Case 1:17-cv-00770-JDW-MPT Document 185 Filed 04/10/23 Page 1 of 5 PageID #: 15528
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`WIRTGEN AMERICA, INC.,
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`Plaintiff and Counterclaim
`Defendant,
`
`
`v.
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`CATERPILLAR INC.,
`
`Defendant and Counterclaim
`Plaintiff.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF DELAWARE
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`)
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`C.A. No. 17-770-JDW-MPT
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`JURY TRIAL DEMANDED
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`STIPULATION TO STAY PATENTS FOR CASE NARROWING PURPOSES
`AND [PROPOSED] ORDER
`
`Plaintiff/Counterclaim-Defendant Wirtgen America, Inc. (“Plaintiff” or “Wirtgen
`
`America”), and Defendant/Counterclaim-Plaintiff Caterpillar Inc. (“Defendant” or “Caterpillar”)
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`hereby stipulate and agree as follows:
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`WIRTGEN AMERICA’S ASSERTED PATENTS
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`WHEREAS, Wirtgen America’s Amended Complaint [D.I. 33] asserts the following 13
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`patents against Caterpillar:
`
`Wirtgen Asserted Patents
`7,530,641
`7,828,309
`7,946,788
`8,118,316
`8,113,592
`8,424,972
`8,511,932
`8,690,474
`9,010,871
`9,656,530
`9,879,390
`9,879,391
`RE48,268
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`
`
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`
`
`
`
`WIRTGEN AMERICA, INC.,
`
`Plaintiff and Counterclaim
`Defendant,
`
`
`v.
`
`CATERPILLAR INC.,
`
`Defendant and Counterclaim
`Plaintiff.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR DISTRICT OF DELAWARE
`)
`
`)
`
`)
`
`)
`
`)
`
`)
`C.A. No. 17-770-JDW-MPT
`)
`
`JURY TRIAL DEMANDED
`)
`
`)
`)
`
`)
`
`)
`)
`
`
`
`STIPULATION TO STAY PATENTS FOR CASE NARROWING PURPOSES
`AND [PROPOSED] ORDER
`
`Plaintiff/Counterclaim-Defendant Wirtgen America, Inc. (“Plaintiff” or “Wirtgen
`
`America”), and Defendant/Counterclaim-Plaintiff Caterpillar Inc. (“Defendant” or “Caterpillar”)
`
`hereby stipulate and agree as follows:
`
`WIRTGEN AMERICA’S ASSERTED PATENTS
`
`WHEREAS, Wirtgen America’s Amended Complaint [D.I. 33] asserts the following 13
`
`patents against Caterpillar:
`
`Wirtgen Asserted Patents
`7,530,641
`7,828,309
`7,946,788
`8,118,316
`8,113,592
`8,424,972
`8,511,932
`8,690,474
`9,010,871
`9,656,530
`9,879,390
`9,879,391
`RE48,268
`
`
`
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 185 Filed 04/10/23 Page 2 of 5 PageID #: 15529
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`WHEREAS, in July and August 2022, Caterpillar filed petitions for inter partes review
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`(“IPR”) with the United States Patent and Trademark Office (“Patent Office”) for Wirtgen’s
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`Asserted ’972, ’390, and ’391 Patents;
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`WHEREAS, on January 23, 2023, the Patent Office instituted IPR proceedings on all
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`claims of the ’390 Patent that Wirtgen America asserts against Caterpillar in this case;
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`WHEREAS, on January 31, 2023, the Patent Office instituted IPR proceedings on all
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`claims of the ’391 Patent that Wirtgen America asserts against Caterpillar in this case;
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`WHEREAS, on February 7, 2023, the Patent Office instituted IPR proceedings on claims
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`1-10, 12, 15, 16, 22, 23, 25-27, 30, 31, 33, 34, and 36-40 of the ’972 Patent;
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`WHEREAS, the IPR proceedings for the ’972 Patent include all but one claim that
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`Wirtgen America asserts against Caterpillar in this case, and Caterpillar did not request IPR
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`institution of asserted ’972 claim 13;
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`CATERPILLAR’S ASSERTED PATENTS
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`WHEREAS, Caterpillar’s First Amended Answer to Amended Complaint and
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`Counterclaims [D.I. 62] asserts the following 3 patents against Wirtgen America:
`
`Caterpillar Asserted Patents
`7,523,995
`9,975,538
`9,371,618
`
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`WHEREAS, on August 10, 2022, Wirtgen America filed IPR petitions with the Patent
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`Office for Caterpillar’s Asserted ’995, ’538, and ’618 Patents;
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`WHEREAS, on March 9, 2023, the Patent Office denied Wirtgen America’s petition
`
`regarding the ’618 Patent;
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`WHEREAS, on March 10, 2023, the Patent Office instituted IPR proceedings on all
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`claims of the ’995 Patent that Caterpillar asserts against Wirtgen America in this case;
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`2
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`Case 1:17-cv-00770-JDW-MPT Document 185 Filed 04/10/23 Page 3 of 5 PageID #: 15530
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`WHEREAS, on March 14, 2023, the Patent Office instituted IPR proceedings on all
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`claims of the ’538 Patent that Caterpillar asserts against Wirtgen America in this case;
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`CASE NARROWING
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`WHEREAS, during the January 25, 2023, claim construction hearing, the parties
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`discussed with the Court case narrowing and reducing the number of asserted claims in this
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`litigation;
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`WHEREAS, following the claim construction hearing, the parties met and conferred and
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`agreed to limit the number of asserted claims to no more than eight per patent;
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`WHEREAS, subsequent to that initial case narrowing, the parties again met and
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`conferred regarding further narrowing of the scope of issues for trial by staying those patents
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`subject to pending IPR proceedings before the Patent Office;
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`WHEREAS, the IPR proceedings currently pending for the Patent Office will not all
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`conclude prior to the February 2024 trial date in this case;
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`WHEREAS, the parties agreed that because all asserted claims of the ’538, ’995, ’390,
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`and ’391 Patents are each subject to pending IPR proceedings in the Patent Office, staying those
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`patents would likely (1) substantially narrow the disputed issues for trial, (2) substantially reduce
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`the burden of litigation on the parties (including, without limitation, reducing the amount of fact
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`discovery needed regarding the parties’ respective contentions and also reducing the amount of
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`expert discovery needed), and (3) realize significant judicial economies (by, for example,
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`reducing the amount of dispositive motions filed with the Court as well as likely eliminating
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`patents from the case entirely);
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`WHEREAS, the parties both strongly desire to have a jury trial in February of 2024 and
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`in no way seek to delay resolution of the dispute between the parties;
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`3
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`Case 1:17-cv-00770-JDW-MPT Document 185 Filed 04/10/23 Page 4 of 5 PageID #: 15531
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`WHEREAS, the parties disagree as to whether the ’972 Patent should be stayed and
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`propose addressing such as described below;
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`NOW, THEREFORE, it is hereby stipulated and agreed that:
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` The ’538, ’995, ’390, and ’391 Patents should be stayed pending the conclusion of
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`all pending IPRs;
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` Following the conclusion of all IPRs on the ’538, ’995, ’390, and ’391 Patents,
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`the parties will submit a joint notice to the Court proposing a plan for lifting the
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`stay and proceeding on those patents if necessary; and
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` The parties will submit a joint letter to the Court regarding their respective
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`positions on staying the ’972 Patent no later than 14 days after filing this
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`Stipulation with the Court.
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`4
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`Case 1:17-cv-00770-JDW-MPT Document 185 Filed 04/10/23 Page 5 of 5 PageID #: 15532
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`Dated: April 10, 2023
`/s/ Adam W. Poff
`
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`Rodney Square
`1000 North King Street
`Wilmington, Delaware 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
`OF COUNSEL:
`
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Dominic A. Rota
`Mark A. Kilgore
`Patterson Intellectual Property Law, P.C.
`Roundabout Plaza
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`
`
`
`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
`
`
`Attorneys for Plaintiff/Counterclaim-Defendant
`Wirtgen America, Inc.
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`
`
`/s/ Andrew L. Brown
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, Delaware 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`OF COUNSEL:
`
`James C. Yoon
`Christopher D. Mays
`Wilson Sonsini Goodrich & Rosati, P.C.
`650 Page Mill Road
`Palo Alto, California 94304
`Tel: (650) 493-9300
`
`Ryan R. Smith
`Wilson Sonsini Goodrich & Rosati, P.C.
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`Tel: (206)-883-2500
`
`Lucy Yen
`Wilson Sonsini Goodrich & Rosati, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, New York 10019
`Tel: (212) 999-5800
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`Attorneys for Defendant and
`Counterclaimant Caterpillar Inc.
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`SO ORDERED this _____ day of _________________, 2023.
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`10736293
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`______________________________________
`The Honorable Joshua D. Wolson
`United States District Judge
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`5
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