Case 1:17-cv-00770-JDW-MPT Document 139 Filed 01/23/23 Page 1 of 8 PageID #: 15034
`
`WIRTGEN AMERICA, INC.
`
`
`Plaintiff/Counterclaim-Defendant,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`C.A. No. 1:17-cv-00770-JDW-MPT
`
`JURY TRIAL DEMANDED
`
`
`
`CATERPILLAR INC.
`
`
`v.
`
`Defendant/Counterclaim-Plaintiff.
`
`
`
`
`
`
`
`
`
`WIRTGEN AMERICA, INC.’S MOTION TO MODIFY THE SCHEDULING ORDER
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 139 Filed 01/23/23 Page 2 of 8 PageID #: 15035
`
`I.
`
`INTRODUCTION
`
`This motion requests certain modifications to certain discovery limits set forth in the
`
`scheduling order (D.I. 28), including requests to:
`
`(1) increase the maximum number of requests for admission to 150, for each side, exclusive
`
`of requests for document-authentication purposes;
`
`(2) increase the maximum number of interrogatories to 40, for each side;
`
`(3) set a twenty-hour limit on depositions taken pursuant to Federal Rule of Civil Procedure
`
`(each, a “Rule”) 30(b)(6); and
`
`(4) increase the total number of deposition hours per side from 100 to 150, not including
`
`third-party witnesses.
`
`Caterpillar has agreed to this motion with respect to the first three modifications. With
`
`respect to the fourth modification—increasing the total number of deposition hours—Caterpillar
`
`opposes (without explanation) this modification. For the reasons set forth below, good cause exists
`
`to modify the Court’s scheduling order.
`
`II.
`
`BACKGROUND
`
`Brief Summary of the Parties’ Litigation History
`
`A.
`As the Court is well aware, this case began more than five years ago, and subsequently the
`
`Court stayed the case while the parties conducted related patent litigation and appeals before the
`
`U.S. International Trade Commission (“ITC”) (see D.I. 8-2; D.I. 33, ¶¶53-65), the Patent Trial and
`
`Appeal Board of the U.S. Patent and Trademark Office (“PTAB”) (see D.I. 33, ¶¶66-76), and the
`
`U.S. Court of Appeals for the Federal Circuit. After the Court lifted the stay on May 27, 2021 (D.I.
`
`25), the parties negotiated the terms in the Scheduling Order granted on July 23, 2021. (D.I. 28).
`
`Since the Scheduling Order was granted, the case has expanded from twelve patents to
`
`1
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 139 Filed 01/23/23 Page 3 of 8 PageID #: 15036
`
`sixteen.1 This is due in part to Caterpillar asserting permissive counterclaims for patent
`
`infringement of three patents in its Answer to the Amended Complaint and Counterclaims filed on
`
`October 14, 2021. (D.I. 43 ¶¶7-35).2 At the time the parties negotiated the Scheduling Order and
`
`other discovery limits, Caterpillar failed to disclose that it intended to assert any patents as
`
`counterclaims. Wirtgen America was denied the opportunity to meaningfully address the discovery
`
`obligations necessitated by Caterpillar’s asserted patents.
`
`The Parties Have Met and Conferred on Modifying the Scheduling Order
`
`B.
`On or about December 6, 2022, the parties’ counsel met, via video conference, and
`
`discussed Wirtgen America’s proposals to alter certain limits on written discovery and depositions
`
`noted in the Scheduling Order (D.I. 28). See supra Section I. In subsequent correspondence, the
`
`parties agreed to: (i) limit the number of testimony hours for a Rule 30(b)(6) witness to 20; (ii)
`
`increase the maximum number of requests for admission to 150, for each side; and (iii) increase
`
`the maximum number of interrogatories to 40, for each side. See Email from J. Yoon, Dec. 8, 2022
`
`(“Ex. A”). However, Caterpillar refused without explanation to “agree to an increase in the
`
`maximum number of fact deposition hours.” Ex. A. The parties confirmed that they had reached
`
`an impasse during a January 10, 2023 video conference.
`
`III. ARGUMENT
`Good cause exists for this Court to exercise its broad discretion to modify the Scheduling
`
`Order as Caterpillar’s counterclaims necessitate additional written discovery and fact depositions.
`
`Rule 16(b)(4); see Dow Chem. Can. Inc. v. HRD Corp., 287 F.R.D. 268, 270 (D. Del. 2012).
`
`
`1 Wirtgen America first asserted twelve patents (D.I. 1, ¶11) and subsequently filed an Amended
`Complaint on September 2, 2021, asserting thirteen patents. (D.I. 33, ¶14).
`2 Caterpillar maintained its counterclaims in its Amended Answer to the Amended Complaint.
`(D.I. 62, ¶¶7-35).
`
`2
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 139 Filed 01/23/23 Page 4 of 8 PageID #: 15037
`
`A. Wirtgen America’s Proposals Recognize the Complexity of this Action
`Wirtgen America seeks an additional fifty hours of fact witness deposition testimony to
`
`ensure it has a reasonable opportunity to develop its defenses to Caterpillar’s three asserted patents
`
`without prejudicing its ability to obtain the discovery it needs to prosecute its own case. Even
`
`before Caterpillar’s counterclaims, this was a complex case involving thirteen patents across seven
`
`patent families and eight different accused machines, including multiple builds and versions of
`
`each accused machine. Wirtgen America understood that the hundred hours of fact deposition
`
`testimony in the original Scheduling Order was reserved for Wirtgen America’s case-in-chief.
`
`Caterpillar’s counterclaim patents multiply the number of issues in the case by adding three
`
`new patents and nine accused machines. Caterpillar’s countersuit accuses slipform pavers, a type
`
`of machine not previously at issue in the litigation. Written discovery alone cannot substitute
`
`narrative deposition testimony related to the conception, design, operation, marketing, and
`
`financials of such complex machinery incorporating numerous technologies pertaining to driving,
`
`hydraulic, electrical, milling, stabilizing, fluid-distribution, and safety subsystems, among others.
`
`(See generally D.I. 33, ¶¶9, 12-13, 16-35, 52; D.I. 62, ¶¶7-35).
`
`Additionally, Caterpillar’s counterclaim patents introduce seven additional inventors to the
`
`case, many of whom were not among the thirteen individuals Caterpillar initially identified
`
`pursuant to Rule 26(a)(1)(A)(i) who may, or could be, the subject of fact-discovery depositions for
`
`each side’s claims and defenses. See Caterpillar’s Initial Disclosures, Pursuant to Federal Rule of
`
`Civil Procedure 26(a)(1), October 21, 2021 (“Ex. B.”).
`
`Wirtgen America cannot complete fulsome discovery to develop its defenses without
`
`additional deposition time. In every patent litigation, the defendant must conduct discovery to
`
`establish its non-infringement, invalidity, and damages defenses. Consequently, Wirtgen America,
`
`as the counterclaim defendant, seeks both written discovery and deposition testimony from
`
`3
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 139 Filed 01/23/23 Page 5 of 8 PageID #: 15038
`
`Caterpillar relating to the counterclaim patents, including issues relating to the conception and
`
`reduction to practice of the purported inventions, Caterpillar’s alleged commercial embodiments
`
`of those purported inventions, Caterpillar’s alleged damages, and related topics.
`
`B.
`
`Additional Deposition Discovery is Warranted, Commensurate with the
`Additional Written Discovery Caterpillar Concedes is Necessary
`
`Caterpillar presents a conflicting story regarding additional fact discovery. Recognizing
`
`each side’s needs to pursue its affirmative claims and defend against allegations of infringement,
`
`Caterpillar agrees that more time for fact discovery is necessary (D.I. 88) and agrees that the
`
`Scheduling Order should be modified to accommodate additional written discovery. However,
`
`Caterpillar, without reason, refuses an extension of the allowed deposition hours.
`
`But Caterpillar cannot, without reason, refuse additional deposition discovery when
`
`Caterpillar created the need for additional discovery. Caterpillar chose to assert three additional
`
`patents and accuse nine additional machines. Caterpillar chose to introduce an entirely new
`
`category of machines into this already complex case. Caterpillar cannot now deny Wirtgen
`
`America the opportunity to develop its defenses relating to nine additional machines and three
`
`patents by hiding behind a preexisting scheduling order. Wirtgen America is entitled to the same
`
`opportunity to develop its defenses that Caterpillar was granted for more than five years.
`
`This Court has recognized the burden of litigating Caterpillar’s and Wirtgen America’s
`
`asserted patent claims. Acknowledging the increased complexity resulting from Caterpillar’s
`
`permissive counterclaims, the Court modified the Scheduling Order to extend the Claim
`
`Construction Hearing to two hearing days, one for Wirtgen America’s patents and another for
`
`Caterpillar’s counter-asserted patents. (D.I. 106, p. 6). A similar expansion of deposition discovery
`
`is warranted to address the new issues that Caterpillar’s permissive counterclaims raise in addition
`
`to the written discovery Caterpillar concedes is necessary.
`
`4
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 139 Filed 01/23/23 Page 6 of 8 PageID #: 15039
`
`Good Cause Exists For Increasing Limits on Written Discovery
`
`C.
`As both parties agree, good causes exists for this Court to modify the Scheduling Order to
`
`allow for additional written discovery. As explained above, Caterpillar’s counterclaims have added
`
`a new machine category (slipform pavers) and three patents to an already complex litigation. The
`
`litigation now encompasses nineteen accused machines and sixteen patents that must be
`
`individually assessed for infringement/non-infringement, validity/invalidity, and damages. Both
`
`parties need and are entitled to additional written discovery to develop their arguments and
`
`defenses for each patent and accused machine. By modestly increasing the number of requests for
`
`admissions to 150 for each side, exclusive of requests for document-authentication purposes, and
`
`increasing the maximum number of interrogatories to 40, the parties will be better able to
`
`streamline fact depositions and expert discovery going forward. Absent additional written
`
`discovery, both parties will be unable to prepare their counterclaim arguments and defenses.
`
`IV. CONCLUSION
`Caterpillar is not prejudiced, harmed, or unduly burdened by modestly increasing the hours
`
`of fact witness testimony to enable the parties to timely pursue their claims while limiting any
`
`further complications in this long running case.
`
`Therefore, pursuant to the parties’ mutual agreement, Wirtgen America respectfully
`
`requests this Court to modify the Scheduling Order to: (1) increase the maximum number of RFAs
`
`to 150, for each side, exclusive of document-authentication purposes (D.I. 28, ¶3(d)); (2) increase
`
`the maximum number of interrogatories to 40, for each side (D.I. 28, ¶3(e)); and (3) impose a
`
`twenty-hour limit on depositions taken pursuant to Rule 30(b)(6). Wirtgen America further
`
`requests that this Court modify the Scheduling Order to increase the maximum number of
`
`deposition hours to 150 of taking testimony of fact witnesses, exclusive of third-party depositions
`
`(D.I. 28, ¶3(f)(i)).
`
`5
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 139 Filed 01/23/23 Page 7 of 8 PageID #: 15040
`
`Dated: January 23, 2023
`
`OF COUNSEL:
`
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Dominic A. Rota
`Mark A. Kilgore
`PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`dar@iplawgroup.com
`mak@iplawgroup.com
`
`
`
`
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
`
`Attorneys for Wirtgen America, Inc.
`
`- and -
`
`
`Daniel E. Yonan
`Paul A. Ainsworth
`R. Wilson Powers III
`Kyle E. Conklin
`Deirdre M. Wells
`Joseph H. Kim
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1100 New York Ave., NW, Suite 600
`Washington, DC 20005 (202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`tpowers@sternekessler.com
`kconklin@sternekessler.com
`dwells@sternekessler.com
`josephk@sternekessler.com
`
`
`
`6
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 139 Filed 01/23/23 Page 8 of 8 PageID #: 15041
`
`
`
`CERTIFICATE OF EFFORTS TO RESOLVE DISPUTE INFORMALLY
`
`Pursuant to the Honorable Joshua D. Wolson’s Policies and Procedures on Discovery
`
`Disputes (see Policies and Procedures, ¶II(C)(1)), the undersigned certifies that counsel for the
`
`movant has conferred with counsel for Defendant, in a good faith effort to resolve the issues, but
`
`has been unable to resolve the issue of increasing the total number of deposition hours per side
`
`from 100 to 150, not including third-party witnesses. On December 7, 2022, the parties first
`
`conferred over the phone about the need to modify the scheduling order. Following the parties’
`
`conference, Plaintiff provided a written proposal later that same day revising the Scheduling Order,
`
`which Defendant accepted in part on December 8. Defendant disagreed with the increase in
`
`deposition hours. So on January 10, 2023, the parties conferred over the phone again and revisited
`
`the issue. Defendant maintained its position, and Plaintiff informed Defendant of its intention to
`
`file this Motion.
`
`
`
`
`
`
`
`
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`
`Attorneys for Wirtgen America, Inc.
`
`
`
`