
`
`& Fox P.L.L.C., 1100 New York Ave. N.W., Suite 600, Washington, D.C. 20005, on December
`
`11, 2017, or at such other time and place agreed upon, all of the documents, communications,
`
`and things in Caterpillar Trimble Control Technologies LLC’s possession, custody, or control
`
`that are listed and described in Attachment B hereto.
`
`
`
`If production of any document listed and described in Attachment B hereto is withheld on
`
`the basis of a claim of privilege, each withheld document shall be separately identified in a
`
`privileged-document list. The privileged-document list must identify each document separately,
`
`specifying for each document at least: (1) the date; (2) author(s)/sender(s); (3) recipient(s),
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 6 of 48 PageID #:
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`including copy recipients; and (4) general subject matter of the document. The sender(s) and
`
`recipient(s) shall be identified by position and entity (corporation or firm, etc.) with which they
`
`are employed or associated. If the sender or the recipient is an attorney or a foreign patent agent,
`
`he or she shall be so identified. The type of privilege claimed must also be stated, together with a
`
`certification that all elements of the claimed privilege have been met and have not been waived
`
`with respect to each document.
`
`If any of the documents or things listed and described in Attachments B-C hereto are
`
`considered "confidential business information," as that term is defined in the Protective Order
`
`attached hereto (Attachment D), such documents or things shall be produced subject to the terms
`
`and provisions of the Protective Order.
`
`Any motion to limit or quash this subpoena shall be filed within
`
`ten (10) days after the
`
`receipt hereof. At the time of filing of any motion concerning this subpoena, two courtesy copies
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`shall be served concurrently on the Administrative Law Judge at her office.
`
`IN WITNESS WHEREOF the undersigned of the United States International
`Trade Commission has hereunto set her hand and caused the seal of said United
`States International Trade Commission to be affixed at Washington, D.C. on this
`3th day of November 2017
`
`David P. Shaw
`Administrative Law Judge
`United States International Trade Commission
`
`INVESTIGATION NO. 337-TA-1067 (cid:9)
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`-2-
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICAND UM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 7 of 48 PageID #:
`14922
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`Attachment “A”
`
`DEFINITIONS
`
`
`
`The following definitions shall apply to the Requests below:
`
`1.
`
`The terms “CTCT,” “You,” and “Your” shall refer to Caterpillar Trimble Control
`
`Technologies LLC, or any of their predecessors, domestic or foreign divisions, departments,
`
`subsidiaries, parents, affiliates, and other legal entities that are wholly or partially owned or
`
`controlled by CTCT, either directly or indirectly, and each of their respective present or former
`
`directors, officers, employees, partners, agents, consultants, experts, representatives, and
`
`attorneys, as well as all other individuals or business entities in the employ of or otherwise
`
`acting on behalf of CTCT.
`
`2.
`
`The terms “Caterpillar,” and “Respondent(s)” shall refer to Caterpillar Bitelli
`
`SpA, Caterpillar Prodotti Stradali S.r.L., Caterpillar Americas CV, Caterpillar Paving Products,
`
`Inc., and Caterpillar Inc., or any of their predecessors, domestic or foreign divisions,
`
`departments, subsidiaries, parents, affiliates, and other legal entities that are wholly or partially
`
`owned or controlled by Respondents, either directly or indirectly, and each of their respective
`
`present or former directors, officers, employees, partners, agents, consultants, experts,
`
`representatives, and attorneys, as well as all other individuals or business entities in the employ
`
`of or otherwise acting on behalf of Caterpillar.
`
`3.
`
`The terms “Complainant” and “Wirtgen America” shall refer to Complainant
`
`Wirtgen America, Inc. and any of its predecessors, domestic or foreign divisions, departments,
`
`subsidiaries, parents, affiliates, or present or former officers, directors, employees, agents,
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`representatives, or entities acting in consort, joint-venture or partnership relationship with
`
`Wirtgen America, Inc.
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 8 of 48 PageID #:
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`4.
`
`The term “third party” or “third parties” means any person or entity other than
`
`Wirtgen America and Caterpillar.
`
`5.
`
`6.
`
`The term “person(s)” means any natural person or group of natural persons.
`
`The terms “entity” or “entities” mean any firm, association, organization,
`
`partnership, business, trust, corporation, proprietorship, scientific or academic establishment,
`
`governmental agency, or organizational unit thereof, including U.S. and foreign.
`
`7.
`
`The term “Asserted Patent(s)” shall mean U.S. Patent Nos. 9,644,340 (“the ’340
`
`Patent”), 9,624,628 (“the ’628 Patent”), 9,656,530 (“the ’530 Patent”), 7,530,641 (“the ’641
`
`Patent”), and 7,828,309 (“the ’309 Patent”).
`
`8.
`
`The term “Asserted Claim(s)” shall mean claims 1-5, 7-12, and 14-17 of the ’340
`
`Patent; claims 1, 2, 5, 6, 9-22, and 27-29 of the ’628 Patent; claims 1-7, 13-24, and 26 of the
`
`’530 Patent; claims 1, 2, 4, 6-8, 11, 12, and 15-17 of the ’641 Patent; and claims 1-3, 5-24, and
`
`26-36 of the ’309 Patent, as set forth in the Notice of Investigation.
`
`9.
`
`The terms “infringe,” “infringed,” and “infringement” mean direct infringement,
`
`contributory infringement, inducement of infringement, literal infringement, and infringement
`
`under the doctrine of equivalents. See 35 U.S.C. § 271.
`
`10.
`
`The term “prior art” means any subject matter encompassed by 35 U.S.C. § 103
`
`and each and every subsection of 35 U.S.C. § 102.
`
`11.
`
`“Wirtgen America’s Product(s)” shall include any device or product branded,
`
`made, used, leased, offered for lease, sold, imported, or offered for sale in the U.S. by or on
`
`behalf of Wirtgen America.
`
`12.
`
`The term “Complaint” shall mean the Complaint titled In the Matter of Certain
`
`Road Milling Machines and Components Thereof filed on July 19, 2017, pursuant to § 337 of
`-2-
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 9 of 48 PageID #:
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`the Tariff Act of 1930, Investigation No. 337-TA-1067, and any future amendments or
`
`supplements made thereof.
`
`13.
`
`The term “Present Investigation” shall mean In the Matter of Certain Road
`
`Milling Machines and Components Thereof, Investigation No. 337-TA-1067.
`
`14.
`
`The term “Notice of Investigation” shall mean the notice, published on August 25,
`
`2017, that the Commission is instituting the Present Investigation.
`
`15.
`
`The term “Accused Product(s)” shall mean any Road Milling Machines, and
`
`components thereof, that fall within the scope of the Notice of Investigation, including within
`
`the scope of the Asserted Patents, that was, is, will be, or likely will be imported in the U.S.,
`
`sold for importation into the U.S., or sold within the U.S. after importation by Caterpillar or a
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`third party on Caterpillar’s behalf. The term “Accused Product” shall include, without
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`limitation, products designed, labeled, and marked as being part of the Caterpillar PM600 Series
`
`and PM800 Series of Cold Planer Machines, and components thereof, including without
`
`limitation the following products:
`
`a. Caterpillar’s PM620 Cold Planer Machines;
`
`b. Caterpillar PM622 Cold Planer Machines;
`
`c. Caterpillar PM820 Cold Planer Machines;
`
`d. Caterpillar PM822 Cold Planer Machines; and
`
`e. Caterpillar PM825 Cold Planer Machines.
`
`16.
`
`The term “Source Code” means human-readable programming language text that
`
`defines Software or electronic hardware descriptions. Source Code files include, but are not
`
`limited to, files containing code in “C,” “C++,” “Objective-C”, “Java,” scripting languages, and
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`assembly programming languages. Source Code files further include “include” files, “make”
`-3-
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 10 of 48 PageID #:
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`files, “link” files, “build” files, synthesis scripts, macros, dynamic code generation, and other
`
`human readable text files used in the design, generation, and/or building of Software or
`
`hardware for an application processor, microprocessor, system-on-chip, graphics processor, or
`
`memory controller. Source Code files also include, but are not limited to files containing Source
`
`Code in VHDL, Verilog, and other Hardware Description Language (“HDL”) formats,
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`including but not limited to, Register Transfer Level (“RTL”) descriptions. Source Code files
`
`further include, without limitation test benches, validation tests, functional tests, circuit models,
`
`and simulation models.
`
`17.
`
`The term “document(s)” is defined broadly to be given the full scope of that term
`
`contemplated in the Commission’s Rules of Practice and Procedure, the Federal Rules of Civil
`
`Procedure, and the Federal Rules of Evidence, and includes all non-identical copies of a
`
`document, all drafts of final documents, all other written, typed, printed, recorded, or
`
`graphically portrayed matter in any form or embodiment, and all other data compilations from
`
`which information can be obtained and translated if necessary, that are or have been in Your
`
`actual or constructive custody or control, regardless of the medium on which they are produced,
`
`reproduced, or stored (including computer programs and files containing any requested
`
`information), any communication, and any recording or writing, as these terms are defined in
`
`Federal Rule of Evidence 1001. Any document bearing marks, including initials, stamped
`
`initials, comments, or notations not part of the original text or photographic reproduction
`
`thereof, is a separate document.
`
`18.
`
`The term “communication(s)” means all written, electronic, oral, telephonic, or
`
`other
`
`inquiries, dialogues, conversations,
`
`interviews, correspondence, consultations,
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`negotiations, agreements, understandings, meetings, letters, notes, telegrams, advertisements,
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`computer mail, email, and all other documents evidencing any verbal or nonverbal interaction
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`between persons and entities.
`
`19.
`
`The terms “include” and “including” mean include or including without
`
`limitation.
`
`20.
`
`21.
`
`The terms “each” and “any” mean any and all.
`
`The terms “use” and “using” shall include without limitation customer use, use in
`
`testing, use in demonstrating, and use in training.
`
`22.
`
`23.
`
`The terms “sell” and “sold” shall mean selling, leasing, and transferring title to.
`
`The term “U.S.” shall be interpreted as the United States of America, including all
`
`fifty states, the District of Columbia, and Puerto Rico.
`
`24.
`
`The terms “relate to,” “related to,” or “relating to” shall mean, in whole or in part,
`
`constituting, containing, embodying, reflecting, describing, analyzing, identifying, mentioning,
`
`stating, referring directly or indirectly to, dealing with, or in any way pertaining to.
`
`25.
`
`The term “identify,” when used with respect to a person, shall mean the person’s
`
`full name, present or last known address, and when referring to a natural person, additionally,
`
`the occupation or business in which the person is engaged, and the person’s present or last
`
`employer and title or position.
`
`26.
`
`The term “identify,” when used with respect to a document, means the (1) type of
`
`document, (2) subject matter, (3) date of the document, (4) author(s), addressee(s), recipient(s),
`
`and (5) Bates number.
`
`27.
`
`The term “identify,” when used with respect to a communication, shall mean the
`
`(i) means of communication (e.g., telephone call, meeting, etc.), (ii) date of the communication,
`
`(iii) subject matter of the communication, and (iv) originator, recipient, and any other party to
`-5-
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 12 of 48 PageID #:
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`the communication.
`
`28.
`
`The term “identify,” when used with respect to a product, shall mean the product
`
`or component name, including cross-references to all trade names and designations, internal
`
`names, and names used during development, product numbers, revisions, trademarks, SKU
`
`numbers, date coding, site codes, and manufacturing line codes associated with each such
`
`product, and all means for interpreting those identifying descriptions.
`
`29.
`
`The term “proprietary information” shall mean and include all information for
`
`which dissemination has been restricted, whether publicly or privately, and/or for which
`
`measures have ever been taken to protect against its public and/or private dissemination.
`
`“proprietary information” shall also mean all information not generally known to the public.
`
`30.
`
`The term “date” shall mean the exact day, month, year, if ascertainable, or, if not,
`
`the best approximation thereof.
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`
`
`INSTRUCTIONS
`
`The following instructions shall apply:
`
`1.
`
`You are to prepare fully and completely to testify regarding the following Topics
`
`for Examination after conducting a diligent and thorough investigation into all information
`
`within your possession, custody, or control. If you cannot fully and completely testify regarding
`
`any Topic, you are to prepare to testify regarding the Topic to the extent possible, specify the
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`portion of the Topic you are unable to prepare for, and provide any information you have
`
`regarding that portion.
`
`2.
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`If the Topic seeks testimony referencing or regarding a document or thing that has
`
`been lost, discarded, destroyed, or is otherwise unavailable for any reason, you should prepare
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`to testify as to: the pertinent information contained in the document, the date of disposal, the
`
`manner of disposal, the reason for disposal, any person, firm or corporation who has possession,
`
`custody, or control of a full, partial, or incomplete copy of such document, and the identity of
`
`all persons who participated in the destruction or discarding or who have knowledge of the data
`
`and circumstances surrounding the destruction or discarding of the document or thing.
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`3.
`
`If any Topic is objected to in part, you should prepare to testify regarding all
`
`portions of the Topic not objected to.
`
`4.
`
`If you claim that a Topic is overbroad and/or unduly burdensome, identify the
`
`respect in which the Topic is allegedly overbroad and/or unduly burdensome, and prepare to
`
`testify regarding any unobjectionable portion of the Topic.
`
`5.
`
`If you claim that an Topic is vague or ambiguous, identify the particular words,
`
`terms or phrases that you contend make the Topic vague and/or ambiguous, and specify the
`
`meaning you attribute to those words, terms, or phrases for purposes of your testimony
`
`pertaining thereto.
`
`6.
`
`The use of the plural or singular form of a word herein shall be interpreted to
`
`include the plural and singular forms so as not to exclude any information otherwise within the
`
`scope of any Topic.
`
`7.
`
`The words “and” and “or” shall be interpreted either conjunctively or
`
`disjunctively, whichever makes the Topic most inclusive.
`
`8.
`
`All pronouns shall be construed to refer to the masculine, feminine, or neuter
`
`gender, in singular or plural, as in each case makes the Topic more inclusive.
`
`9.
`
`Use of the past tense includes the present tense and use of the present tense
`
`includes the past tense.
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`10.
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`Any term not specifically defined herein is to be defined in accordance with the
`
`Federal Rules of Civil Procedure.
`
`11.
`
`These Topics shall include information acquired or identified up to the deposition
`
`and shall be deemed to be continuing. Therefore, You shall promptly supplement your
`
`deposition testimony with any additional information that You identify, acquire, or become
`
`aware of up to and including the time of hearing.
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`12.
`
`If any Topic is objected to in part, a complete answer to all portions of the
`
`Request not objected to should be provided.
`
`13.
`
`In the event that You claim that a Topic is overly broad and/or unduly
`
`burdensome for any reason, You are requested to respond to that portion of the Topic that is
`
`unobjectionable, and to specifically identify the respect in which the Topic is allegedly overly
`
`broad and/or unduly burdensome.
`
`14.
`
`If You claim that a Topic is vague and/or ambiguous, identify the particular
`
`words, terms, or phrases that You contend make the Topic vague and/or ambiguous, and specify
`
`the meaning You attribute to those words, terms, or phrases for purposes of Your response
`
`thereto.
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`INVESTIGATION NO. 337-TA-1067
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`-8-
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 15 of 48 PageID #:
`14930
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`Attachment “B”
`
`REQUESTS FOR PRODUCTION
`
`REQUEST FOR PRODUCTION NO. 1:
`
`All documents, communications, and things related to the relationship between You and
`
`Caterpillar regarding the infringement, or potential infringement, of U.S. Patent Nos. 9,644,340
`
`(“the ’340 Patent”), 9,624,628 (“the ’628 Patent”), 9,656,530 (“the ’530 Patent”), 7,530,641
`
`(“the ’641 Patent”), and/or 7,828,309 (“the ’309 Patent”) by any of the following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and 
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines. 
`
`REQUEST FOR PRODUCTION NO. 2:
`
`Documents sufficient to identify or describe a list of all work requests, statements of
`
`work, invoices, contracts, or agreements between You and Caterpillar regarding any of the
`
`following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and 
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines. 
`
`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`

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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 16 of 48 PageID #:
`14931
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`REQUEST FOR PRODUCTION NO. 3:
`
`All documents and communications related to the research, design, development,
`
`manufacture, assembly, importation, or testing of any control system implemented in, or capable
`
`of being implemented in, any of the following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and 
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines. 
`
`REQUEST FOR PRODUCTION NO. 4:
`
`All documents and communications related to any co-development between You,
`
`Caterpillar, or any other third party concerning the control system implemented in, or capable of
`
`being implemented in, any of the following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and 
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines. 
`
`REQUEST FOR PRODUCTION NO. 5:
`
`Documents sufficient to identify any entity or person involved in the research, design,
`
`INVESTIGATION NO. 337-TA-1067
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`-2-
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`

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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 17 of 48 PageID #:
`14932
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`development, manufacture, assembly, importation, or testing of the control system implemented
`
`in, or capable of being implemented in, any of the following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and 
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines. 
`
`REQUEST FOR PRODUCTION NO. 6:
`
`All technical documentation, including but not limited to schematics, specifications,
`
`design documents, engineering drawings, customer drawings, production drawings, prototype
`
`drawings, presentation materials, parts lists, installation instructions, integration support
`
`materials, operation manuals, data sheets, protocol conformance documents, wiring diagrams,
`
`bills of materials, component lists, testing reports, responses to requests for proposals, patch
`
`files, and Source Code, for the control system implemented in, or capable of being implemented
`
`in, any of the following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and 
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines.
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`INVESTIGATION NO. 337-TA-1067
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`-3-
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 18 of 48 PageID #:
`14933
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`Attachment “C”
`
`TOPICS FOR EXAMINATION
`
`1.
`
`Communications related to the relationship between You and Caterpillar
`
`regarding the infringement, or potential infringement, of any of of U.S. Patent Nos. 9,644,340
`
`(“the ’340 Patent”), 9,624,628 (“the ’628 Patent”), 9,656,530 (“the ’530 Patent”), 7,530,641
`
`(“the ’641 Patent”), and/or 7,828,309 (“the ’309 Patent”) by any of the following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines.
`
`2.
`
`Any work requests, statements of work, contracts, invoices, or agreements
`
`between You and Caterpillar regarding any of the following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines.
`
`3.
`
`The research, design, development, manufacture, assembly, importation, or
`
`testing of any control system implemented in, or capable of being implemented in, any of the
`
`following products:
`
`INVESTIGATION NO. 337-TA-1067
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`
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`

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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 19 of 48 PageID #:
`14934
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` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines.
`
`4.
`
`Any co-development between You, Caterpillar, or any other third party
`
`concerning the control system implemented in, or capable of being implemented in, any of the
`
`following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and 
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines.
`
`5.
`
`Any entity or person involved in the research, design, development, manufacture,
`
`assembly, importation, or testing of the control system implemented in, or capable of being
`
`implemented in, any of the following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
`INVESTIGATION NO. 337-TA-1067
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`-2-
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 20 of 48 PageID #:
`14935
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` Caterpillar PM825 Cold Planer Machines; and 
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines. 
`
`6.
`
`Technical documentation, including but not limited to schematics, specifications,
`
`design documents, engineering drawings, customer drawings, production drawings, prototype
`
`drawings, presentation materials, parts lists, installation instructions, integration support
`
`materials, operation manuals, data sheets, protocol conformance documents, wiring diagrams,
`
`bills of materials, component lists, testing reports, responses to requests for proposals, patch
`
`files, and Source Code, for the control system implemented in, or capable of being implemented
`
`in, any of the following products:
`
` Caterpillar PM620 Cold Planer Machines;
`
` Caterpillar PM622 Cold Planer Machines;
`
` Caterpillar PM820 Cold Planer Machines;
`
` Caterpillar PM822 Cold Planer Machines;
`
` Caterpillar PM825 Cold Planer Machines; and
`
` Any Caterpillar PM600 Series and PM800 Series of Cold Planer Machines.
`
`INVESTIGATION NO. 337-TA-1067
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`-3-
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23 Page 21 of 48 PageID #:
`14936
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`Attachment “D”
`
`
`
`Order No. 8 (Amended Protective Order) is attached following this page.
`
`
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`INVESTIGATION NO. 337-TA-1067
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`WIRTGEN’S SUBPOENA DUCES TECUM
`AND AD TESTIFICANDUM TO CTCT
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`

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`Case 1:17-cv-00770-JDW-MPT Document 137-1 Filed 01/23/23