Case 1:17-cv-00770-JDW-MPT Document 138-1 Filed 01/23/23 Page 1 of 13 PageID #:
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`SCHEDULE A
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`DEFINITIONS AND INSTRUCTIONS
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`1.
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`“Action” shall mean the action captioned, Wirtgen America, Inc. v. Caterpillar Inc.,
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`C.A. No. 17-770-JDW-MPT, in the United States District Court for the District of Delaware.
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`2.
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`“You,” “Your,” or “Wirtgen America” shall mean Plaintiff and Counterclaim-
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`Defendant Wirtgen America, Inc., its predecessors and successors, subsidiaries and related
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`companies, and its present and former officers, directors, employees, agents, representatives,
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`consultants, attorneys, accountants, entities it was formerly known as, and others acting or
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`purporting to act on its behalf or subject to its control.
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`3.
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`4.
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`“Caterpillar” shall mean Defendant and Counterclaim-Plaintiff Caterpillar Inc.
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`“Complaint” shall mean the complaint filed by Wirtgen America on June 16, 2017
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`(D.I. 1) in the action captioned, Wirtgen America, Inc. v. Caterpillar Inc., C.A. No. 17-770-JDW-
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`MPT in the United States District Court for the District of Delaware, as well as amended or
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`supplemented versions thereof, including but not limited to the Amended Complaint filed by
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`Wirtgen America on September 2, 2021 (D.I. 33).
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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` “’309 Patent” shall mean U.S. Patent No. 7,828,309.
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`“’316 Patent” shall mean U.S. Patent No. 8,118,316.
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`“’641 Patent” shall mean U.S. Patent No. 7,530,641.
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`“’592 Patent” shall mean U.S. Patent No. 8,113,592.
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`“’871 Patent” shall mean U.S. Patent No. 9,010,871.
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`“’530 Patent” shall mean U.S. Patent No. 9,656,530.
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`“’788 Patent” shall mean U.S. Patent No. 7,946,788.
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`“’932 Patent” shall mean U.S. Patent No. 8,511,932.
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`1
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`13.
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`14.
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`15.
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`16.
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`17.
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`18.
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`“’474 Patent” shall mean U.S. Patent No. 8,690,474.
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`“’268 Patent” shall mean U.S. Patent No. RE48,268.
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`“’972 Patent” shall mean U.S. Patent No. 8,424,972.
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`“’390 Patent” shall mean U.S. Patent No. 9,879,390.
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`“’391 Patent” shall mean U.S. Patent No. 9,879,391.
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`“Wirtgen America’s Asserted Patents” collectively refer to the ’309 Patent, ’316
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`Patent, ’641 Patent, ’592 Patent, ’871 Patent, ’530 Patent, ’788 Patent, ’932 Patent, ’474 Patent,
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`’268 Patent, ’972 Patent, ’390 Patent, and ’391 Patent.
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`19.
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`“Accused Caterpillar Product(s)” shall mean anything (e.g., products, services, or
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`functionality) which Wirtgen America claims to be infringing one or more claims of Wirtgen
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`America’s Asserted Patents, including the products or services listed in Wirtgen America’s
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`Identification of Accused Products and Asserted Patents, served on October 28, 2021.
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`20.
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`“Wirtgen America Embodying Products” shall mean anything (e.g., products,
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`services, or functionality) sold by Wirtgen America which Wirtgen America claims to be
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`practicing one or more claims of Wirtgen America’s Asserted Patents, or to the extent not
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`practicing any such claim, anything (e.g., products, services or functionality) to which Wirtgen
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`America claims to have lost sales due to Caterpillar’s alleged infringement.
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`21.
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`“Caterpillar’s Counterclaims” shall mean the counterclaims filed by Caterpillar on
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`October 14, 2021 (D.I. 43) in this Action.
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`22.
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`23.
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`24.
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`“’995 Patent” shall mean U.S. Patent No. 7,523,995.
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`“’538 Patent” shall mean U.S. Patent No. 9,975,538.
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`“’618 Patent” shall mean U.S. Patent No. 9,371,618.
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`2
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`25.
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`“Caterpillar’s Asserted Patents” collectively refer to the ’995 Patent, ’538 Patent,
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`and ’618 Patent.
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`26.
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` “Accused Wirtgen America Product(s)” shall mean anything (e.g., products,
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`services, or functionality) which Caterpillar claims to be infringing one or more claims of
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`Caterpillar’s Asserted Patents, including the products or services listed in Caterpillar’s
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`Identification of Asserted Patents and Accused Products, served on October 28, 2021. With
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`respect to the ’995 Patent, this includes, without limitation, Wirtgen America’s paver machines
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`and cold planer machines with pivoting track units, including, without limitation, model numbers
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`SP 64i, SP 94i, SP 124i, W 100 CFi, W 120 CFi, and W 130 CFi to the extent made, used, sold,
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`and/or offered for sale in the United States since at least the filing of Caterpillar’s Counterclaims
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`on October 14, 2021. With respect to the ’538 Patent, this includes, without limitation, Wirtgen
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`America’s cold planer machines having a multi-speed transmission, including, without limitation,
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`model numbers W 210 Fi and W 220 Fi to the extent made, used, sold, and/or offered for sale in
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`the United States since at least May 22, 2018. With respect to the ’618 Patent, this includes without
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`limitation, Wirtgen America’s cold planer machines having an electronically controlled water
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`system, including, without limitation, model numbers W 210 Fi, W 220 Fi, and W 250 Fi to the
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`extent made, used, sold, and/or offered for sale in the United States since at least the filing of
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`Caterpillar’s Counterclaims on October 14, 2021.
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`27.
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`“Communication(s)” shall mean any instance in which any Person has had contact
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`with any other Person, including by any oral or written utterance, question, comment, inquiry,
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`notation, or statement of any nature whatsoever, by and to whomever made, including, but not
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`limited to, any conversation, correspondence, agreement, note, e-mail, voicemail, or other transfer
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`of Information, whether written, oral, electronic, or by any other means, and including any
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`3
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`Document or other medium which abstracts, digests, records, incorporates, summarizes, describes,
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`or transcribes any such Communication, or any subsequent review or discussion of such
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`Communication, whether occurring at meetings or otherwise.
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`28.
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`“Date” means the exact day, month, and year if ascertainable, or if not, Your best
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`approximation thereof.”
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`29.
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`“Document(s)” has the meaning prescribed in Rule 34 of the Federal Rules of Civil
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`Procedure. The term “Document” shall be interpreted in the broadest sense possible and includes
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`Documents in any form, including by way of example and without limitation, originals and copies
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`of letters, memoranda, notes, records, minutes, reports, notebooks, messages, telegrams, ledgers,
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`legal instruments, legal opinions to the extent that they are not protected by the attorney-client
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`privilege or attorney work product doctrines, agreements, paper and electronic drawings,
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`specifications, purchase orders, circuit schematics, block diagrams, manuals, test procedures,
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`sketches, graphs, prints, rough drafts, secretarial notes, work pads, diaries, films, tapes,
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`photographs, computer disks and other electronic media, books, publications, advertisements,
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`literature, brochures, price lists, announcements, computer-based simulation tool input and output
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`files, or other writings or tangible objects whether stored, produced, or reproduced mechanically,
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`electrically, electronically, photographically, or chemically. Any comment or notation appearing
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`in any Document, and not part of the original text, is to be considered a separate “Document.”
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`30.
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`“Information” means and refers to Communications and Documents as those terms
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`are defined herein.
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`31.
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`“Person” or “Persons” shall include both natural Persons and entities, including,
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`without limitation, all predecessors in interest, groups, associations, partnerships, corporations,
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`agencies, or any other legal, business, or governmental entity. The acts “of” a Person are defined
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`4
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`to include the acts of directors, officers, members, employees, agents, or attorneys acting on the
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`Person’s behalf.
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`32.
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`“Prior Art” means any reference, subject matter, event, or other matter relevant
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`under 35 U.S.C. § 102 and/or 35 U.S.C. § 103.
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`33.
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`“Thing” or “Things” has the meaning prescribed in Rule 34 of the Federal Rules of
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`Civil Procedure. “Thing” specifically includes, by way of example but not limitation, any disc,
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`tape, or other electronic media storage device, any Product and any model, prototype, or
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`experimental device or part or assembly thereof.
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`34.
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`As used herein, the terms “and” and “or” should be understood either disjunctively
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`or conjunctively as necessary to bring within the scope of any request all responses that might
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`otherwise be construed to be outside of its scope.
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`35.
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`As used herein, the terms “each,” “any,” and “all” should be understood to include
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`“each and every, any, and all.”
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`36.
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`As used herein, the terms “relate,” “refer,” or “concern” (including any conjugation
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`thereof) mean directly or indirectly concerning, regarding, evidencing, mentioning or describing,
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`pertaining to, reflecting, being connected with, comprising, or constituting a subject matter.
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`37.
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`As used herein, use of a singular noun shall be construed to include the plural noun
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`and use of a plural noun shall be construed to include the singular noun; and the use of a verb in
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`any tense shall be construed as the use of that verb in all other tenses whenever necessary to bring
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`within the scope of the request that which might otherwise be construed to be outside its scope.
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`38.
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`The use of the present tense includes the past tense and vice versa.
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`5
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`Case 1:17-cv-00770-JDW-MPT Document 138-1 Filed 01/23/23 Page 6 of 13 PageID #:
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`TOPICS
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`1.
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`Your organizational structure, including, without limitation, as it relates to Wirtgen
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`GmbH and the design, development, testing, manufacture, operation, distribution, importation,
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`sale, licensing, and marketing of any products, methods, or intellectual property that embody, fall
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`within the scope of, or are practiced in accordance with any subject matter disclosed or claimed in
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`Wirtgen America’s Asserted Patents.
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`2.
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`Wirtgen America’s corporate affiliates and parents, including Your relationship
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`with each.
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`3.
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`The relationships among Wirtgen GmbH, Wirtgen America, and dealerships in the
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`United States which sell Wirtgen America Embodying Products.
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`4.
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`The development, conception, reduction to practice, diligence towards reduction to
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`practice, and priority date for each claim of Wirtgen America’s Asserted Patents.
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`5.
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`The ownership, title, transfer, or assignment of any interest in Wirtgen America’s
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`Asserted Patents.
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`6.
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`Any claim of inventorship or co-inventorship as to any Wirtgen America Asserted
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`Patent.
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`7.
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`8.
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`Agreements with any inventors of the Wirtgen America Asserted Patents.
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`The filing and prosecution of patent applications, including any foreign patent
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`applications, underlying, to which priority is claimed, or otherwise related to Wirtgen America’s
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`Asserted Patents.
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`9.
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`For each of Wirtgen America’s Asserted Patents, the reasons for delay between
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`filing of the earliest (or first) non-provisional patent application in a given patent family and
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`issuance of each of Wirtgen America’s Asserted Patents.
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`6
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`10.
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`Your strategy for filing continuation patent applications for patent families of
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`Wirtgen America’s Asserted Patents.
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`11.
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`Any analyses or opinions relating to the validity of each of Wirtgen America’s
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`Asserted Patents, including evidence of novelty or non-obviousness.
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`12.
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`Any factual basis supporting any finding that the inventions claimed in Wirtgen
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`America’s Asserted Patents are not obvious based on unexpected results, long-felt but unmet need,
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`failure of others, skepticism, commercial success and/or industry praise of Wirtgen America’s
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`Embodying Products; and the factual basis for any alleged nexus between the asserted claims of
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`Wirtgen America’s Asserted Patents and each alleged secondary consideration.
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`13.
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`Any Prior Art searches conducted with respect to Wirtgen America’s Asserted
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`Patents.
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`14.
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`Any Prior Art identified to Wirtgen America by a third-party with respect to
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`Wirtgen America’s Asserted Patents.
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`15.
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`All Communications and agreements between You and Wirtgen GmbH regarding
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`Wirtgen America’s Asserted Patents.
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`16.
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`The licenses, potential licenses, offers to license, covenants not to sue, or offers to
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`covenant not to sue for each of Wirtgen America’s Asserted Patents, including the identities of
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`each Person or entity who was a counterparty to any of those licenses, potential licenses, offers to
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`license, covenants not to sue, or offers to covenant not to sue.
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`17.
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`18.
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`Attempts to sell Wirtgen America’s Asserted Patents to third parties.
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`Your Communications or other attempts to notify Caterpillar regarding its alleged
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`infringement of Wirtgen America’s Asserted Patents.
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`7
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`19.
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`Your Communications with any third-party regarding its alleged infringement of
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`any of Wirtgen America’s Asserted Patents.
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`20.
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`Your marking (including virtual marking) of Wirtgen America Patents on any
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`Wirtgen America Embodying Product.
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`21.
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`Analyses or opinions regarding Caterpillar’s infringement, willful infringement,
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`potential infringement, or non-infringement of Wirtgen America’s Asserted Patents.
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`22.
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`Analyses or opinions regarding the infringement, willful infringement, potential
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`infringement, or non-infringement of Caterpillar’s Asserted Patents by the Accused Wirtgen
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`America Products.
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`23.
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`Your discovery (i.e., first awareness) of Caterpillar’s Asserted Patents, including
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`the earliest date when You became aware of each of Caterpillar’s Asserted Patents, the manner in
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`which You acquired that knowledge, and the actions You took upon discovering the existence of
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`Caterpillar’s Asserted Patents.
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`24.
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`Any opinions, reports, investigations, evaluations, analyses, or searches related to
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`the validity/invalidity, inventorship, infringement/non-infringement, enforceability, novelty,
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`patentability, interpretation, or scope of any of Caterpillar’s Asserted Patents.
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`25.
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`Any non-infringing alternative products, technologies, or design arounds for each
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`of Caterpillar’s Asserted Patents that have been or could be used as commercial alternatives and/or
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`would allow the same functionality of the Accused Wirtgen America Products.
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`26.
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`The design, functionality, and customer demand for Wirtgen America’s SP 64i, SP
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`94i, and SP 124i slipform paver machines, when purchased with the rotary actuator option,
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`including how such functionality and customer demand compare with that of Wirtgen America’s
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`8
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`paver machines and cold planer machines with pivoting track units, including, without limitation,
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`model numbers SP 64i, SP 94i, SP 124i, W 100 CFi, W 120 CFi, and W 130 CFi.
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`27.
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`The design, functionality, and customer demand for Wirtgen America’s W 100 XFi,
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`W 120 XFi, W 130 XFi, and W 120 XTi cold planer machines, including how such functionality
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`and customer demand compare with that of Wirtgen America’s paver machines and cold planer
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`machines with pivoting track units, including, without limitation, model numbers SP 64i, SP 94i,
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`SP 124i, W 100 CFi, W 120 CFi, and W 130 CFi.
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`28.
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`The design, functionality, and customer demand for Wirtgen America’s W 200i, W
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`210i, and W 250i cold planer machines, including how such functionality and customer demand
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`compare with that of Wirtgen America’s cold planer machines having an electronically controlled
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`water system, including, without limitation, model numbers W 210 Fi, W 220 Fi, and W 250 Fi.
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`29.
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`Your efforts to avoid or design-around any of Caterpillar’s Asserted Patents,
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`including without limitation any changes made to any Accused Wirtgen American Product to avoid
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`any claim limitation of any asserted claim to Caterpillar’s Asserted Patents.
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`30.
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`The manufacture, design, development, demonstration, verification, assembly,
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`production, testing, integration, validation, importation, and distribution of each of the Accused
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`Wirtgen America Products including, without limitation, the features and functionality identified
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`in Caterpillar’s Infringement Contentions.
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`31.
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`The manufacture, design, development, demonstration, verification, assembly,
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`production, testing, integration, validation, importation, and distribution of each of the Wirtgen
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`America Embodying Products, including, without limitation, the features and functionality that
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`practice any limitation of any asserted claim of Wirtgen America’s Asserted Patents.
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`9
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`32.
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`Your knowledge of Wirtgen GmbH’s manufacturing capabilities and its ability to
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`supply Wirtgen America Embodying Products between 2011-2023, including the typical delay
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`between order and delivery of machines during this period.
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`33. Wirtgen America’s supply and capacity to increase supply of its products, including
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`manufacturing, marketing, and production capacity, plant operation, and materials acquisition and
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`management.
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`34.
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`Feedback from customers about Caterpillar engines used in Wirtgen America
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`Embodying Products, including, without limitation, any comparisons or benchmarking with other
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`engine suppliers.
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`35.
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`The function, design, operation, use, intended use, and maintenance of any of the
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`Accused Wirtgen America Products including, without limitation, the features and functionality
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`identified in Caterpillar’s Infringement Contentions.
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`36.
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`The function, design, operation, use, intended use, and maintenance of any of the
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`Wirtgen America Embodying Products.
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`37.
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`The design, function, operation, use, intended use, and maintenance of Wirtgen’s
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`W1900 and W2000 machines.
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`38.
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`The dates on which Wirtgen’s W1900 and W2000 were used, sold, or offered for
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`sale in the United States.
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`39.
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`The dates on which Wirtgen’s SP 64i, SP 94i, SP 124i, W 100 Cfi, W 120 Cfi,
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`W130, W210 Fi, W220 Fi, and W 250 Fi were used, sold, offered for sale, or imported in the
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`United States.
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`40.
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`41.
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`Your knowledge and any analysis of Roadtec’s RX-500 machine.
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`Your knowledge and any analysis of Caterpillar’s PM-465 and PM-565 machines.
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`10
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`42.
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`Any competitive analysis, including related polices, practices, and procedures, of
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`Caterpillar, Roadtec, BOMAG, or any other competitor of Wirtgen America.
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`43.
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`Your business plans, sales strategies, competitive assessments, and efforts to
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`compete head-to-head with Caterpillar or any other competitor of Wirtgen America.
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`44.
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`Your use and/or inspection of any Accused Caterpillar Products, including the date
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`and other circumstances of such use and/or inspection.
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`45.
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`Pricing for the Accused Wirtgen America Products or Wirtgen America
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`Embodying Products, including related policies, practices, and procedures.
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`46.
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`The sales, offers for sale, pricing, revenue, profits, and costs for each of the Accused
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`Wirtgen America Products or Wirtgen America Embodying Products through the present,
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`including, but not limited to, the data represented in the document Bates stamped WA-0259437
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`and similar data for Accused Wirtgen America Products or Wirtgen America Embodying Products
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`that were not included in the document Bates stamped WA-0259437.
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`47.
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`The sales, offers for sale, pricing, revenue, profits, and costs of aftermarket or spare
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`parts sales and servicing related to each of the Accused Wirtgen America Products or Wirtgen
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`America Embodying Products.
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`48.
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`Your projections and/or forecasts concerning all relevant markets for the Accused
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`Wirtgen America Products or Wirtgen America Embodying Products, including without limitation
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`forecasts of market size, market share, and customer demand.
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`49.
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`Customers’ desire or preference for any features of the Accused Wirtgen America
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`Products or Wirtgen America Embodying Products, and customer’s complaints, comments,
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`evaluations, inquiries, questions, or technical support issues regarding the Accused Wirtgen
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`America Products or Wirtgen America Embodying Products.
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`11
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`50.
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`Your policies, practices, and procedures for providing customer support with
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`respect to any Accused Wirtgen America Products or Wirtgen America Embodying Products.
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`51.
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`The marketing, advertising, or promotion of any of the Accused Wirtgen America
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`Products or Wirtgen America Embodying Products.
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`52.
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`The marketing, advertising, or promotion of aftermarket or spare parts sales and
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`servicing related to any of the Accused Wirtgen America Products or Wirtgen America Embodying
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`Products.
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`53.
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`Any other products or services provided by You or others that are used or sold in
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`conjunction with the Accused Caterpillar Products that You contend are related to their accused
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`features.
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`54.
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`The identity of each sale lost to Caterpillar due to its alleged infringement of the
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`Wirtgen America Patents.
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`55.
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`The identity of Wirtgen America’s competitors for sales of Wirtgen America
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`Embodying Products.
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`56. Wirtgen America’s market share for Wirtgen America Embodying Products in the
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`United States, North America, and each region of the United States and North America, including
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`reasons for differences among regions and factors affecting market share in each region, and any
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`known market share of its competitors.
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`57. Market share data, of the type represented in the document bates stamped WA-
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`0259438, but for the period from October 2015 through the present, including compilation of the
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`data.
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`58.
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`Communications with any dealers, customers, or end-users regarding this Action,
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`or any ITC investigations, Federal Circuit appeals, or any other judicial or administrative
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`12
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`proceedings involving Caterpillar, any of Caterpillar’s patents, or any of Wirtgen America’s
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`patents.
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`59.
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`60.
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`Your document retention and destruction policies.
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`Your database(s) and system(s) for storing and maintaining Information regarding
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`each of the Accused Wirtgen America Products.
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`13
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