Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 1 of 38 PageID #: 27347
`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 1 of 38 PagelD #: 27347
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`EXHIBIT 56
`EXHIBIT 56
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`

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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 2 of 38 PageID #: 27348
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
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`WIRTGEN AMERICA, INC.,
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`CATERPILLAR INC.,
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`Defendant/Counterclaim-Plaintiff.
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` C.A. No. 17-770-JDW-MPT
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`JURY TRIAL DEMANDED
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`HIGHLY CONFIDENTIAL-
`OUTSIDE ATTORNEYS’ EYES
`ONLY
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`
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`
`
`
`CATERPILLAR INC.’S RESPONSES AND OBJECTIONS TO
`WIRTGEN AMERICA, INC.’S FIRST SET OF INTERROGATORIES (NOS. 1-20)
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`Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure and the Local Rules of the
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`United States District Court for the District of Delaware (“Local Rules”), Defendant and
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`Counterclaim-Plaintiff Caterpillar Inc. (“Caterpillar”) hereby responds to Plaintiff and Counterclaim-
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`Defendant Wirtgen America, Inc.’s (“Wirtgen America’s”) First Set of Interrogatories (Nos. 1-20) as
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`follows.
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`RESERVATION OF RIGHTS
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`Caterpillar’s responses are based on information currently available to Caterpillar. Caterpillar
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`reserves all rights to supplement, revise, and/or amend these responses should additional information
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`become available through the discovery process or by other means. Caterpillar also reserves the right
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`to produce or use any information or documents that are discovered after service of these responses in
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`support of or in opposition to any motion, in depositions, or at hearings or trial. In responding to
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`Wirtgen America’s First Set of Interrogatories, Caterpillar does not waive any objection on the
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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 3 of 38 PageID #: 27349
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`grounds of privilege, confidentiality, competency, relevance, materiality, authenticity, admissibility
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`of the information contained in these responses, or any other objection.
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`GENERAL OBJECTIONS
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`
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`The following General Objections apply to each of Wirtgen America’s Interrogatories. Each
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`response provided below is made subject to these General Objections as well as subject to any specific
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`objections to any Interrogatory, without waiver of any such objection.
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`1.
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`Caterpillar objects to each Interrogatory to the extent it seeks information that is not
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`relevant to the claim or defense of any party and is not proportional to the needs of the case.
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`2.
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`Caterpillar objects to each Interrogatory to the extent it seeks information or
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`documents, or purports to impose obligations, beyond the scope of permissible discovery
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`contemplated by the Federal Rules of Civil Procedures and the Local Rules of this Court.
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`3.
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`Caterpillar objects to each Interrogatory to the extent it is unduly burdensome or
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`expensive.
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`4.
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`Caterpillar objects to each Interrogatory to the extent it seeks information protected
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`from disclosure by the attorney-client privilege and/or the work-product doctrine, the joint defense
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`privilege, the common interest privilege, any other evidentiary or discovery privilege, or are otherwise
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`protected from disclosure.
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`5.
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`Caterpillar objects to each Interrogatory that is unlimited in time and thus unduly
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`burdensome. Caterpillar further objects to each Interrogatory to the extent it seeks information prior
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`to the permissible time frame provided for discovery in the District of Delaware Default Standard for
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`Discovery, Including Discovery of Electronically Stored Information (“ESI”) (“Default Standard”).
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`6.
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`Caterpillar objects to each Interrogatory as overly broad and unduly burdensome to the
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`extent it is unlimited in geographical scope.
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`7.
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`Caterpillar objects to each Interrogatory to the extent it seeks confidential and/or
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`proprietary information. Such information, to the extent it is not privileged or otherwise objectionable,
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`will be provided only pursuant to the Protective Order in this action.
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`8.
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`Caterpillar objects to each Interrogatory to the extent it seeks information or documents
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`that include the confidential business information of third parties and are subject to separate
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`confidentiality agreements or obligations. Such information and documents will be produced only
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`pursuant to agreements Caterpillar has made or subsequently reaches with those third parties.
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`9.
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`Caterpillar objects to each Interrogatory to the extent it seeks information or documents
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`that are subject to protective orders issued by courts, agencies, or arbitral tribunals prohibiting
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`production of the requested information or documents.
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`10.
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`Caterpillar objects to each Interrogatory to the extent it assumes facts not in evidence.
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`Caterpillar’s willingness to respond to any such Interrogatory shall not be construed as a concession
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`or agreement that any implications or conclusions, factual or otherwise, that may be drawn from such
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`an Interrogatory.
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`11.
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`Caterpillar objects to each Interrogatory to the extent the information requested therein
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`is not within the possession, custody, and/or control or that cannot be found in the course of a
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`reasonable search of Caterpillar.
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`12.
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`Caterpillar objects to each Interrogatory to the extent the information requested is
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`publicly available and/or equally available to Wirtgen America.
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`13.
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`Caterpillar objects to each Interrogatory to the extent it is cumulative and/or
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`duplicative.
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`14.
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`Caterpillar objects to each Interrogatory to the extent it is overly broad and unduly
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`burdensome as seeking all documents, communications, and/or things from all custodians, associated
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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 5 of 38 PageID #: 27351
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`individuals, or related entities “related to” or “regarding” the requested materials, regardless of
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`relevance, volume, or time.
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`15.
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`Caterpillar’s responses herein, and its disclosures or production of documents, do not
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`in any way constitute an adoption of Wirtgen America’s purported definitions of words or phrases
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`contained in the Interrogatories. Caterpillar objects to the definitions to the extent they (a) are unclear,
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`ambiguous, overly broad, or unduly burdensome; (b) are inconsistent with the ordinary and customary
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`meaning of the words or phrases they purport to define; (c) seek to impose obligations different from,
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`or in excess of, those created by the Federal Rules of Civil Procedure and the Local Rules of this
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`Court; (d) seek to require Caterpillar to conduct unreasonable searches for responsive materials from
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`an impermissible number of custodians, associated individuals, or related entities; (e) include
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`assertions of purported fact that are inaccurate or at the very least are disputed by the parties to this
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`action; and/or (f) incorporate other purported definitions that suffer from such defects.
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`16.
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`Caterpillar objects generally to the Interrogatories to the extent that they prematurely
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`call for discovery concerning, among other things, facts and contentions relating to infringement,
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`validity, other claims and defenses, and expert testimony before they are due under the Scheduling
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`Order in this case. See D.I. 28. Pursuant to this objection and other objections set forth herein,
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`Caterpillar will respond to these interrogatories under the case schedule.
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`17.
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`Caterpillar objects to Wirtgen America’s definitions of the terms “You,” “Your,
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`Caterpillar,” and “Defendant” as vague, ambiguous, indefinite, overbroad, unduly burdensome,
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`seeking the production of information that is not relevant to the claim or defense of any party, not
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`proportional to the needs of the case, and seeking the production of information that is not within
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`Caterpillar’s possession, custody, or control and is not reasonably accessible to Caterpillar upon
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`reasonable diligence. In particular, Caterpillar objects to these definitions to the extent they seek to
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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 6 of 38 PageID #: 27352
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`require Caterpillar to answer on behalf of any other party or entity. Caterpillar responds to these
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`Interrogatories on its behalf only.
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`18.
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`Caterpillar objects to Wirtgen America’s definition of Accused Caterpillar Product(s)”
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`as vague, ambiguous, indefinite, overbroad, unduly burdensome, seeking the production of
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`information that is not relevant to the claim or defense of any party, not proportional to the needs of
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`the case, and seeking the production of information that is not within Caterpillar’s possession, custody,
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`or control and is not reasonably accessible to Caterpillar upon reasonable diligence. In particular,
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`Caterpillar objects to these definitions to the extent they seek to require Caterpillar to provide
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`information on products not identified in Wirtgen America’s Identification of Accused Products and
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`Asserted Patents, dated October 28, 2021, or Initial Infringement Contentions, dated December 2,
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`2021.
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`19.
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`Caterpillar objects to Wirtgen America’s Instructions to the extent they render the
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`Interrogatories unclear and/or unduly burdensome. Caterpillar also objects to the Instructions to the
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`extent they seek to improperly expand Caterpillar’s obligations beyond the scope required by the
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`Federal Rules of Civil Procedure, seek information that is not relevant to the claim or defense of any
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`party and is not proportional to the needs of the case, seek the production of information that is not
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`within Caterpillar’s possession, custody, or control, and are not reasonably accessible to Caterpillar
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`upon reasonable diligence.
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`RESPONSES TO INTERROGATORIES
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`INTERROGATORY NO. 1: For each of Wirtgen America’s Asserted Patents, describe in detail all
`facts and circumstances under which Caterpillar first became aware of Wirtgen America’s Asserted
`Patents, including, but not limited to, the date(s) when this occurred, the source of the information, the
`identity of the person(s) who received the information on behalf of Caterpillar, when and how
`Caterpillar first obtained a copy of Wirtgen America’s Asserted Patent(s), and any actions taken by
`Caterpillar or any of its directors, officers, or employees as a result, and identify each person with
`knowledge of the foregoing and all documents, by Bates number, relating to the foregoing.
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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 7 of 38 PageID #: 27353
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`RESPONSE TO INTERROGATORY NO. 1:
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`
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`Caterpillar incorporates all of its general objections and reservations of rights as if specifically
`
`set forth herein. Caterpillar objects to this Interrogatory as overly broad and unduly burdensome as
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`seeking “all” documents “relating to” the requested materials regardless of relevance, volume, or time.
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`Caterpillar also objects to this Interrogatory as compound, representing numerous requests in one.
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`Caterpillar objects to this Interrogatory to the extent it seeks information protected from disclosure by
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`the attorney-client privilege and/or work-product doctrine, or any other applicable privilege or
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`protection. Caterpillar specifically objects to this Interrogatory as overly broad and unduly
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`burdensome to the extent it seeks information that is not relevant to the claim or defense of any party
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`and is not proportional to the needs of the case.
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`
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`Subject to and without waiving these objections, Caterpillar responds as follows:
`
`Date
`on or around February
`4, 2014
`on or around
`December 13, 2012
`on or around June 13,
`2014
`on or around the day
`the district court
`complaint was filed
`(June 16, 2017)
`on or around the day
`the district court
`complaint was filed
`(June 16, 2017)
`on or around the day
`the district court
`complaint was filed
`(June 16, 2017)
`
`Source
`
`Caterpillar in-house counsel Andrew Phillips
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`Caterpillar in-house counsel Andrew Phillips
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`Caterpillar in-house counsel Andrew Phillips
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`Gunter Hahn of Wirtgen GmbH sent an e-mail to Paul Clark
`attaching a district court complaint identifying the Asserted
`Patents
`
`Gunter Hahn of Wirtgen GmbH sent an e-mail to Paul Clark
`attaching a district court complaint identifying the Asserted
`Patents
`
`Gunter Hahn of Wirtgen GmbH sent an e-mail to Paul Clark
`attaching a district court complaint identifying the Asserted
`Patents
`
`Patent
`
`7,828,309
`
`8,118,316
`
`7,530,641
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`8,113,592
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`9,010,871
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`9,656,530
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`

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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 8 of 38 PageID #: 27354
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`Patent
`
`7,946,788
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`8,511,932
`
`8,690,474
`
`RE48,268
`
`8,424,972
`
`9,879,390
`
`9,879,391
`
`Date
`on or around January
`14, 2013
`on or around February
`11, 2013
`on or around February
`11, 2013
`in or around October
`2020
`on or around March
`13, 2014
`At least as early as
`December 2018
`At least as early as
`December 2018
`
`Source
`
`Caterpillar in-house counsel Andrew Phillips
`
`Caterpillar in-house counsel Andrew Phillips
`
`Caterpillar in-house counsel Andrew Phillips
`
`Caterpillar Litigation Team
`
`Caterpillar in-house counsel Andrew Phillips
`
`Caterpillar in-house counsel Tim Parker
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`Caterpillar in-house counsel Tim Parker
`
`Caterpillar further responds that its investigation and discovery are ongoing and it reserves the
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`right to amend, modify, or supplement this response as new information becomes available in
`
`accordance with the Federal Rules of Civil Procedure, the Local Rules of this Court, and the
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`Scheduling Order (D.I. 28) entered by the Court.
`
`INTERROGATORY NO. 2: For each of Caterpillar’s Counter-Asserted Patents, explain the basis
`for Caterpillar’s contention, if at all, that Wirtgen America’s infringement has been willful and
`deliberate, including, but not limited to, identifying when and how Wirtgen America was put on notice
`of the alleged infringement, and identify each person with knowledge of the foregoing and all
`documents, by Bates number, relating to the foregoing.
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`RESPONSE TO INTERROGATORY NO. 2:
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`
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`Caterpillar incorporates all of its general objections and reservations of rights as if specifically
`
`set forth herein. Caterpillar objects to this Interrogatory as overly broad and unduly burdensome as
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`seeking “all” documents “relating to” the requested materials regardless of relevance, volume, or time.
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`Caterpillar also objects to this Interrogatory as compound, representing numerous requests in one.
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`Caterpillar objects to this Interrogatory as premature to the extent it seeks expert testimony or expert-
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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 9 of 38 PageID #: 27355
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`related materials before Caterpillar is required to identify and provide such materials under the
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`Scheduling Order. Caterpillar objects to this Interrogatory as premature to the extent it seeks
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`information before Caterpillar is required to identify and provide such information in accordance with
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`the Scheduling Order. Caterpillar objects to this Interrogatory to the extent it seeks information
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`protected from disclosure by the attorney-client privilege and/or work-product doctrine, or any other
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`applicable privilege or protection. Caterpillar is unable to provide a full response to this Interrogatory
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`to the extent its response depends on documents from Wirtgen GmbH that Wirtgen America
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`committed on July 13, 2022 to produce to Caterpillar, but which it has yet to produce. Caterpillar
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`reserves the right to right to amend, modify, or supplement this response after it receives and is able
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`to review these documents. Caterpillar is unable to provide a full response to this Interrogatory to the
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`extent its response depends on documents produced by Wirtgen America. Although the scheduling
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`order required substantial completion of document production by October 13, 2022, Wirtgen America
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`had produced only approximate 58,000 by that date. More than two months later, on December 29,
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`2022, after the service of these Interrogatories, Wirtgen America produced an additional 462,640
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`documents. On February 1, 2023, Wirtgen produced an additional 42,881 documents. These late
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`productions prejudice Caterpillar, including with respect to its ability to respond to this Interrogatory.
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`Caterpillar reserves the right to right to amend, modify, or supplement this response as its review of
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`these late-produced documents continues.
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`
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`Subject to and without waiving these objections, Caterpillar responds as follows: Caterpillar
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`has not alleged willful infringement.
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`Caterpillar further responds that its investigation and discovery are ongoing and it reserves the
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`right to amend, modify, or supplement this response as new information becomes available in
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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 10 of 38 PageID #: 27356
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`accordance with the Federal Rules of Civil Procedure, the Local Rules of this Court, and the
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`Scheduling Order (D.I. 28) entered by the Court.
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`INTERROGATORY NO. 3: Identify the first date on which You contend that Wirtgen America had
`knowledge of Caterpillar’s Counter-Asserted Patents and all facts and documents evidencing this
`contention, the first date on which You contend Wirtgen America had knowledge of alleged
`infringement of Caterpillar’s Counter-Asserted Patents and all facts and documents evidencing this
`contention, the first date on which You contend Wirtgen America knowingly induced infringement
`and all facts and documents evidencing this contention, the first date on which You contend that
`Wirtgen America specifically intended to induce its customers to infringe Caterpillar’s Counter-
`Asserted Patents and all facts and documents evidencing this contention, and the first date on which
`You contend that Wirtgen America knowingly contributed to its customers’ alleged infringement of
`Caterpillar’s Counter-Asserted Patents and all facts and documents establishing this contention.
`
`RESPONSE TO INTERROGATORY NO. 3:
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`Caterpillar incorporates all of its general objections and reservations of rights as if specifically
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`set forth herein. Caterpillar objects to this Interrogatory as containing at least three distinct sub-parts
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`relating to (1) notice of infringement, (2) induced infringement, and (3) contributory infringement.
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`Caterpillar further objects to the extent information responsive to this interrogatory is exclusively in
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`the possession, custody, and control of Wirtgen America itself. For example, this Interrogatory seeks
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`information directed to Wirtgen America’s mental state and knowledge, and intent that is peculiarly
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`within Wirtgen America’s own possession and not Caterpillar’s. This response, therefore, is based on
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`information presently known to Caterpillar
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`Subject to and without waiving these objections, Caterpillar responds Wirtgen America had
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`knowledge of the Counter Asserted Patents no later than October 14, 2021, when Caterpillar sent a
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`letter to Wirtgen America’s counsel-of-record for this case, Ryan Levy. Caterpillar contends that
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`Wirtgen’s intentional and knowledgeable actions with respect to direct and indirect infringement
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`began no later than this date.
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`Caterpillar further responds that its investigation and discovery are ongoing and it reserves the
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`right to amend, modify, or supplement this response as new information becomes available in
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`accordance with the Federal Rules of Civil Procedure, the Local Rules of this Court, and the
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`Scheduling Order (D.I. 28) entered by the Court.
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`INTERROGATORY NO. 4: For each of Caterpillar’s Counter-Asserted Patents, identify all efforts
`by or on behalf of Caterpillar, and any prior owners of each of Caterpillar’s Counter-Asserted Patents
`(if applicable), to satisfy the marking requirements of 35 U.S.C. § 287, including, but not limited to,
`identifying all products (including the Accused Caterpillar Products) by name, model number, and any
`other identifying indicia that have been marked and when the marking occurred, and identify each
`person with knowledge of the foregoing and all documents, by Bates number, relating to the foregoing.
`Your response should at least identify, discuss, and address the dates on which You first marked the
`Accused Caterpillar Products, the continuity in marking the Accused Caterpillar Products, and the
`manner and means in which the Accused Caterpillar Products were marked (e.g., on-product marking,
`on-package marking, or virtual marking).
`
`RESPONSE TO INTERROGATORY NO. 4:
`
`Caterpillar incorporates all of its general objections and reservations of rights as if specifically
`
`set forth herein. Caterpillar objects to the phrase “all efforts” as unduly burdensome and overly broad.
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`Caterpillar responds that it will identify representative facts on which it intends to rely to show it
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`satisfied the requirements of 35 U.S.C. § 287 or, at least, that it did not violate such requirements.
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`Caterpillar further objects to the extent this interrogatory seeks the disclosure of privileged
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`information.
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`Subject to and without waiving these objections, Caterpillar responds that it is unaware of any
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`products marked with the Counter Asserted Patents.
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`Caterpillar further responds that its investigation and discovery are ongoing and it reserves the
`
`right to amend, modify, or supplement this response as new information becomes available in
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`accordance with the Federal Rules of Civil Procedure, the Local Rules of this Court, and the
`
`Scheduling Order (D.I. 28) entered by the Court.
`
`INTERROGATORY NO. 5: Identify the date You allege is the priority date of each claim of each
`of Caterpillar’s Counter-Asserted Patents and describe in detail, on a claim-by-claim basis, all facts
`and circumstances related to the conception and reduction to practice, including any already existing
`devices, services, or documents that were discussed or believed to be related to the alleged invention
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`

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`of the claim during the conception and reduction to practice; the date on which the claimed invention
`was conceived; the date on which the claimed invention was reduced to practice; any alleged diligence
`between the asserted conception and reduction to practice dates; each person who performed such
`conception and reduction to practice; each person with knowledge of such conception, reduction to
`practice, or diligence, including the nature of each person’s participation, involvement, and/or
`contribution to such conception, reduction to practice and/or diligence; and the Bates number(s) of all
`documents on which You intend to rely to support Your allegation of such conception, reduction to
`practice, and/or diligence.
`
`RESPONSE TO INTERROGATORY NO. 5:
`
`Caterpillar incorporates all of its general objections and reservations of rights as if specifically
`
`set forth herein. Caterpillar objects to the phrase “any already existing devices, services, or documents
`
`that were discussed or believed to be related to the alleged invention of the claim” as being vague and
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`confusing. Caterpillar does not understand what devices, services, or documents Wirtgen America
`
`seeks information about with respect to this phrase. Caterpillar further objects that this interrogatory
`
`seeks multiple subparts, including subparts regarding priority date, conception, reduction to practice,
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`knowledgeable persons, diligence, and identification of documents. Caterpillar further objects that
`
`this Interrogatory prematurely seeks information that will be the subject of expert discovery.
`
`Caterpillar incorporates by reference its forthcoming expert reports which will provide its expert(s)’
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`opinions on how each Counter Asserted Patent is entitled to a priority date earlier than its respective
`
`filing date. Caterpillar further objects to the extent this Interrogatory seeks privileged information.
`
`Caterpillar further objects that this Interrogatory seeks a legal conclusion.
`
`Subject to and without waiving these objections, Caterpillar responds as follows: Caterpillar
`
`contends that each Caterpillar Counter Asserted Patent is entitled to at least the claimed priority date
`
`listed on the face of each respective patent. Caterpillar contends that each Counter Asserted Patent
`
`was reduced to practice at least by the stated discovery date. Caterpillar contends that the named
`
`inventors are knowledgeable about the conception, diligence, and reduction to practice of each Counter
`
`Asserted Patent. Caterpillar further incorporates by reference its 30(b)(6) witness identifications as
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`
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`

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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 13 of 38 PageID #: 27359
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`identifying additional witnesses who may be knowledgeable about information responsive to this
`
`Interrogatory.
`
`Caterpillar further responds that its investigation and discovery are ongoing and it reserves the
`
`right to amend, modify, or supplement this response as new information becomes available in
`
`accordance with the Federal Rules of Civil Procedure, the Local Rules of this Court, and the
`
`Scheduling Order (D.I. 28) entered by the Court.
`
`INTERROGATORY NO. 6: If You contend that any of the prior art identified by Wirtgen America
`in this Action does not anticipate or render obvious the claims of Caterpillar’s Counter-Asserted
`Patents, set forth the basis for each such contention, including an element-by-element analysis
`identifying with particularity each element that You contend is not disclosed or obvious in view of
`each reference or combination.
`
`RESPONSE TO INTERROGATORY NO. 6:
`
`
`
`Caterpillar incorporates all of its general objections and reservations of rights as if specifically
`
`set forth herein. Caterpillar objects to this Interrogatory as overly broad and unduly burdensome.
`
`Caterpillar also objects to this Interrogatory as compound, representing numerous requests in one.
`
`Caterpillar objects to this Interrogatory as premature to the extent it seeks expert testimony or expert-
`
`related materials before Caterpillar is required to identify and provide such materials under the
`
`Scheduling Order. Caterpillar objects to this Interrogatory to the extent it seeks information or
`
`documents that are subject to protective orders issued by courts, agencies, or arbitral tribunals
`
`prohibiting production of the requested information or documents. Caterpillar objects to this
`
`Interrogatory to the extent it seeks information that is publicly available or is as equally available to
`
`Plaintiff as it is to Caterpillar. Caterpillar objects to this Interrogatory as premature to the extent it
`
`seeks information before Caterpillar is required to identify and provide such information in accordance
`
`with the Scheduling Order. Caterpillar objects to this Interrogatory to the extent it seeks information
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`protected from disclosure by the attorney-client privilege and/or work-product doctrine, or any other
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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 14 of 38 PageID #: 27360
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`applicable privilege or protection. Caterpillar objects to this Interrogatory to the extent it seeks
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`confidential information belonging to third parties or otherwise subject to third-party confidentiality
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`obligations. Caterpillar is unable to provide a full response to this Interrogatory to the extent its
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`response depends on third party discovery, which is ongoing. Caterpillar reserves the right to right to
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`amend, modify, or supplement this response after such discovery is complete. Caterpillar objects to
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`this Interrogatory as seeking or requiring a legal conclusion. Caterpillar further objects to this
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`Interrogatory to the extent that Wirtgen America is barred by the doctrine of waiver or estoppel.
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`Caterpillar further objects to this Interrogatory to the extent that it attempts to shift the burden to
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`Caterpillar to demonstrate that Caterpillar’s Counter-Asserted Patents are valid. Patents are presumed
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`to be valid, and Wirtgen America bears the burden to prove invalidity by clear and convincing
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`evidence. This burden of proving invalidity by clear and convincing evidence “never shifts to the
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`patentee.” St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369, 1382 (Fed. Cir. 2013).
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`Subject to and without waiving these objections, Caterpillar responds as follows: Wirtgen
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`America bears the burden to first identify its allegations concerning validity and provide support for
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`those allegations by clear and convincing evidence. Wirtgen America has not done that. Instead,
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`Wirtgen America’s Initial Invalidity Contentions appear to include little more than string cites to
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`disparate sections of various references. Caterpillar will provide its response to this Interrogatory in
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`accordance with the dates outlined in the Scheduling Order or agreed to by the parties.
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`Caterpillar further responds that its investigation and discovery are ongoing and it reserves the
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`right to amend, modify, or supplement this response as new information becomes available in
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`accordance with the Federal Rules of Civil Procedure, the Local Rules of this Court, and the
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`Scheduling Order (D.I. 28) entered by the Court.
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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 15 of 38 PageID #: 27361
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`INTERROGATORY NO. 7: Explain in detail, on a claim-by-claim basis, all facts and circumstances
`that support or otherwise relate to any secondary considerations of non-obviousness of each of
`Caterpillar’s Counter-Asserted Patents, including, without limitation, that the subject matter of any
`such claim satisfied long-felt need, solved problems that the industry failed to solve, was the subject
`of skepticism expressed in the industry, has been a commercial success, has had its significance
`recognized by the industry, has been copied by others, and/or has achieved unexpected results, and
`describe the nexus between the alleged invention of any such claim and any such factor.
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`RESPONSE TO INTERROGATORY NO. 7:
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`Caterpillar incorporates all of its general objections and reservations of rights as if specifically
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`set forth herein. Caterpillar objects that this Interrogatory is premature. No claim construction order
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`has yet issued in this case and therefore the scope of the claims has not yet settled for the purpose of
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`showing nexus. Moreover, the extent to which any objective indicia of nonobviousness apply to the
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`Caterpillar Counter Asserted Patents will be a matter for expert discovery. Caterpillar objects to this
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`extent this Interrogatory seeks a legal conclusion. Caterpillar objects to the extent this Interrogatory
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`seeks privileged information.
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`Subject to and without waiving these objections, Caterpillar responds as follows: Wirtgen
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`America bears the burden to first identify its allegations concerning validity and provide support for
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`those allegations by clear and convincing evidence. Wirtgen America has not done that. Instead,
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`Wirtgen America’s Initial Invalidity Contentions appear to include little more than string cites to
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`disparate sections of various references. Caterpillar will provide its response to this Interrogatory in
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`accordance with the dates outlined in the Scheduling Order or agreed to by the parties.
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`Caterpillar further responds that its investigation and discovery are ongoing and it reserves the
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`right to amend, modify, or supplement this response as new information becomes available in
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`accordance with the Federal Rules of Civil Procedure, the Local Rules of this Court, and the
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`Scheduling Order (D.I. 28) entered by the Court.
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`INTERROGATORY NO. 8: Identify all opinions, evaluations, analyses, or reverse-engineering
`reports, whether written or oral, that Caterpillar has requested, received, or is aware of regarding
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`Case 1:17-cv-00770-JDW Document 250-56 Filed 10/25/23 Page 16 of 38 PageID #: 27362
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`Wirtgen America’s Asserted Patents, including, but not limited to, date, author(s), addressee(s),
`recipient(s), and whether it relates to infringement or non-infringement, validity or invalidity,
`enforceability or unenforceability, or any other affirmative defense or a valuation of Wirtgen
`America’s Asserted Patents, and identify each person with knowledge of the foregoing and all
`documents, b