`
`WILMINGTON
`RODNEY SQUARE
`
`NEW YORK
`ROCKEFELLER CENTER
`
`Adam W. Poff
`P 302.571.6642
`apoff@ycst.com
`
`
`
`April 28, 2023
`
`
`
`The Honorable Joshua D. Wolson
`United States District Court
`for the Eastern District of Pennsylvania
`James A. Byrne United States Courthouse
`601 Market Street, Room 3809
`Philadelphia, PA 19106
`
`
`
`
`Re: Wirtgen America, Inc. v. Caterpillar Inc.
`Case No. 17-770-JDW
`
`Dear Judge Wolson:
`
`Pursuant to the April 14, 2023 Modified Scheduling Order (D.I. 187) and Your Honor’s
`instructions during the April 20, 2023 teleconference with the parties, Wirtgen America hereby
`provides its reduced set of asserted claims.
`
`The parties agreed that by April 28, 2023, they would reduce the total number of asserted
`claims in this case by 30%. In the interest of further narrowing the issues for expert discovery,
`Wirtgen America voluntarily elected to reduce even more claims. The total number of Wirtgen
`America’s claims remaining in this case (excluding the stayed patents) has been reduced by 43%.
`Wirtgen America’s asserted claims remaining in this case are set forth below.
`
`U.S. Patent
`7,828,309
`8,118,316
`8,113,592
`9,010,871
`9,656,530
`8,424,972
`7,530,641
`7,946,788
`8,511,932
`8,690,474
`RE48,268
`
`Reduced Set of Asserted
`Claims
`
`10, 29, 32
`none
`2, 7, 15, 18
`23, 24, 25, 26
`5, 13, 16, 19, 22, 23, 26
`3, 12, 13, 15, 27
`11, 12, 15, 17, 18
`3, 5
`none
`19, 21, 24, 26
`1, 8, 23, 30, 32
`
`Number of
`Asserted Claims
`3
`0
`4
`4
`7
`5
`5
`2
`0
`4
`5
`
`Young Conaway Stargatt & Taylor, LLP
`Rodney Square | 1000 North King Street | Wilmington, DE 19801
`P 302.571.6600 F 302.571.1253 YoungConaway.com
`
`
`
`Case 1:17-cv-00770-JDW-MPT Document 195 Filed 04/28/23 Page 2 of 2 PageID #: 15629
`
`Young Conaway Stargatt & Taylor, LLP
`The Honorable Joshua D. Wolson
`April 28, 2023
`Page 2
`
`
`We also write to respond to Caterpillar’s letter filed earlier this evening, which requested
`that the Court order Wirtgen America to reduce the total number of claims to a “triable scope” by
`May 25, 2023. This request is improper for at least two reasons. First, Caterpillar did not even
`attempt to meet and confer with Wirtgen America on this issue before raising it with the Court.
`This was not for a lack of opportunity as the parties’ lead counsel held multiple calls over the
`past few days conferring on other ongoing issues. Second, it would be unfair to require Wirtgen
`America to unilaterally reduce the number of asserted claims at this stage without also requiring
`a similar reduction in Caterpillar’s current kitchen sink approach of invalidity defenses. For
`example, in addition to the 47 different prior art references raised in Caterpillar’s final invalidity
`contentions, Caterpillar also apparently plans to raise invalidity challenges under 35 U.S.C.
`§§ 101, 112, and 251, and also maintains a cadre of other defenses, including non-infringement,
`intervening rights, prosecution laches, and other purported equitable defenses.
`
`Wirtgen America fully expects to make further reductions in its asserted patents and
`claims before trial. However, there is no reason it should be required to do so at this stage in the
`case.
`
`We respectfully request that the Court deny Caterpillar’s request. We are available at
`Your Honor’s convenience to answer any questions.
`
`
`
`Respectfully,
`
`/s/ Adam W. Poff
`
`Adam W. Poff (No. 3990)
`
`
`
`cc: All Counsel of Record (via Email)
`
`
`
`
`30337855.1
`
`Young Conaway Stargatt & Taylor, LLP
`Rodney Square | 1000 North King Street | Wilmington, DE 19801
`P 302.571.6600 F 302.571.1253 YoungConaway.com
`
`
`
`
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