Case 1:17-cv-00770-JDW-MPT Document 189-5 Filed 04/14/23 Page 1 of 3 PageID #: 15599
`Case 1:17-cv-00770-JDW-MPT Document 189-5 Filed 04/14/23 Page 1 of 3 PagelD #: 15599
`
`EXHIBIT E
`EXHIBIT E
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`

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`Case 1:17-cv-00770-JDW-MPT Document 189-5 Filed 04/14/23 Page 2 of 3 PageID #: 15600
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`February 10, 2022
`
`VIA EMAIL
`
`Ryan R. Smtih, Esq.
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, California 94304
`(650) 849-3345
`rsmith@wsgr.com
`
`RE: Caterpillar’s January 27, 2022, Email Regarding Search Terms and
`Custodians
`Wirtgen America, Inc. v. Caterpillar Inc.
`C.A. No. 17-770-RGA (D. Del.)
`
`
`
`Dear Ryan:
`
`We are in receipt of your email dated January 27, 2022, which provided additional search
`terms pursuant to ¶ 3(h)(i)(3) of the Scheduling Order, as well as a request to include four
`Wirtgen GmbH employees as part of Wirtgen America’s ESI search. We seek clarity on
`certain search terms included in that email. We also inform you that the requested
`custodians, as employees of Wirtgen GmbH, and their files are not under the control of
`Wirtgen America. Therefore, Wirtgen America will not, and indeed cannot, search the
`email accounts or files of the identified individuals.
`
`Search Terms
`
`We seek clarity on two proposed search terms. Search term 7 is: (patent* OR AND strateg*
`AND Cat*. This search terms lacks complete parentheses and places both OR and AND
`connectors next to each other. Please let us know what was intended here. Search term 10
`is: (pric* OR cost! OR ASP) AND (Cat* OR Bomag OR Dynapac OR Roadtec OR Bitelli
`OR CMI OR Marini). Please confirm that the ! operator is intended to serve the same
`function as the * operator. Also, we are unclear as to what the term ASP is intended to
`capture. Please let us know what that acronym stands for and why it is designed to obtain
`information relevant to a party’s claim or defense in this matter.
`
`We also note that these search terms appear overbroad, particularly with respect to those
`including the names of virtually every competitor in the milling space. However, we are in
`the process of applying those search terms in the first instance to determine the data volume
`that they would return above and beyond the reasonably calculated search terms previously
`identified by Wirtgen. Should the data volume returned be unduly burdensome with respect
`to the subsequent attorney review, we will revisit this issue with Caterpillar.
`
`
`

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`Case 1:17-cv-00770-JDW-MPT Document 189-5 Filed 04/14/23 Page 3 of 3 PageID #: 15601
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`Letter to WILSON SONSINI GOODRICH & ROSATI, P.C.
`February 10, 2022
`Page 2
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`Additional Custodians
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`Caterpillar’s emails asserts that four Wirtgen GmbH employees—Martin Lenz, Günter
`Hähn, Christian Berning, and Dieter Simons—“are more likely to have relevant ESI than
`at least four of the custodians identified by Wirtgen America in its ESI custodian
`disclosure.” Caterpillar provides no support for this assertion. Nor does Caterpillar indicate
`which “of the at least four custodians” are less likely to have relevant ESI.
`
`Wirtgen America disagrees with your assertion. Even if Caterpillar were correct, the
`identified individuals are employees of Wirtgen GmbH, which is not a party to this
`proceeding. Wirtgen America does not have control over the email accounts or files of these
`individuals. Thus, Wirtgen America will not—and indeed cannot—provide information
`from these individuals as requested in your email.
`
`Please let us know if you have any questions. We are happy to discuss at your convenience.
`
`Best regards,
`
`PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
`
`
`
`Seth R. Ogden, Ph.D.
`sro@iplawgroup.com
`
`
`
` 1600 Division Street | Suite 500 | Nashville, TN 37203 | iplawgroup.com | 615.242.2400
`
`