Case 1:17-cv-00770-JDW Document 271 Filed 12/26/23 Page 1 of 8 PageID #: 29462
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`C.A. No. 17-770-JDW
`
`
`
`
`
`WIRTGEN AMERICA, INC.
`
`
`Plaintiff/Counterclaim-Defendant,
`
`
`
`v.
`
`
`CATERPILLAR INC.
`
`
`Defendant/Counterclaim-Plaintiff.
`
`WIRTGEN AMERICA, INC.’S MOTION TO COMPEL THE PRODUCTION OF
`DOCUMENTS RELATED TO PREVIOUSLY UNDISCLOSED DEFENSE(S)
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW Document 271 Filed 12/26/23 Page 2 of 8 PageID #: 29463
`
`
`
`Wirtgen America, Inc. seeks an order compelling Caterpillar Inc. to produce documents
`
`and things related to Caterpillar’s newly asserted defense(s) against induced and/or willful
`
`infringement. Specifically, during summary judgment briefing Caterpillar stated for the first time
`
`in this case that the company had a good-faith belief of non-infringement based on alleged
`
`personal beliefs held by one of its employees, Mr. Eric Engelmann. Caterpillar has refused to
`
`produce discovery related to this good-faith belief, despite such information being responsive to
`
`discovery requests. Wirtgen requests that the Court compel Caterpillar to produce all documents
`
`and things supporting (and undermining) the arguments it intends to make and the testimony it
`
`intends to elicit at trial through Mr. Engelmann—or any other employee—that Caterpillar had a
`
`good faith belief of non-infringement as a defense to indirect or willful infringement.
`
`BACKGROUND
`
`I.
`
`
`Wirtgen served its first set of discovery requests to Caterpillar on September 20, 2021.
`
`Those discovery requests included the production of all documents and things that would reflect
`
`any good-faith belief of non-infringement regarding any of Wirtgen’s asserted patents. See, e.g.,
`
`Ex. A (highlighting RFPs 11, 25, 64, and 65). In response, Caterpillar vaguely averred that it
`
`would produce responsive non-privileged documents in its possession. See id.
`
`During depositions, Wirtgen continued to seek discovery regarding whether Caterpillar
`
`believed it had a good-faith belief of non-infringement. These efforts included asking Mr.
`
`Engelmann about any non-infringement belief. Mr. Engelmann testified that he had personal
`
`views on how the accused machines compared to the patents, but that those views were his own
`
`and not those of the company. Ex. B at 279:8-282:8. He testified that any non-infringement
`
`analysis for the company would be done by the legal team (not him): “I personally don’t form
`
`those opinions. I rely on our legal team at Caterpillar in the intellectual property department to
`
`help with those determinations.” Id. at 279:13–16. He was then asked to clarify: “Is it your
`
`
`
`1
`
`

`

`Case 1:17-cv-00770-JDW Document 271 Filed 12/26/23 Page 3 of 8 PageID #: 29464
`
`
`
`testimony that you personally have never formed an opinion with respect to infringement or
`
`noninfringement of the ’641 patent?” Id. at 279:21–280:2. He confirmed: “I rely on our legal
`
`team to determine and make those decisions.” Id. at 280:5–6. Caterpillar’s attorneys claimed
`
`privilege and instructed Mr. Engelmann not to reveal Caterpillar’s legal team’s infringement
`
`analysis. See id. at: 278:18–282:2. As discussed below, Wirtgen has reason to believe that
`
`Caterpillar has withheld from production, under a claim of privilege, documents in Mr.
`
`Engelmann’s possession that reflect Caterpillar’s legal team’s infringement analysis.
`
`Then, on October 19, 2023 in its summary judgment opposition, Caterpillar—for the first
`
`time—revealed that it would elicit testimony from Mr. Engelmann regarding Caterpillar’s good-
`
`faith belief of non-infringement. See D.I. 239, Caterpillar MSJ Opp. Br. at 17. As noted above,
`
`Mr. Engelmann unequivocally testified that while he may have his own personal views those
`
`views are his and his alone and any good-faith belief of non-infringement by Caterpillar the
`
`company would come from Caterpillar’s legal team, not him. See, Ex. B at 278:18–282:8.
`
`But Caterpillar has refused to provide discovery into Caterpillar’s legal team’s
`
`infringement analysis. In fact, Caterpillar withheld documents relevant to this very issue during
`
`discovery, obstructing Wirtgen’s ability to challenge Caterpillar’s non-infringement position or
`
`its good faith. Contra D.I. 239 at 18. For example, in July 2023, Caterpillar clawed back a
`
`PowerPoint document beginning with Bates number CAT_00007715 on the basis of privilege.
`
`See Ex. C, July 13, 2023 Ltr. from J. Yoon to P. Ainsworth. During its clawback, Caterpillar
`
`indicated that this PowerPoint was authored by and in the custody of Mr. Engelmann. See id.
`
`Caterpillar also stated that the document reflects the “provision of legal advice from Asha
`
`Mehrotra (Caterpillar in-house counsel) and Tim Parker (Caterpillar in-house counsel).” See id.
`
`at 1. The document includes analysis of the ’641 patent. See, e.g., D.I. 266-06, CAT-770_092522
`
`(reproduced 1-page excerpt of the clawed-back CAT_00007715 PowerPoint).
`
`
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 271 Filed 12/26/23 Page 4 of 8 PageID #: 29465
`
`
`
`It therefore appears that there are relevant documents in Caterpillar’s (and Mr.
`
`Engelmann’s) possession reflecting the substance, basis, and timing of Caterpillar’s infringement
`
`beliefs. These documents would be admissible for assessing the veracity of any trial testimony
`
`Caterpillar elicits in that regard, especially since Mr. Engelmann testified that he relies entirely
`
`on Caterpillar’s legal team to make those determinations. Caterpillar has not, however, produced
`
`these documents. Nor has Caterpillar justified withholding them in view of its recently stated
`
`intention to argue at trial that Caterpillar had a good-faith belief of non-infringement.
`
`Wirtgen reached out to Caterpillar regarding the inappropriateness of introducing a new
`
`defense (1) that was not previously disclosed, (2) for which Caterpillar refused to produce related
`
`documents, and (3) that relies on the opinion testimony of a witness who has disclaimed forming
`
`this opinion and would not be competent to give it. See Ex. D. At the very least, Wirtgen
`
`requested that Caterpillar produce all documents and evidence supporting and/or contradicting
`
`any alleged good-faith belief of non-infringement. See id. at 6–7. Caterpillar refused. See id. at 1.
`
`The parties met and conferred on November 13, 2023, and exchanged several rounds of
`
`correspondence since then in an attempt to resolve this dispute. Wirtgen explained that Mr.
`
`Engelmann attributed Caterpillar’s beliefs regarding infringement to attorneys and refused to
`
`answer questions about them. If Caterpillar now wants to offer testimony about these beliefs to
`
`the jury, then it must produce all evidence that both supports and undermines the alleged good-
`
`faith belief. Caterpillar continued to refuse to produce any such evidence, saying that any motion
`
`compelling such evidence would be untimely. The timing of this motion, however, is a result of
`
`Caterpillar’s belated introduction of a new defense based on an undisclosed factual position. It
`
`was filed promptly after it became clear the parties had reached an impasse on the issue.
`
`ARGUMENT
`
`II.
`
`
`While there is no affirmative obligation to obtain or produce an opinion of counsel to
`
`
`
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 271 Filed 12/26/23 Page 5 of 8 PageID #: 29466
`
`
`
`show that an infringer’s activities were done in good faith, a defendant who chooses to avail
`
`himself of such a defense must produce competent evidence to substantiate his claim. See, e.g.,
`
`Crane Security Techs., Inc. v. Rolling Optics AB, 337 F. Supp. 3d 48, 58–59 (D. Mass. 2018)
`
`(“[T]he opinions of [infringer’s co-founder], who is not a lawyer and has no expertise in U.S.
`
`patent law, alone could not have supported a good faith belief by [infringer] that [patentee’s]
`
`patents were invalid or that [accused infringer’s] products did not infringe [patentee’s] patents.”).
`
`Here, Mr. Engelmann is neither qualified to opine on questions of infringement, nor did
`
`he ever purport to conduct such an analysis on behalf of Caterpillar. Cf. Dominion Res. Inc. v.
`
`Alstom Grid, Inc., 2016 WL 5674713, at *22 (E.D. Pa. 2016) (“Alstom’s belief it did not infringe
`
`because the AMI functionality within the LVM module is housed in the ‘model-based system’
`
`DMS is based entirely on the opinion of people without expertise in reading patent claims. On
`
`balance, it is not a good faith belief in non-infringement.”), vacated on other grounds in 725 Fed.
`
`Appx. 980 (Fed. Cir. 2018). Mr. Engelmann’s personal beliefs, therefore, do not amount to any
`
`good faith belief by Caterpillar. Indeed, Mr. Engelmann himself admitted this, and attributed
`
`any beliefs Caterpillar has about infringement to the legal team. Ex. B at 279:13–280:2.
`
`Caterpillar cannot have its cake and eat it too. If it wishes to present testimony from Mr.
`
`Engelmann to support a good-faith belief of non-infringement, then it cannot hold back
`
`information that Mr. Engelmann produced or received relating to that belief. Moreover, to the
`
`extent Mr. Engelmann was privy to advice from counsel relating to his purported belief,
`
`Caterpillar’s reliance on Mr. Engelmann’s beliefs necessarily waives the associated attorney-
`
`client privilege. See Affinion Net Pats., Inc. v. Maritz, Inc., 440 F. Supp. 2d 354, 357 (D. Del.
`
`2006) (“[T]o the extent Defendant relies upon an opinion of counsel as a defense to willful
`
`infringement, information related to the opinion is discoverable[.]”) (citing In re EchoStar
`
`Commc’ns Corp., 448 F.3d 1294, 1303 n. 4 (Fed. Cir. 2006)). The testimony Caterpillar wishes
`
`
`
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 271 Filed 12/26/23 Page 6 of 8 PageID #: 29467
`
`
`
`to elicit from Mr. Engelmann (or anyone else) regarding Caterpillar’s alleged good-faith belief of
`
`non-infringement thus waives the attorney-client privilege over any documents supporting or
`
`contradicting that good-faith belief. See id.
`
`
`
`Finally, there is no other theory or legal justification pursuant to which Mr. Engelmann
`
`could testify about an alleged good-faith belief of non-infringement that would not invoke an
`
`advice-of-counsel defense. For instance, Mr. Engelmann could not simply testify that he believes
`
`in the merits of Caterpillar’s litigation defense as the basis for a good-faith belief of non-
`
`infringement. See Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 103 (2016) (holding that
`
`having a reasonable litigation defense is not necessarily defense to willfulness as the state of
`
`mind relevant to willfulness is measured at the time of the allegedly infringing conduct). For that
`
`reason, “[g]eneral knowledge of . . . the positions being advocated in [litigation proceedings],
`
`does not equate to actual, subjective belief by [accused infringer] in the invalidity and/or
`
`noninfringement of asserted patent claims.” Power Integrations, Inc. v. Fairchild Semiconductor
`
`Int’l Inc., 2018 WL 5631531, at *1 (D. Del. 2018).
`
`III. CONCLUSION
`
`
`Caterpillar cannot offer testimony suggesting that it had a good-faith belief of non-
`
`infringement, while withholding all evidence that corroborates or disproves that testimony. It
`
`likewise cannot offer testimony that one of its employees had a personal belief of non-
`
`infringement and suggest that this personal belief should be imputed to Caterpillar when the
`
`record is clear that (1) it never was and (2) any infringement belief by Caterpillar would have
`
`come from Caterpillar’s legal team, not Mr. Engelmann. The Court should grant Wirtgen’s
`
`motion to compel, including documents in Mr. Engelmann’s possession reflecting Caterpillar’s
`
`legal team’s analysis and conclusions relating to infringement of Wirtgen America’s patents.
`
`
`
`
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 271 Filed 12/26/23 Page 7 of 8 PageID #: 29468
`
`
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
`Attorneys for Wirtgen America, Inc.
`
`
`
`
`
`
`Dated: December 26, 2023
`
`OF COUNSEL:
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Dominic A. Rota
`Mark A. Kilgore
`PATTERSON INTELLECTUAL
`PROPERTY LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`dar@iplawgroup.com
`mak@iplawgroup.com
`
`
`- and -
`
`
`Daniel E. Yonan
`Paul A. Ainsworth
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`
`
`
`
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 271 Filed 12/26/23 Page 8 of 8 PageID #: 29469
`
`
`
`
`
`CERTIFICATION PURSUANT TO D. DEL. LR 7.1.1
`
`Pursuant to Rule 7.1.1 of the Local Rules of Civil Practice and Procedure of the United
`
`States District Court for the District of Delaware, I hereby certify that the parties have made
`
`good faith, reasonable efforts to resolve the matters set forth in this motion, but were unable to
`
`do so. These efforts include considerable written correspondence on the subjects of this motion.
`
`These efforts also include meet and confer teleconferences where counsel for the parties verbally
`
`communicated to try to resolve the matters set forth in this motion, one of which involved
`
`Delaware counsel for both parties.
`
`
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`
`
`
`7
`
`