Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 1 of 12 PageID #:
`15551
`
`EXHIBIT A
`
`
`15551
`
`EXHIBIT A
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 2 of 12 PageID #:
`15552
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`Page 1
`
` IN THE UNITED STATES DISTRICT COURT
` FOR THE DISTRICT OF DELAWARE
`____________________________________
`WIRTGEN AMERICA, INC., )
` Plaintiff/Counter-Defendant )
`vs. ) Case No.
`CATERPILLAR, INC., ) 1:17-cv-00770-JDW
` Defendant/Counter-Plaintiff. )
`____________________________________)
`
` CONFIDENTIAL - ATTORNEYS' EYES ONLY
` Video Recorded Deposition of:
` JAN SCHMIDT
` Rule 30(b)(6) Designee of Wirtgen America, Inc.
` Taken on behalf of the Defendant/Counter-Plaintiff
` Wednesday, March 29, 2023
`
`Court Stenographer:
`Virginia Dodge, RDR, CRR, LCR
`______________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 3 of 12 PageID #:
`15553
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`APPEARANCES:
`
`Page 2
`
`For the Plaintiff/Counter-Defendant:
` Ryan D. Levy, Esq.
` Patterson Intellectual Property Law, P.C.
` 1600 Division Street
` Suite 500
` Nashville, TN 37203
` (615) 242-2400
` rdl@iplawgroup.com
`
`For the Defendant/Counter-Plaintiff:
` Christopher D. Mays, Esq.
` Wilson Sonsini Goodrich & Rosati
` 650 Page Mill Road
` Palo Alto, CA 94304
` (650) 849-3088
` cmays@wsgr.com
`
`Also Present
` Rudy Smith, Videographer
`
`1
`
`2 3
`
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 4 of 12 PageID #:
`15554
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`Page 9
` A. I had a conversation with some colleagues in
`particular about the operations of certain features on
`certain models of our milling equipment.
` Q. And what were the names of those colleagues
`that you had conversations with?
` A. That would have been Nick Maupin.
` Q. Could you spell his name for the record?
` A. N-I-C-K M-A-U-P-I-N.
` And Corey, C-O-R-E-Y. Same last name.
` Q. Besides Nick and Corey Maupin, did you speak
`with any other colleagues regarding your preparation
`for today's deposition?
` A. I did have a conversation with Sandy Draper.
` Q. Did you have any conversations with any other
`individuals?
` A. No.
` Q. Did you have any conversations with any
`individuals employed by Wirtgen GmbH?
` A. No.
` Q. You didn't speak with Gunter Hahn in
`preparation for your deposition today?
` A. No.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 5 of 12 PageID #:
`15555
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`Page 10
` Q. And you didn't speak with Christian Berning --
` A. No.
` Q. -- in preparation for your deposition today?
` I think you also mentioned that you met with
`your attorneys in preparation for your deposition
`today?
` A. That's correct.
` Q. About how long did you meet with your
`attorneys for to prepare for today's deposition?
` A. About six hours.
` Q. And which attorneys did you meet with?
` A. Seth Ogden, Ryan, and then there were two
`other individuals yesterday. I can't --
` ATTORNEY LEVY: They're associates.
` A. -- John --
` Yeah. Okay.
` Q. (By Attorney Mays) During that preparation,
`did you meet with any other individuals besides
`attorneys?
` A. No.
` Q. Mr. Schmidt, can you tell me what your
`education background is?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 6 of 12 PageID #:
`15556
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`Page 44
`with regards to the '530 patent that's Exhibit 16.
` A. As I've stated before, we have very frequent,
`consistent, regular dialogue with our colleagues at the
`factory.
` THE VIDEOGRAPHER: Your mic.
` THE WITNESS: Oh, I'm sorry. Whoops. It got
`stuck under the --
` THE VIDEOGRAPHER: Just a second here. There
`you go.
` THE WITNESS: Do we need to start again? I
`don't know when you lost me.
` THE VIDEOGRAPHER: Repeat your answer,
`please.
` THE WITNESS: I'm sorry?
` THE VIDEOGRAPHER: Repeat your answer,
`please.
` A. As I stated before, we have regular,
`frequent, ongoing dialogue with colleagues at Wirtgen
`GmbH, as we do with all our factories, from the sales,
`from the service, from the training, even from the
`parts side, on all ongoing aspects of our business,
`which involves products that our customers buy, that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 7 of 12 PageID #:
`15557
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`Page 45
`
`our dealers sell.
` And when suggestions, ideas, concepts, since
`we're talking about conception here, are brought to us,
`we can communicate those verbally, by phone, in a
`conversation, in a personal conversation, in a Teams
`meeting, by email, by any other means of communication
`to those individuals. And for me to have specific
`knowledge of which conversation and dialogue took place
`or if it took place, that's not possible.
` Q. (By Attorney Mays) Okay. So, Mr. Schmidt,
`I'm not asking for speculation as to what might have
`occurred. I'm asking a very specific question. Let me
`drill it down.
` What knowledge does Wirtgen America have
`about how Peter Busley conceived of the claims of the
`'530 patent?
` A. So as an example, I mean from just part of
`what I'm reading here about -- again, I'm not a patent
`expert, but it refers to wire rope sensor that is used
`to indicate the position.
` So I personally have been involved in
`conversations about milling machines and recyclers
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 8 of 12 PageID #:
`15558
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`Page 100
` Q. And, Mr. Schmidt, do you remember the time
`frame of those conversations?
` A. Probably early -- late '90s, early 2000s.
`But I'm --
` Q. Does Wirtgen America have any other knowledge
`regarding how the claims of the '268 patent were
`conceived?
` A. No.
` Q. And does Wirtgen America have any other
`information regarding how the inventors went from
`conception to actually getting the invention to work?
` A. No.
` Q. We can set that aside.
` Handing you what's been previously marked as
`United States -- or I'm sorry -- Defendant's
`Exhibit 27. Sorry. Copy for counsel. United States
`Patent 9,879,391.
` And one question for you, Mr. Schmidt. I
`think you said before that Christian Berning is still
`with Wirtgen. Is that correct?
` A. That is correct.
` Q. But you haven't had any conversations with
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 9 of 12 PageID #:
`15559
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`Page 101
`Mr. Berning about any of these patents; is that right?
` A. That is correct.
` Q. Presumably, though, you could have called him
`up and asked him if you --
` ATTORNEY LEVY: Objection. Form.
` Q. (By Attorney Mays) -- if you wanted to,
`correct?
` A. If I needed to, I could have. Yes.
` Q. So same questions with regards to this '391
`patent. How did Mr. Berning have the -- first have the
`nugget of conception regarding the '391 patent?
` ATTORNEY LEVY: Objection. Form.
` A. The function of rate control is direct
`related to the quality of the product that a milling
`machine produces. If the machine doesn't cut deep
`enough or cuts too deep or undulates up and down and
`cuts an uneven surface, the product integrity is
`affected. In some cases, there's a penalty involved if
`the surface is too uneven.
` So maintaining depth of cut and maintaining
`an accurate consistent depth of cut has been a
`conversation for many, many, many years, many decades,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 10 of 12 PageID #:
`15560
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`Page 116
`response to these interrogatories from Christian
`Berning on or before December 19, 2022; is that
`correct?
` ATTORNEY LEVY: Objection. Form.
` A. Again, this was done by Sterne Kessler in
`Washington. So I don't know exactly if they -- if or
`when they had dialogue with Christian Berning.
` Q. (By Attorney Mays) Well, my question to you
`before was whether Wirtgen America had solicited the
`assistance of Christian Berning in answering
`interrogatory number 6. Was my understanding correct
`that Christian Berning assisted in answering that
`interrogatory?
` A. Wirtgen America did not directly reach out to
`Christian Berning. That's -- I didn't say that.
` Q. But Christian Berning was solicited in
`answering this interrogatory?
` A. He would be one of the people, yes.
` Q. Was Dr. Hahn solicited in answering this
`interrogatory?
` A. I would expect so.
` Q. Was Dr. Hahn solicited in answering any other
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 11 of 12 PageID #:
`15561
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
`Page 118
`Mr. Berning and Dr. Hahn to be individuals that would
`have been solicited.
` Q. (By Attorney Mays) And you agree that they
`were solicited?
` ATTORNEY LEVY: Objection. Form, misstates
`previous testimony.
` A. That's not what I said.
` Q. (By Attorney Mays) I'm asking you now. Do
`you agree that they were solicited in answering --
` A. I don't know.
` Q. -- interrogatory 6?
` A. I don't know.
` Q. That was speculation on your part?
` ATTORNEY LEVY: Objection. Form.
` A. As being named as individuals for these
`patents and being part of the engineering group at the
`factory at Wirtgen GmbH, I would expect them to be the
`individuals solicited in collecting any information
`relevant to the patents.
` Q. (By Attorney Mays) What information does
`Wirtgen America have that any of the patents listed in
`the table at pages 18 and 19 of Exhibit 117 are
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 189-1 Filed 04/14/23 Page 12 of 12 PageID #:
`15562
`Wirtgen America Inc. v. Caterpillar Inc.
`Confidential - Attorneys' Eyes Only
`
`Jan Schmidt 30(b)(6)
`
`3/29/2023
`
` C E R T I F I C A T E
`
`Page 258
`
` I, Virginia Dodge, Registered Diplomate
`Reporter and Tennessee Licensed Court Reporter and
`Notary Public, do hereby certify that I recorded to the
`best of my skill and ability by machine shorthand the
`deposition contained herein, that same was reduced to
`computer transcription by myself, and that the
`foregoing is a true, accurate and complete transcript
`of the deposition testimony heard in this cause.
` I further certify that the witness was first
`duly sworn by me and that I am not an attorney or
`counsel of any of the parties, nor a relative or
`employee of any attorney or counsel connected with the
`action, nor financially interested in the action.
` This 6th day of April, 2023.
`
` ___________________________________
` Virginia Dodge
` My Commission Expires: 8/23/2026
` Tennessee LCR No. 734, Exp: 6/30/24
` Tennessee CCR No. 0499, Exp: 6/30/24
` RDR/CRR #835835
`
`1
`
`23
`
`4
`
`5
`
`6
`
`7
`
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
