Case 1:17-cv-00770-JDW Document 271-1 Filed 12/26/23 Page 1 of 8 PageID #: 29470
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`Exhibit A
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`Case 1:17-cv-00770-JDW Document 271-1 Filed 12/26/23 Page 2 of 8 PageID #: 29471
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 17-770-RGA-MPT
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`JURY TRIAL DEMANDED
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`)))))))))
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v.
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`CATERPILLAR INC.,
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`Defendants.
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`CATERPILLAR INC.’S OBJECTIONS AND RESPONSES TO WIRTGEN AMERICA,
`INC.’S FIRST SET OF REQUESTS FOR PRODUCTION TO CATERPILLAR
`(NOS. 1-100)
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`Pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure and the Local Rules
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`of the United States District Court for the District of Delaware (“Local Rules”), Defendant and
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`Counterclaim-Plaintiff Caterpillar Inc. (“Caterpillar”) hereby responds
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`to Plaintiff and
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`Counterclaim-Defendant Wirtgen America, Inc.’s (“Wirtgen America’s”) First Set of Requests for
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`Production (Nos. 1-100) as follows:
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`RESERVATION OF RIGHTS
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`Caterpillar’s responses are based on information currently available to Caterpillar.
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`Caterpillar reserves all rights to supplement, revise, and/or amend these responses should
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`additional information become available through the discovery process or by other means.
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`Caterpillar also reserves the right to produce or use any information or documents that are
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`discovered after service of these responses in support of or in opposition to any motion, in
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`depositions, or at hearings or trial. In responding to Wirtgen America’s First Set of Requests for
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`Production, Caterpillar does not waive any objection on the grounds of privilege, confidentiality,
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`competency, relevance, materiality, authenticity, admissibility of the information contained in
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`these responses, or any other objection.
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`Case 1:17-cv-00770-JDW Document 271-1 Filed 12/26/23 Page 3 of 8 PageID #: 29472
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`burdensome as seeking “all” documents, communications, and things “that refer or relate to” the
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`requested materials regardless of relevance, volume, or time.
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`Subject to and without waiving these objections, Caterpillar will produce, to the extent they
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`exist and can be reasonably located, relevant, non-privileged documents in its possession, custody
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`and/or control responsive to this Request.
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`REQUEST FOR PRODUCTION NO. 11:
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`All documents and things related to any communications between You, any entity, and/or
`person regarding the infringement, or potential infringement, of any of the Asserted Patents by any
`of the Accused Products, Adjustable Lifting Member(s), Lifting Position Control System, Damage
`Avoidance Functionality, Hydraulically Stabilized Chassis, Vibration Mounting Functionality,
`and/or Sensor Switching Functionality.
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`RESPONSE TO REQUEST FOR PRODUCTION NO. 11:
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`Caterpillar incorporates all of its general objections and reservations of rights as if
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`specifically set forth herein. Caterpillar specifically objects to this Request to the extent it seeks
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`information that is not relevant to the claim or defense of any party and is not proportional to the
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`needs of the case. Caterpillar objects to this Request to the extent it seeks information protected
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`from disclosure by the attorney-client privilege and/or work-product doctrine, or any other
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`applicable privilege or protection. Caterpillar objects to this Request as overly broad and unduly
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`burdensome as seeking “all” documents and things “related to” the requested materials regardless
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`of relevance, volume, or time. Caterpillar objects to this Request as premature to the extent it
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`seeks expert testimony or expert-related materials before Caterpillar is required to identify and
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`provide such materials under the Scheduling Order.
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`REQUEST FOR PRODUCTION NO. 12:
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`An example for inspection of each version of each Accused Product sold, offered for sale,
`sold for importation into the U.S., or imported into the U.S. by Caterpillar including, without
`limitation, examples of each version (including without limitation each build (e.g., 02B build) and
`prototype) of PM300 series, PM600 series, and PM800 series machine.
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`12
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`Case 1:17-cv-00770-JDW Document 271-1 Filed 12/26/23 Page 4 of 8 PageID #: 29473
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`Request. Caterpillar objects to this Request to the extent it seeks confidential information
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`belonging to third parties or otherwise subject to third-party confidentiality obligations.
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`Subject to and without waiving its objections, Caterpillar is willing to meet and confer
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`regarding this Request.
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`REQUEST FOR PRODUCTION NO. 25:
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`All opinions, claim charts, studies, or analyses regarding any alleged infringement of any
`claim of the Asserted Patents, including but not limited to documents, communications, and things
`evidencing Your first knowledge of any such alleged infringement, and including any documents,
`communications, and things that compare any of the Asserted Claims to any products sold by
`Caterpillar.
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`RESPONSE TO REQUEST FOR PRODUCTION NO. 25:
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`Caterpillar incorporates all of its general objections and reservations of rights as if
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`specifically set forth herein. Caterpillar specifically objects to this Request to the extent it seeks
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`information that is not relevant to the claim or defense of any party and is not proportional to the
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`needs of the case. Caterpillar objects to this Request to the extent it seeks information protected
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`from disclosure by the attorney-client privilege and/or work-product doctrine, or any other
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`applicable privilege or protection. Caterpillar objects to this Request as overly broad and unduly
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`burdensome as seeking “all” opinions, claim charts, studies, or analyses “related to” the requested
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`materials regardless of relevance, volume, or time.
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`Subject to and without waiving these objections, Caterpillar will produce, to the extent they
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`exist and can be reasonably located, relevant, non-privileged documents in its possession, custody,
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`and/or control responsive to this Request related to Caterpillar’s first knowledge of any alleged
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`infringement of the Asserted Patents.
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`REQUEST FOR PRODUCTION NO. 26:
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`Documents sufficient to identify the city, state, country, and/or region where each of the
`Accused Products have been, are, will be, may be, or are planned to be assembled, produced, or
`manufactured.
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`22
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`Case 1:17-cv-00770-JDW Document 271-1 Filed 12/26/23 Page 5 of 8 PageID #: 29474
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`burdensome as seeking “all” documents, communications, and things “related to” the requested
`
`materials regardless of relevance, volume, or time.
`
`Subject to and without waiving these objections, Caterpillar will produce, to the extent they
`
`exist and can be reasonably located, relevant, non-privileged documents in its possession, custody,
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`and/or control responsive to this request.
`
`REQUEST FOR PRODUCTION NO. 64:
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`All documents, communications, and things related to or referring to any infringement or
`invalidity analysis, freedom to operate analysis, evaluation, study, due diligence, report, or opinion
`regarding any of the Accused Products.
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`RESPONSE TO REQUEST FOR PRODUCTION NO. 64:
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`Caterpillar incorporates all of its general objections and reservations of rights as if
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`specifically set forth herein. Caterpillar specifically objects to this Request to the extent it seeks
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`information that is not relevant to the claim or defense of any party and is not proportional to the
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`needs of the case. Caterpillar objects to this Request to the extent it seeks information protected
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`from disclosure by the attorney-client privilege and/or work-product doctrine, or any other
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`applicable privilege or protection. Caterpillar objects to this Request as overly broad and unduly
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`burdensome as seeking “all” documents, communications, and things “related to” the requested
`
`materials regardless of relevance, volume, or time. Caterpillar objects to this Request as premature
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`to the extent it seeks expert testimony or expert-related materials before Caterpillar is required to
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`identify and provide such materials under the Scheduling Order.
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`REQUEST FOR PRODUCTION NO. 65:
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`All documents, communications, and things related to or referring to any analysis,
`evaluation, study, due diligence, freedom to operate, report, or opinion as to whether or not any of
`the Accused Products infringe any claim of the Asserted Patents.
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`48
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`Case 1:17-cv-00770-JDW Document 271-1 Filed 12/26/23 Page 6 of 8 PageID #: 29475
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`RESPONSE TO REQUEST FOR PRODUCTION NO. 65:
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`Caterpillar incorporates all of its general objections and reservations of rights as if
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`specifically set forth herein. Caterpillar specifically objects to this Request to the extent it seeks
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`information that is not relevant to the claim or defense of any party and is not proportional to the
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`needs of the case. Caterpillar objects to this Request to the extent it seeks information protected
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`from disclosure by the attorney-client privilege and/or work-product doctrine, or any other
`
`applicable privilege or protection. Caterpillar objects to this Request as overly broad and unduly
`
`burdensome as seeking “all” documents, communications, and things “related to” the requested
`
`materials regardless of relevance, volume, or time. Caterpillar objects to this Request as premature
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`to the extent it seeks expert testimony or expert-related materials before Caterpillar is required to
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`identify and provide such materials under the Scheduling Order.
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`REQUEST FOR PRODUCTION NO. 66:
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`All documents, communications, and things related to whether any of the Accused
`Products have non-infringing uses as related to the Asserted Patents.
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`RESPONSE TO REQUEST FOR PRODUCTION NO. 66:
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`Caterpillar incorporates all of its general objections and reservations of rights as if
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`specifically set forth herein. Caterpillar specifically objects to this Request to the extent it seeks
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`information that is not relevant to the claim or defense of any party and is not proportional to the
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`needs of the case. Caterpillar objects to this Request to the extent it seeks information protected
`
`from disclosure by the attorney-client privilege and/or work-product doctrine, or any other
`
`applicable privilege or protection. Caterpillar objects to this Request as overly broad and unduly
`
`burdensome as seeking “all” documents, communications, and things “related to” the requested
`
`materials regardless of relevance, volume, or time. Caterpillar objects to this Request as premature
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`to the extent it seeks expert testimony or expert-related materials before Caterpillar is required to
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`49
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`Case 1:17-cv-00770-JDW Document 271-1 Filed 12/26/23 Page 7 of 8 PageID #: 29476
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`RESPONSE TO REQUEST FOR ENTRY UPON LAND
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`Caterpillar incorporates all of its general objections and reservations of rights as if
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`specifically set forth herein. Caterpillar specifically objects to this Request to the extent it seeks
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`information that is not relevant to the claim or defense of any party and is not proportional to the
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`needs of the case. Caterpillar objects to this Request to the extent it seeks information protected
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`from disclosure by the attorney-client privilege and/or work-product doctrine, or any other
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`applicable privilege or protection. Caterpillar objects to this Request as overly broad and unduly
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`burdensome.
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`Subject to and without waiving these objections, Caterpillar is willing to meet and confer
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`regarding the scope of this Request.
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`OF COUNSEL:
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`James C. Yoon
`Ryan R. Smith
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
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`Dated: November 19, 2021
`7498244/44413
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`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
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`Attorneys for Defendant Caterpillar Inc.
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`75
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`Case 1:17-cv-00770-JDW Document 271-1 Filed 12/26/23 Page 8 of 8 PageID #: 29477
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`CERTIFICATE OF SERVICE
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`I, Bindu A. Palapura, hereby certify that on November 19, 2021, true and correct copies
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`of the within document were served on the following counsel of record at the addresses and in
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`the manner indicated:
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`VIA ELECTRONIC MAIL
`
`Adam W. Poff
`Pilar G. Kraman
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`apoff@ycst.com
`pkraman@ycst.com
`
`Daniel E. Yonan
`Paul A. Ainsworth
`R. Wilson Powers III
`Kyle E. Conklin
`Deirdre M. Wells
`Davin B. Guinn
`Joseph H. Kim
`STERNE, KESSLER, GOLDSTEIN & FOX, PLLC
`1100 New York Ave., NW, Suite 600
`Washington, DC 20005
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`tpowers@sternekessler.com
`kconklin@sternekessler.com
`dwells@sternekessler.com
`dguinn@sternekessler.com
`josephk@sternekessler.com
`
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Scott M. Douglass
`Dominic A. Rota
`Mark A. Kilgore
`John F. Triggs
`PATTERSON INTELLECTUAL PROPERTY
`LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, TN 37203
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`smd@iplawgroup.com
`dar@iplawgroup.com
`mak@iplawgroup.com
`jft@iplawgroup.com
`
` /s/ Bindu A. Palapura
`Bindu A. Palapura
`
`
`
`