Case 1:17-cv-00770-JDW-MPT Document 139-2 Filed 01/23/23 Page 1 of 8 PageID #: 15046
`Case 1:17-cv-00770-JDW-MPT Document 139-2 Filed 01/23/23 Page 1 of 8 PagelD #: 15046
`
`EXHIBIT B
`EXHIBIT B
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`

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`Case 1:17-cv-00770-JDW-MPT Document 139-2 Filed 01/23/23 Page 2 of 8 PageID #: 15047
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
` C.A. No. 17-0770-RGA
`
`JURY TRIAL DEMANDED
`
`))))))))))))))
`
`WIRTGEN AMERICA, INC.,
`
`v.
`
`CATERPILLAR INC.,
`
`Plaintiff,
`
`Defendant.
`
`DEFENDANT CATERPILLAR INC.’S INITIAL DISCLOSURES
`PURSUANT TO FED. R. CIV. P. 26(a)(1)
`
`In accordance with Federal Rule of Civil Procedure 26(a)(1) and this Court’s Scheduling
`Order (D.I. 28), Defendant Caterpillar Inc. (“Defendant” or “Caterpillar”) provides the following
`initial disclosures to Plaintiff Wirtgen America, Inc. (“Plaintiff” or “Wirtgen America”). Wirtgen
`America alleges that certain Caterpillar cold planers infringe one or more of the claims of the
`Wirtgen America Patents.1 Caterpillar alleges that certain Wirtgen America products infringe one
`or more of the claims of the Caterpillar Patents.2 These disclosures are made based on information
`that is available to Caterpillar at this time and at this stage of the proceedings. Discovery has just
`
`1 “Wirtgen America Patents” collectively refer to U.S. Patent Nos. 7,828,309 (“’309 patent”), 8,118,316
`(“’316 patent”), 8,113,592 (“’592 patent”), 9,010,871 (“’871 patent”), 9,656,530 (“’530 patent”), 7,946,788
`(“’788 patent”), 8,511,932 (“’932 patent”), 8,690,474 (“’474 patent”), RE48,268 (“’268 patent”), 8,424,972
`(“’972 patent”), 9,879,390 (“’390 patent”), and 9,879,391 (“’391 patent”). Because the Court has stayed
`U.S. Patent No. 7,530,641, Caterpillar will not address that patent herein.
`2 “Caterpillar Patents” collectively refer to U.S. Patent Nos. 7,523,995 (“’995 patent”), 9,975,538 (“’538
`patent”), and 9,371,618 (“’618 patent”).
`
`

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`Case 1:17-cv-00770-JDW-MPT Document 139-2 Filed 01/23/23 Page 3 of 8 PageID #: 15048
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`begun, and Caterpillar reserves all rights, including under Rule 26(e), to modify, amend, and/or
`supplement the disclosures made herein as additional evidence and information become available.
`These disclosures by Caterpillar are not intended to, and do not, constitute admissions as
`to relevance or admissibility of the information disclosed, and are made without any waiver of
`attorney-client privilege, work-product protection, or any other applicable protection or immunity.
`Caterpillar submits these initial disclosures without waiver as to relevancy, materiality,
`competency, and admissibility of evidence of these disclosures or the subject matter thereof and
`without waiver of the right to object on any basis permitted by law to any discovery involving or
`relating to these initial disclosures or the subject matter thereof. Caterpillar also reserves the right
`to rely on documents not described herein.
`Caterpillar further does not represent that it is identifying each and every document that
`may be relevant to this action, or each and every individual or organization that may possess
`information relevant to this action. Rather, Caterpillar’s initial disclosures identify information
`Caterpillar reasonably believes may be used to support its claims and defenses as of the date of
`these disclosures.
`I.
`LIST OF INDIVIDUALS
`In accordance with Rule 26(a)(1)(A)(i) of the Federal Rules of Civil Procedure and subject
`to the qualifications stated above, Caterpillar identifies the following individuals as likely to have
`discoverable information that Caterpillar may use in support of its claims and defenses (other than
`solely for impeachment) in this action. Caterpillar anticipates that other individuals may also have
`discoverable information and specifically reserves the right to identify additional witnesses as
`discovery proceeds.
`By indicating the general subject matter of information the following individuals may
`possess, Caterpillar is in no way limiting its right to call any of the individuals listed to testify
`concerning any other subject(s):
`
`-2-
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`

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`Case 1:17-cv-00770-JDW-MPT Document 139-2 Filed 01/23/23 Page 4 of 8 PageID #: 15049
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`Name
`Christian Berning
`
`Contact Information
`Am Burgweiher 3
`Zülpich, Germany 53909
`
`Peter Busley
`
`Am Kaiserberg 6b
`Linz/Rhein, Germany 53545
`
`Günter Hähn
`
`Kiefernweg 21
`Königswinter, Germany 53639
`
`Jaroslaw Jurasz
`
`Weidenweg 8
`Windhagen, Germany 53578
`
`Markus Schäfer
`
`Langgasse 105
`Niederkassel, Germany 53859
`
`Dieter Simons
`
`Am Sielspool 8
`Buchholz, Germany 53567
`
`Silvia Tewes
`
`Erlenweg 14
`Unkel/Rhein, Germany 53572
`
`Subject Matter
`The ’391, ’390, ’972, ’309 and ’316
`patents, including alleged
`conception, reduction to practice,
`diligence, inventorship,
`prosecution, prior art, and/or
`ownership
`The ’268, ’530, ’871 and ’592
`patents, including alleged
`conception, reduction to practice,
`diligence, inventorship,
`prosecution, prior art, and/or
`ownership
`The ’474, ’788 and ’932 patents,
`including alleged conception,
`reduction to practice, diligence,
`inventorship, prosecution, prior art,
`and/or ownership
`The ’474, ’788 and ’932 patents,
`including alleged conception,
`reduction to practice, diligence,
`inventorship, prosecution, prior art,
`and/or ownership
`The ’309 and ’316 patents,
`including alleged conception,
`reduction to practice, diligence,
`inventorship, prosecution, prior art,
`and/or ownership
`The ’268, ’391, ’390, ’972, ’309
`and ’316 patents, including alleged
`conception, reduction to practice,
`diligence, inventorship,
`prosecution, prior art, and/or
`ownership
`The ’474, ’932 and ’530 patents,
`including alleged conception,
`reduction to practice, diligence,
`inventorship, prosecution, prior art,
`and/or ownership
`
`-3-
`
`

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`Case 1:17-cv-00770-JDW-MPT Document 139-2 Filed 01/23/23 Page 5 of 8 PageID #: 15050
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`Subject Matter
`The Wirtgen America Patents,
`including prosecution, prior art,
`and/or ownership
`
`The ’618 patent, including
`conception, reduction to practice,
`diligence, inventorship, and/or
`prosecution; history and
`development of Caterpillar cold
`planers; competitive analysis of
`Wirtgen cold planers
`The ’995 patent, including
`conception, reduction to practice,
`diligence, inventorship, and/or
`prosecution; history and
`development of Caterpillar cold
`planers
`
`Marketing of Caterpillar cold
`planers
`
`Caterpillar’s corporate structure and
`organization; importation and
`manufacture of Caterpillar cold
`planers
`
`Financial information regarding
`Caterpillar cold planers
`
`Name
`Lucian Wayne Beavers
`
`Eric Engelmann
`
`Dario Sansone
`
`Nathan Just
`
`David Falcione
`
`Corey Hanback
`
`Contact Information
`Patterson Intellectual Property
`Law, P.C.
`1600 Division St., Ste 500
`Nashville, TN 37203
`(615) 242-2400
`Counsel for Caterpillar
`Wilson Sonsini Goodrich &
`Rosati, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`(650) 493-9300
`
`Counsel for Caterpillar
`Wilson Sonsini Goodrich &
`Rosati, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`(650) 493-9300
`Counsel for Caterpillar
`Wilson Sonsini Goodrich &
`Rosati, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`(650) 493-9300
`Counsel for Caterpillar
`Wilson Sonsini Goodrich &
`Rosati, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`(650) 493-9300
`Counsel for Caterpillar
`Wilson Sonsini Goodrich &
`Rosati, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`(650) 493-9300
`
`-4-
`
`

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`Case 1:17-cv-00770-JDW-MPT Document 139-2 Filed 01/23/23 Page 6 of 8 PageID #: 15051
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`2.
`
`3.
`
`Caterpillar reserves the right to disclose additional individuals whom Caterpillar may use
`to support its claims or defenses based on information learned during the course of this litigation.
`II.
`DOCUMENTS, ELECTRONICALLY
`STORED
`INFORMATION, AND
`TANGIBLE THINGS
`In accordance with Rule 26(a)(1)(A)(ii) of the Federal Rules of Civil Procedure and subject
`to the qualifications stated above, Caterpillar submits the following descriptions of documents,
`electronically stored information and/or tangible things that Caterpillar has in its possession,
`custody, or control and may use to support its defenses and counterclaims:
`1.
`Documents relating to the Caterpillar Patents, including the patents’ respective
`applications and file histories;
`Documents relating to the conception and reduction to practice of inventions
`claimed in the Caterpillar Patents;
`Documents relating to the commercial success and other secondary considerations
`of non-obviousness of the inventions embodied in the Caterpillar Patents;
`Documents related to Caterpillar’s research and development;
`Documents relating to the development, operation, and marketing of Caterpillar
`cold planers;
`Documents relating to the sales and financial information of Caterpillar cold
`planers;
`Pleadings and other files from this litigation and any related litigation or action;
`Deposition exhibits and all materials referenced in any expert report submitted in
`this litigation; and
`Documents produced by the parties or their corporate affiliates in this litigation.
`9.
`Caterpillar specifically reserves the right to identify additional categories and locations of
`documents under Rule 26(e) of the Federal Rules of Civil Procedure as discovery proceeds.
`
`7.
`8.
`
`4.
`5.
`
`6.
`
`-5-
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`

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`Case 1:17-cv-00770-JDW-MPT Document 139-2 Filed 01/23/23 Page 7 of 8 PageID #: 15052
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`III.
`
`COMPUTATION OF DAMAGES
`In accordance with Rule 26(a)(1)(A)(iii) of the Federal Rules of Civil Procedure and
`subject to the qualifications stated above, Caterpillar states as follows:
`Caterpillar seeks damages for infringement of the Caterpillar Patents. Caterpillar contends
`that it is entitled at least to be adequately compensated for Wirtgen America’s infringement in the
`amount of a reasonable royalty and/or lost profits. Additionally, Caterpillar contends it is entitled
`to prejudgment and post-judgment interests and costs under 35 U.S.C. § 284 and may be entitled
`to attorneys’ fees pursuant to 35 U.S.C. § 285.
`The amount and computation of these damages is not known at this time as discovery is
`just beginning, and many of the documents necessary to calculate these amounts are in the
`possession, custody, or control of Wirtgen America. Caterpillar also reserves its right to retain an
`expert witness to testify as to the precise amount of damages to which Caterpillar is entitled.
`Caterpillar also seeks reimbursement of all costs and expenses, including reasonable
`attorneys’ fees, incurred as a result of this action. Such costs and expenses continue to accrue, and
`therefore, a computation thereof cannot be performed at this time.
`IV.
`RELEVANT INSURANCE AGREEMENTS
`In accordance with Rule 26(a)(1)(A)(iv) of the Federal Rules of Civil Procedure and
`subject to the qualifications stated above, Caterpillar states as follows:
`At present, Caterpillar is not aware of any insurance agreement under which an insurance
`business may be liable to satisfy all or part of a possible judgment in the action or to indemnify or
`reimburse for payments made to satisfy any judgment in this action.
`
`-6-
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`

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`Case 1:17-cv-00770-JDW-MPT Document 139-2 Filed 01/23/23 Page 8 of 8 PageID #: 15053
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`POTTER ANDERSON & CORROON LLP
`
`/s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Alan R. Silverstein (#5066)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`asilverstein@potteranderson.com
`
`Attorneys for Defendant Caterpillar Inc.
`
`OF COUNSEL:
`
`James C. Yoon
`Ryan R. Smith
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`jyoon@wsgr.com
`rsmith@wsgr.com
`
`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`lyen@wsgr.com
`
`Dated: October 21, 2021
`
`-7-
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