Case 1:17-cv-00770-JDW Document 271-3 Filed 12/26/23 Page 1 of 4 PageID #: 29486
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`Exhibit C
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`Case 1:17-cv-00770-JDW Document 271-3 Filed 12/26/23 Page 2 of 4 PageID #: 29487
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`JAMES C. YOON
`Internet: JYOON@wsgr.com
`Direct dial: 650-320-4726
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`
`Wilson Sonsini Goodrich & Rosati
`Professional Corporation
`650 Page Mill Road
`Palo Alto, California 94304-1050
`O: 650.493.9300
`F: 650.493.6811
`
`July 13, 2023
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`VIA ELECTRONIC MAIL
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`Paul A. Ainsworth, Esq.
`Sterne Kessler Goldstein & Fox
`PAinsworth@sternekessler.com
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`Re: Wirtgen America, Inc. v. Caterpillar Inc., C.A. No. 17-770-JDW
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`Dear Counsel:
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`We write in response to your July 12 letter regarding the clawback of CAT_00007715.
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`With respect to Caterpillar’s privilege assertion, in the spirit of cooperation, we provide
`the following requested information. Multiple copies of this document appear on our privilege
`log, which further supports our claim of privilege and inadvertent disclosure.
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`Date
`
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`Email
`Recipient(s)
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`10/30/2017 Eric S. Engelmann
`(Custodian/Author)
`Terry P. Healy
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`Privilege
`Basis
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`AC/WP
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`File Name
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`Privilege Description
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`Design_around_analysis.pptx Draft presentation, attached to
`email, prepared in anticipation
`of litigation and reflecting
`provision of legal advice from
`Asha Mehrotra (Caterpillar in-
`house counsel) and Tim Parker
`(Caterpillar in-house counsel)
`on status of Wirtgen America
`litigation.
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`Notably, Wirtgen America does not appear to contest the privileged nature of the
`document. Nor could it, given that the document contains legal advice, is marked
`“CONFIDENTIAL AND PRIVILEGED,” notes on the first page that it originates from
`Caterpillar’s Law and Public Policy division (which includes its legal department), and was (on
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`AUSTIN BEIJING BOSTON BRUSSELS HONG KONG LONDON LOS ANGELES NEW YORK PALO ALTO
`SAN DIEGO SAN FRANCISCO SEATTLE SHANGHAI WASHINGTON, DC WILMINGTON, DE
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`Case 1:17-cv-00770-JDW Document 271-3 Filed 12/26/23 Page 3 of 4 PageID #: 29488
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`Paul A. Ainsworth, Esq.
`July 13, 2023
`Page 2
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`its face) prepared in anticipation of litigation. The document’s obviously privileged nature is
`precisely what gave rise to our Protective Order and ethical concerns.
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`Instead of disputing its privileged nature, Wirtgen America argues that Caterpillar waived
`any privilege. There has been no waiver by Caterpillar. First, Section IX.B of the Protective
`Order clearly states that inadvertent production “shall in no way prejudice or otherwise constitute
`a waiver of, or estoppel as to, any claim of privilege [or] work product.” ECF No. 61 at 18. The
`Protective Order does not set a deadline to request return and deletion of inadvertently produced
`privileged documents. To be clear, there has been no undue delay. We first learned of the
`inadvertent production when we reviewed Dr. Pallavi Seth’s July 7, 2023 Reply Expert Report,
`which discussed the substance of the document extensively. We then immediately sent Wirtgen
`America a clawback letter on July 10—the next business day.1
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`Second, neither Dr. Klopp nor Mr. Reed considered or relied on the document in forming
`any of their opinions as expressed in their reports. Indeed, the document is not cited anywhere in
`the bodies of their reports. Both Dr. Klopp and Mr. Reed have executed errata sheets confirming
`that they did not consider or rely on the document. As Dr. Klopp and Dr. Reed did not consider
`or rely on CAT_00007715, Federal Rule of Civil Procedure 26(b)(4)(C) does not apply. See
`Fed. R. Civ. P. 26(b)(4)(C) (limiting disclosure to communications that “identify facts or data
`that the party’s attorney provided and that the expert considered in forming the opinions to be
`expressed,” or “identify assumptions that the party’s attorney provided and that the expert relied
`on in forming the opinions to be expressed.”) (emphasis added). Accordingly, there has been no
`waiver by disclosure.
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`Third, there has also been no subject matter waiver, also known as “at issue” waiver, of
`privilege over all documents, communications, and assessments of Caterpillar’s design-around
`efforts. Tellingly, counsel cites no case law supporting Wirtgen America’s argument that a
`document’s mere relevance to the case is sufficient for “at issue” waiver to apply. It is well-
`established in the Third Circuit that the opposite is true: “Relevance is not the standard for
`determining whether or not evidence should be protected from disclosure as privileged, and that
`remains the case even if one might conclude the facts to be disclosed are vital, highly probative,
`directly relevant or even go to the heart of an issue.” Rhone-Poulenc Rorer Inc. v. Home Indem.
`Co., 32 F.3d 851, 864 (3d Cir. 1994). Instead, “at issue” waiver “only applies when [a] party
`puts at issue the actual contents of an attorney-client communication in support of its claim or
`defense.” Sensormatic Elecs., LLC v. Genetec (USA) Inc., No. CV 20-760-GBW, 2022 WL
`14760185, at *2 (D. Del. Oct. 20, 2022), adopted, No. CV 20-760-GBW, 2022 WL 18007332
`(D. Del. Dec. 30, 2022) (emphasis added). Caterpillar is not using any privileged
`
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`1 In contrast, Dr. Seth only lists CAT_00007715 a single time in her May 19, 2023 Opening
`Report. It was referenced in footnote 340 in a 128-page report with 412 footnotes.
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`Case 1:17-cv-00770-JDW Document 271-3 Filed 12/26/23 Page 4 of 4 PageID #: 29489
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`Paul A. Ainsworth, Esq.
`July 13, 2023
`Page 3
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`communications or documents regarding its design-around efforts to support any claim or
`defense, and therefore there has been no subject matter waiver.
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`Finally, Wirtgen America’s interpretation of its obligations under the Protective Order
`makes no sense. Wirtgen America appears to be suggesting that counsel can unilaterally use a
`document marked as “CONFIDENTIAL AND PRIVILEGED” and containing legal advice and
`analysis because CAT_00007715 was allegedly responsive to a discovery request. However,
`neither the Protective Order nor the ethical rules create an exception for the improper use of
`privileged information based on its probative value. The terms of the Protective Order are clear;
`Wirtgen America’s use of the document is improper, and your letter only confirms the violation
`of the Protective Order and the ethical rules.
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`It is unclear based on your July 12 letter whether Wirtgen America has destroyed all
`copies of the document and any memos, reports, or other materials referencing the privileged
`information, as required under the Protective Order. Please confirm by July 17 that Wirtgen
`America has complied. Wirtgen America’s refusal to do so would be yet another violation of the
`Protective Order, which requires Wirtgen America to file a motion with the Court if Wirtgen
`America intends to challenge Caterpillar’s claim of privilege. See Section IX.C of Protective
`Order, ECF No. 61 at 18. Further, any such challenge does not relieve Wirtgen America of its
`obligation to refrain from using the privileged information in Dr. Seth’s report, or elsewhere,
`until resolution by the Court.
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`We are available on July 14 or July 17 to meet and confer.
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`Very truly yours,
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`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`
`/s/ James C. Yoon
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