Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 1 of 25 PageID #: 15063
`
`WIRTGEN AMERICA, INC.
`
`
`Plaintiff/Counterclaim-Defendant,
`
`
`
`v.
`
`
`CATERPILLAR INC.
`
`
`
`
`
`
`
`C.A. No. 1:17-cv-00770-JDW-MPT
`
`JURY TRIAL DEMANDED
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Defendant/Counterclaim-Plaintiff.
`
`
`
`PLAINTIFF/COUNTERCLAIM-DEFENDANT WIRTGEN AMERICA, INC.’S NOTICE
`OF RULE 30(b)(6) DEPOSITION OF DEFENDANT/COUNTERCLAIM-PLAINTIFF
`CATERPILLAR INC.
`
`
`
`
`PLEASE TAKE NOTICE that, pursuant to Rule 30(b)(6) of the Federal Rules of Civil
`
`Procedure and the applicable Local Civil Rules of the United States District Court for the District
`
`of Delaware, Plaintiff/Counterclaim-Defendant Wirtgen America, Inc. (“Wirtgen America”), by
`
`and
`
`through
`
`its attorneys, will
`
`take
`
`the deposition upon oral examination of
`
`Defendant/Counterclaim-Plaintiff Caterpillar Inc. (“Caterpillar”) at a date and time mutually
`
`agreed upon by the parties and continuing from day to day thereafter until completed. The
`
`deposition will be conducted before an officer authorized by law to administer oaths and will be
`
`recorded by stenographic, sound, video, audiovisual, and/or any other appropriate means. The
`
`deposition will be taken for the purposes of discovery, for use at trial in these actions, and for any
`
`purposes permitted under the Federal Rules of Civil Procedure.
`
`As required by Rule 30(b)(6), Caterpillar shall designate one or more knowledgeable
`
`persons to testify on its behalf with respect to the matters set forth in Schedule A attached hereto,
`
`and the person(s) so designated shall be required to testify as to those matters known or reasonably
`
`available to Caterpillar.
`
`1
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 2 of 25 PageID #: 15064
`
`Dated: January 24, 2023
`
`OF COUNSEL:
`
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`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/Samantha G. Wilson
`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
`
`
`
`
`
`
`
`2
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 3 of 25 PageID #: 15065
`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 3 of 25 PagelD #: 15065
`
`SCHEDULE A
`SCHEDULE A
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 4 of 25 PageID #: 15066
`
`SCHEDULE A
`
`DEFINITIONS AND INSTRUCTIONS
`
`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 portion of the Topic you are unable to prepare for, and provide any information
`
`you have regarding that portion.
`
`2. 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
`
`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.
`
`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 a 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
`
`
`
`1
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 5 of 25 PageID #: 15067
`
`you attribute to those words, terms, or phrases for purposes of your testimony pertaining
`
`thereto.
`
`6. The term “Action” refers to Wirtgen America, Inc. v. Caterpillar Inc., Civil Action
`
`No. 17-770-JDW-MPT (D. Del.).
`
`7. The terms “You,” “Your,” “Caterpillar,” and “Defendant” refer to Caterpillar Inc.,
`
`its predecessors or successor corporations, and any of its subsidiaries, divisions, affiliates,
`
`foreign affiliates, present and former agents, employees, directors, trustees, attorneys,
`
`representatives, research and development personnel, and any person or entity acting in concert
`
`with Caterpillar or on behalf of Caterpillar.
`
`8. The terms “Plaintiff,” “Wirtgen,” and “Wirtgen America” refer to Wirtgen
`
`America, Inc., its predecessors or successor corporations, and any of its subsidiaries, divisions,
`
`affiliates, foreign affiliates, present and former agents, employees, directors, trustees,
`
`attorneys, representatives, research and development personnel, and any person or entity acting
`
`in concert with Wirtgen America or on behalf of Wirtgen America.
`
`9. The terms “Road Milling Machine(s)” and “Cold Planer Machine(s)” mean any
`
`product, or component thereof, that has been, or is capable of being, used to remove, i.e., mill,
`
`all or a portion of an existing paved surface.
`
`10. The term “Road Working Machine” means any product, or component thereof that
`
`has been, or is capable of being, used to work a road surface or an untreated ground surface,
`
`such as a Road Milling Machine, rotary mixer, reclaimer, recycler, or stabilizer, which is
`
`supported on Adjustable Lifting Members (as defined herein) and corresponding wheels or
`
`tracks, with a rotor, such as a milling drum, for working a road surface or an untreated ground
`
`surface.
`
`
`
`2
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 6 of 25 PageID #: 15068
`
`11. The term “Wirtgen America’s Asserted Patents” means U.S. Patent Nos. 7,828,309
`
`(the “’309 Patent”), 8,118,316 (the “’316 Patent”), 7,530,641 (the “’641 Patent”), 8,113,592
`
`(the “’592 Patent”), 9,010,871 (the “’871 Patent”), 9,656,530 (the “’530 Patent”), 7,946,788
`
`(the “’788 Patent”), 8,511,932 (the “’932 Patent”), 8,690,474 (the “’474 Patent”), RE48,268
`
`(the “’268 Patent”), 8,424,972 (the “’972 Patent”), 9,879,390 (the “’390 Patent”), and
`
`9,879,391 (the “’391 Patent”).
`
`12. The term “Wirtgen America’s Patented Technology” means any technology,
`
`products, or services embodying any claim of any of Wirtgen America’s Asserted Patents, in
`
`whole or in part.
`
`13. The term “Accused Wirtgen Product(s)” refers to any one or all of the “Accused
`
`Products,” as defined in Caterpillar’s Amended Counterclaims (D.I. 62, at PageID #: 9842-
`
`9851 (¶¶1-35)), or any one or all of the accused products set forth in Caterpillar’s
`
`“Identification of Asserted Patents and Accused Products,” dated October 28, 2021.
`
`14. The term “Adjustable Lifting Member(s)” means any apparatus that has been, or is
`
`capable of being, used to adjust a distance between a track or wheel and a frame of a Road
`
`Working Machine, including without limitation lifting columns or legs.
`
`15. The term “Lifting Position Control System” means any system that has been, or is
`
`capable of being, used to control a distance between a track or wheel and a frame of a Road
`
`Working Machine, including without limitation a controller that receives signals from distance,
`
`height, or angle sensors, such as leg extension sensors, gyroscope sensors, track angle sensors,
`
`side plate sensors, and moldboard sensors, that provide information about the position of the
`
`Road Working Machine frame relative to the ground, wheels, or tracks and that outputs signals
`
`to control the position of the frame in response to the received signals.
`
`
`
`3
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 7 of 25 PageID #: 15069
`
`16. The term “Damage Avoidance Functionality” means any product, or component
`
`thereof, hardware or software, that has been, or is capable of being, used to, in response to
`
`detecting a potentially damaging or dangerous event, automatically stop or uncouple a
`
`component of a Road Working Machine, including without limitation stopping or uncoupling
`
`a milling drum and/or drive unit from an engine, automatically raising the milling drum, or
`
`generating an alarm, including without limitation an automatic rotor disengagement feature.
`
`17. The term “Hydraulically Stabilized Chassis” means any apparatus or control system
`
`of a Road Working Machine including four tracks or wheels each with a hydraulic cylinder
`
`that supports a portion of the Road Working Machine above the ground and causes the
`
`displacement of a hydraulic cylinder relative to at least one other hydraulic cylinder, that has
`
`been, or is capable of being, used to stabilize, support, or level a Road Working Machine,
`
`including without limitation a ride control feature.
`
`18. The term “Sensor Switching Functionality” means any product, or component
`
`thereof, hardware or software, that has been, or is capable of being, used to switch between
`
`sensors used for grade and/or slope control by a Road Working Machine while working a
`
`ground surface, such as during milling, stabilizing, or other operations where a milling drum
`
`or rotor engages or works a ground surface, without creating a deviation in the worked,
`
`stabilized, or milled surface.
`
`19. The term “Vibration Mounting Functionality” means any product, or component
`
`thereof, hardware or software, that has been, or is capable of being, used in a Road Working
`
`Machine’s drive train mounting and arrangement, that reduces transmission of vibrations from
`
`components of the drive train, such as the drive engine, to the machine frame.
`
`
`
`4
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 8 of 25 PageID #: 15070
`
`20. The term “Caterpillar’s Counter-Asserted Patents” means U.S. Patent Nos.
`
`7,523,995 (the “’995 Patent”), 9,975,538 (the “’538 Patent”), and 9,371,618 (the “’618
`
`Patent”).
`
`21. The term “Caterpillar’s Patented Technology” means any technology, products, or
`
`services embodying any claim of any of Caterpillar’s Counter-Asserted Patents, in whole or in
`
`part.
`
`22. The term “Accused Caterpillar Product(s)” refers to any one or all of the “Large
`
`Infringing Products” and the “Compact Infringing Products,” as defined in Wirtgen America’s
`
`Amended Complaint (D.I. 33, at PageID#: 2369 (¶¶12-13)), or any one or all of the accused
`
`products set forth in Wirtgen America’s “Identification of Accused Products and Asserted
`
`Patents,” dated October 28, 2021. The term “Accused Caterpillar Product(s)” further refers to
`
`any one or all of Caterpillar’s Road Working Machines, including Road Milling Machines,
`
`rotary mixers, reclaimers, recyclers, or stabilizers, which are supported on Adjustable Lifting
`
`Members and corresponding wheels or tracks, with a rotor, such as a milling drum, for working
`
`a road surface, that use or include Wirtgen America’s Patented Technology. The term
`
`“Accused Product(s)” shall include, without limitation, products designed, labeled, and marked
`
`as being part of the Caterpillar PM300 Series, PM600 Series, and PM800 Series of Cold Planer
`
`Machines, the Caterpillar RM600 Series and RM800 Series of Reclaimers, and components of
`
`each thereof, including without limitation the following products:
`
`a. Caterpillar’s PM310 Cold Planer Machines;
`
`b. Caterpillar’s PM312 Cold Planer Machines;
`
`c. Caterpillar’s PM620 Cold Planer Machines;
`
`d. Caterpillar’s PM622 Cold Plainer Machines;
`
`
`
`5
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 9 of 25 PageID #: 15071
`
`e. Caterpillar’s PM820 Cold Planer Machines;
`
`f. Caterpillar’s PM822 Cold Planer Machines;
`
`g. Caterpillar’s PM825 Cold Planer Machines;
`
`h. Caterpillar’s RM600 Reclaimers; and
`
`i. Caterpillar’s RM800 Reclaimers.
`
`23. The term “Pivoting Swing Leg” refers to any apparatus or control system that has
`
`been, or is capable of being, used to pivot or swing a Road Working Machine’s tracked or
`
`wheeled support unit(s) between a projecting position and a retracted position in a flexible,
`
`controlled manner, while maintaining a rotational or traveling direction of the support unit(s).
`
`24. The term “Variable Speed Transmission” refers to any apparatus or control system,
`
`or component thereof, hardware or software, that has been, or is capable of being, used in
`
`connection with adjusting an engine speed or a transmission ratio of a Road Working Machine
`
`having a transmission with a changeable transmission ratio (e.g., variable transmission, multi-
`
`speed transmission, powershift transmission) that improves the Road Working Machine’s
`
`performance and optimizes fuel efficiency.
`
`25. The term “Water-Spray System” refers to any apparatus or control system that has
`
`been, or is capable of being, used to deliver fluid (e.g., water), at a desired pressure, to various
`
`structural components on, within, or about the Road Working Machine, including (without
`
`limitation), a milling-drum housing (or protective hood), a lower (or intermediate stage)
`
`conveyor, or an upper (or final stage) conveyor, and any transition therebetween.
`
`26. The term “Asserted Patents” shall collectively mean Wirtgen America’s Asserted
`
`Patents and Caterpillar’s Counter-Asserted Patents.
`
`
`
`6
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 10 of 25 PageID #: 15072
`
`27. The term “Feature(s)-At-Issue” shall mean any one or all of the Adjustable Lifting
`
`Member(s), Lifting Position Control System, Damage Avoidance Functionality, Hydraulically
`
`Stabilized Chassis, Vibration Mounting Functionality, and/or Sensor Switching Functionality
`
`features individually, or collectively.
`
`28. The term “Software” means executable programs and/or routines that direct a
`
`computer to perform specific functions related to any one of Adjustable Lifting Member(s),
`
`Lifting Position Control System, Damage Avoidance Functionality, Hydraulically Stabilized
`
`Chassis, Vibration Mounting Functionality, Sensor Switching Functionality, Pivoting Swing
`
`Leg, Variable Speed Transmission, and/or Water-Spray System, and all related data files,
`
`databases, and libraries. Examples of Software include, without limitation, operating systems,
`
`kernels, microkernels, firmware, platform software, middleware, drivers, libraries, files, and/or
`
`applications.
`
`29. 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 assembly programming languages. Source Code files further include “include” files,
`
`“make” 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,
`
`including but not limited to, Register Transfer Level (“RTL”) descriptions. Source Code files
`
`
`
`7
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 11 of 25 PageID #: 15073
`
`further include, without limitation, test benches, validation tests, functional tests, circuit
`
`models, and simulation models.
`
`30. The
`
`term
`
`“Wirtgen America’s
`
`Invalidity Contentions”
`
`refers
`
`to
`
`Plaintiff/Counterclaim-Defendant Wirtgen America, Inc.’s Initial Invalidity Contentions,
`
`dated April 1, 2022, including any amendments or supplements thereto.
`
`31. The terms “infringe,” “infringed,” and “infringement” means direct infringement,
`
`contributory infringement, inducement of infringement, literal infringement, and infringement
`
`under the doctrine of equivalents. See 35 U.S.C. § 271.
`
`32. 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.
`
`33. The term “mark” and “marking” mean any means of giving notice, of patentable
`
`rights, to the public, pursuant to 35 U.S.C. § 287, including either by fixing on a patented
`
`article the word “patent” or the abbreviation “pat.”, together with the number of the patent, or
`
`by fixing on the patented article the word “patent” or the abbreviation “pat.” together with an
`
`address of a posting on the Internet, accessible to the public without charge for accessing the
`
`address, that associates the patented article with the number of the patent, or when, from the
`
`character of the article, this cannot be done, by fixing to it, or to the package wherein one or
`
`more of them is contained, a label containing a like notice.
`
`34. The term “objective indicia of non-obviousness” means any documents or
`
`communications supporting the validity of Caterpillar’s Counter-Asserted Patents, including
`
`without limitation: evidence of copying of the commercial embodiments of any claim of
`
`Caterpillar’s Counter-Asserted Patents; evidence that the commercial embodiments of any
`
`claim of Caterpillar’s Counter-Asserted Patents are commercially successful; evidence that any
`
`
`
`8
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 12 of 25 PageID #: 15074
`
`claim of Caterpillar’s Counter-Asserted Patents met a long-felt but unmet need in the
`
`technology space; evidence that others failed to solve the long-felt need addressed by any claim
`
`of Caterpillar’s Counter-Asserted Patents; evidence that any claim of Caterpillar’s Counter-
`
`Asserted Patents exhibits unexpected superiority; evidence that experts initially expressed
`
`skepticism of any claim of Caterpillar’s Counter-Asserted Patents; evidence that others taught
`
`away from any claim of Caterpillar’s Counter-Asserted Patents; and/or evidence that any claim
`
`of Caterpillar’s Counter-Asserted Patents has been praised by others.
`
`35. The term “document” refers to the broadest definition of document under the
`
`Federal Rules of Civil Procedure and any interpretive case law 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.
`
`36. The term “communication(s)” means all written, electronic, oral, telephonic, or
`
`other
`
`inquiries, dialogues, conversations,
`
`interviews, correspondence, consultations,
`
`negotiations, agreements, understandings, meetings, letters, notes, telegrams, advertisements,
`
`computer mail, email, texts, electronic communications, and all other documents evidencing
`
`any verbal or nonverbal interaction between persons and entities.
`
`
`
`9
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 13 of 25 PageID #: 15075
`
`37. The term “thing(s)” shall be construed under the broadest possible construction
`
`under the Federal Rules of Civil Procedure.
`
`38. The term “person(s)” means any natural person or group of natural persons.
`
`39. 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.
`
`40. The term “third party” or “third parties” means any person or entity other than
`
`Plaintiff and Defendant.
`
`41. The term “customer(s)” refers to any of Caterpillar’s customers, that customer’s
`
`subsidiaries, divisions, predecessor and successor companies, affiliates, parents, any
`
`partnership or joint venture to which it may be a party, and each of its employees, agents,
`
`officers, directors, representatives, consultants, accountants, attorneys, and any person or entity
`
`acting in concert with Caterpillar or on behalf of Caterpillar, including any person or entity
`
`who served in any of these capacities during any relevant time period.
`
`42. The terms “include” and “including” mean include or including without limitation.
`
`43. The terms “each” and “any” mean any and all.
`
`44. The terms “use” and “using” shall include, without limitation, customer use, use in
`
`testing, use in demonstrating, and use in training.
`
`45. The terms “sell,” “sale,” and “sold” mean selling, leasing, and transferring title.
`
`46. The term “U.S.” shall be interpreted as the United States of America, including all
`
`fifty states, the District of Columbia, and Puerto Rico.
`
`47. The terms “relate to,” “related to,” or “relating to” mean, in whole or in part,
`
`constituting, containing, embodying,
`
`reflecting, describing, analyzing,
`
`identifying,
`
`
`
`10
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 14 of 25 PageID #: 15076
`
`mentioning, stating, referring directly or indirectly to, dealing with, or in any way pertaining
`
`to.
`
`48. The terms “identify” and “identification,” when used with respect to a person, 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.
`
`49. The terms “identify” and “identification,” 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), and recipient(s), and (5) Bates number.
`
`50. The terms “identify” and “identification,” when used with respect to a
`
`communication, 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 the communication.
`
`51. The terms “identify” and “identification,” when used with respect to a product,
`
`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.
`
`52. The term “date” shall mean the exact day, month, year, if ascertainable, or, if not,
`
`the best approximation thereof.
`
`53. The words “and” and “or” shall be interpreted either conjunctively or disjunctively,
`
`whichever makes the Interrogatory most inclusive.
`
`
`
`11
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 15 of 25 PageID #: 15077
`
`54. 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 for Examination.
`
`55. The use of the present tense or the past tense herein shall be interpreted to include
`
`the present tense and the past tense, so as not to exclude any information otherwise within the
`
`scope of any Topic for Examination.
`
`56. All pronouns shall be construed to refer to the masculine, feminine, or neuter
`
`gender, in singular or plural, as in each case makes the Interrogatory more inclusive.
`
`57. Any term not specifically defined herein is to be defined in accordance with the
`
`Federal Rules of Civil Procedure
`
`TOPICS FOR EXAMINATION
`
`1. Your corporate and organizational structure including identification of each of
`
`Your business units, subsidiaries, and Affiliates, their legal and business relationship with one
`
`another, the geographical locations and facilitates at which each conducts or has conducted its
`
`business activities, and the organizational structure of each with respect to decision making
`
`and employment of labor.
`
`2. The business relationship between Caterpillar, Inc. and
`
`a. CTCT;
`
`b. Caterpillar dealers.
`
`3. The road construction industry, including without limitation, the road milling
`
`industry and the road reclamation and soil stabilization industry in the U.S.
`
`12
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 16 of 25 PageID #: 15078
`
`4. Communications between You and any Third Party relating to the Accused Wirtgen
`
`Products, the Accused Caterpillar Products, Wirtgen America’s Asserted Patents or
`
`Caterpillar’s Counter-Asserted Patents.
`
`5. The development, manufacture, marketing, sale, or use within the United States of
`
`the Accused Caterpillar Products and Caterpillar’s Patented Technology, including
`
`Caterpillar’s Road Working Machine Products.
`
`6. Any contract(s), license(s), agreement(s), purchase order(s), invoice(s), or other
`
`agreement(s) regarding the development, manufacture, marketing, sale, offer for sale, or
`
`importation into the United States of the Accused Caterpillar Products and Caterpillar’s
`
`Patented Technology, including Caterpillar’s Road Working Machine Products.
`
`7. Caterpillar, Inc.’s relationships with its distributors, dealers, sales representatives,
`
`or end-users regarding any of the Features-At-Issue that are included, have been included, may
`
`be included in the future, or that have been considered for inclusion in any of the Accused
`
`Caterpillar Products, including but not limited to, how ownership of the Accused Caterpillar
`
`Products transfers from one entity to another, and Caterpillar Inc.’s role and the role of
`
`Caterpillar Financial Services Corp. in financing the sale, rental, or lease of the Accused
`
`Caterpillar Products to Dealers and to other Third Parties.
`
`8. The existence, identity, and location of documents sought in Wirtgen America,
`
`Inc.’s Requests for Production to Defendant/Counterclaim-Plaintiff Caterpillar Inc. (Nos. 1-
`
`167).
`
`9. The substance and content of Caterpillar’s responses to Wirtgen’s Interrogatories.
`
`10. All activities undertaken to satisfy Your Document-related discovery obligations in
`
`this Action, including the identity and location of all Documents and sources of Documents
`
`
`
`13
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 17 of 25 PageID #: 15079
`
`that You identified and/or searched in responding to Wirtgen’s discovery requests, the
`
`sufficiency and completeness of Your responses to discovery requests, the identity of all
`
`Persons who provided information or Documents for response to a discovery request, and all
`
`steps that You have taken to obtain consent from any Third Party to produce in this Action
`
`such Documents or materials.
`
`11. Any past, present, or planned sales or offers to sell the Accused Caterpillar Products
`
`or Caterpillar’s Patented Technology, including Caterpillar’s Road Working Machine
`
`Products, in the United States, including the volume of sales by units, revenue, and profit.
`
`12. Profit margin, by machine and by feature, for each of the Accused Caterpillar
`
`Products and each machine that includes Caterpillar’s Patented Technology.
`
`13. Expected and actual spare part revenue and profit, by machine and by feature, for
`
`each of the Accused Caterpillar Products and each machine that includes Caterpillar’s Patented
`
`Technology
`
`14. Forecasts, product roadmaps, projections, and production timelines for the Accused
`
`Caterpillar Products and Caterpillar’s Patented Technology, including Caterpillar’s Road
`
`Working Machine Products, in the United States, including the expected timing and forecasts
`
`of sales by unit volume, revenue, and profit.
`
`15. The market and customer demand for the Accused Caterpillar Products and
`
`Caterpillar’s Patented Technology in the United States.
`
`16. Any past, present, or planned marketing or advertising in the United States of the
`
`Accused Caterpillar Products and Caterpillar’s Patented Technology, including those involved
`
`in the marketing strategy, as well as marketing and advertising expenditures.
`
`17. Marking by Caterpillar regarding each of Caterpillar’s Counter-Asserted Patents.
`
`
`
`14
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 18 of 25 PageID #: 15080
`
`18. The identities of your five largest distributors, dealers, or sales representatives, and
`
`the five largest anticipated distributors, dealers, or sales representatives, of the Accused
`
`Caterpillar Products.
`
`19. The design and functionality (both hardware and software) of any of the Features-
`
`At-Issue that are included, or that may be included in the future in each of the Accused
`
`Caterpillar Products.
`
`20. The design and functionality (both hardware and software) of any of Caterpillar’s
`
`Patented Technology.
`
`21. Any future plans to alter the design or functionality (both hardware and software)
`
`of any of the Features-At-Issue that are included in any of the Accused Caterpillar Products.
`
`22. Drivers of demand of the Accused Caterpillar Products and Caterpillar’s Patented
`
`Technology.
`
`23. The development, design and specification of components for the pump drive,
`
`clutch, sheaves, pump drive mounting, engine mounts, flexible coupling to the engine,
`
`including without limitation communications with suppliers and proposed suppliers, for the
`
`Vibration Mounting Functionality, that are included, have been included, may be included in
`
`the future, or that have been considered for inclusion in any of the Accused Caterpillar
`
`Products.
`
`24. All research, development, evaluations, reverse engineering, disassembly, or
`
`analysis conducted by you or on your behalf of any Wirtgen America Road Working Machine
`
`or part thereof, including the identity, and general responsibilities, of the personnel who have
`
`been or are responsible for researching and testing any Wirtgen America Road Working
`
`Machine.
`
`
`
`15
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 142 Filed 01/24/23 Page 19 of 25 PageID #: 15081
`
`25. The past, current, and planned manufacturing locations of the Accused Caterpillar
`
`Products.
`
`26. Financial projections and estimates of future revenue and profit associated with
`
`sales of the Accused Caterpillar Products and Caterpillar’s Patented Technology.
`
`27. The current or anticipated pricing of the Accused Caterpillar Products and
`
`Caterpillar’s Patented Technology.
`
`28. The date and circumstances whereby you first became aware of each of Wirtgen
`
`America’s Asserted Patents and any steps you took in response to learning of these patents.
`
`29. Any investigation or analysis taken by you or on your behalf, including obtaining
`
`opinions of counsel, regarding the validity, enforceability, scope, or infringement of any claim
`
`of Wirtgen America’s Asserted Patents, including any efforts to compare or contrast the
`
`Accused Caterpillar Products with any of the claims of Wirtgen America’s Asserted Patents,
`
`including the person(s) involved and the nature of