Case 1:17-cv-00770-JDW Document 271-4 Filed 12/26/23 Page 1 of 9 PageID #: 29490
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`Exhibit D
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`

`

`Case 1:17-cv-00770-JDW Document 271-4 Filed 12/26/23 Page 2 of 9 PageID #: 29491
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`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Dear Deidre:
`
`Yen, Lucy <LYen@wsgr.com>
`Thursday, November 30, 2023 5:12 PM
`Deirdre Wells
`WSGR - Caterpillar Litigation; Potter IPservice; APOFF@ycst.com; pkraman@ycst.com;
`swilson@ycst.com; Wirtgen DCT Lit; wirtgen1-litigation@iplawgroup.com; External-
`Bindu Palapura (potteranderson.com)
`RE: Wirtgen v. Caterpillar: Documents regarding good faith belief
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`We have already stated that Mr. Engelmann does not intend to testify inconsistently with his prior testimony. We
`believe that it is premature and speculative to further limit his testimony at this time.
`
`Wirtgen America can assert any evidentiary objections during trial. We will also respond to any motion in limine on this
`issue. As previously stated, however, we believe that any discovery motion is both untimely and baseless.
`
`Regards,
`Lucy
`
`From: Deirdre Wells <DWELLS@sternekessler.com>
`Sent: Tuesday, November 28, 2023 7:19 PM
`To: Yen, Lucy <LYen@wsgr.com>
`Cc: WSGR - Caterpillar Litigation <caterpillar@wsgr.com>; Potter IPservice <IPservice@potteranderson.com>;
`APOFF@ycst.com; pkraman@ycst.com; swilson@ycst.com; Wirtgen DCT Lit <Wirtgendctlit@sternekessler.com>;
`wirtgen1-litigation@iplawgroup.com; External-Bindu Palapura (potteranderson.com)
`<bpalapura@potteranderson.com>
`Subject: Re: Wirtgen v. Caterpillar: Documents regarding good faith belief
`
`EXT - dwells@sternekessler.com
`
`Lucy,
`
`We appreciate that you would like to resolve any motion practice. We, likewise, do not want to burden the
`Court if there is no issue here. But it is unclear from your email what you are saying Mr. Engelmann will not
`testify to at trial. On our call, you had raised agreeing that he would not testify that Caterpillar had/has a good
`faith belief of non-infringement with respect to the ’641 patent, but you said that you needed to discuss it further
`with your client. Can you confirm that Caterpillar will not offer a witness at trial to testify on the issue of
`any good faith belief of non-infringement with respect to the ’641 patent? As we discussed on our call, we do
`
`1
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`

`

`Case 1:17-cv-00770-JDW Document 271-4 Filed 12/26/23 Page 3 of 9 PageID #: 29492
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`not believe it is proper for Caterpillar to assert a good faith belief of non-infringement while refusing Wirtgen
`the documents that underlie (and potentially contradict) the alleged good faith belief.
`
`
`
`
`
`Please let us know if we have an agreement. Unfortunately, if you (1) cannot agree that you will not offer a
`witness to testify regarding a good faith belief of non-infringement and (2) refuse to produce the documents that
`go to the basis for (and potentially contradict) the alleged good faith belief, we will be forced to seek the
`Court’s assistance.
`
`
`
`
`
`Best,
`
`Deirdre
`
`
`On Nov 16, 2023, at 3:19 PM, Yen, Lucy <LYen@wsgr.com> wrote:
`
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`
`Dear Deidre:
`
`
`At this time, It is not clear what relief Wirtgen America is seeking based on Caterpillar’s opposition
`brief. While you appear to be focused on CAT’s response to WA’s SUF 145, WA’s reply to that same SUF
`145 raised no privilege objection or any other waiver arguments.
`
`
`As we have consistently stated, we do not believe that there is any privilege waiver. Not only is there no
`legal or factual basis for any claims of waiver, but the parties previously reached an agreement with
`respect to the privileged PPT presentation, and we object to Wirtgen’s attempt to renege on the prior
`agreement.
`
`
`With respect to Mr. Engelmann’s deposition testimony, fact discovery is over, and we note that Wirtgen
`never filed a motion to compel or other motion directed to Mr. Engelmann’s deposition testimony. It is
`too late to revisit Mr. Engelmann’s deposition testimony now.
`
`
`With respect to Mr. Engelmann’s anticipated trial testimony on the ’641 patent, we have reviewed the
`prior written and deposition testimony from Mr. Engelmann. To resolve any motion practice, we can
`assure you that Mr. Engelmann will not be testifying inconsistently at trial. It is otherwise premature for
`WA to speculate about Mr. Engelmann’s testimony. Any objections should be raised at trial or in
`motions in limine, rather than through a belated motion to compel.
`
`
`Regards,
`Lucy
`
`
`
`From: Deirdre Wells <DWELLS@sternekessler.com>
`Sent: Tuesday, November 14, 2023 8:55 AM
`To: Yen, Lucy <LYen@wsgr.com>; WSGR - Caterpillar Litigation <caterpillar@wsgr.com>; Potter IPservice
`<IPservice@potteranderson.com>
`Cc: apoff@ycst.com; pkraman@ycst.com; swilson@ycst.com; Wirtgen DCT Lit
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 271-4 Filed 12/26/23 Page 4 of 9 PageID #: 29493
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`<Wirtgendctlit@sternekessler.com>; wirtgen1-litigation@iplawgroup.com; External-Bindu Palapura
`(potteranderson.com) <bpalapura@potteranderson.com>
`Subject: RE: Wirtgen v. Caterpillar: Documents regarding good faith belief
`
`
`
`EXT - dwells@sternekessler.com
`
`
`
`
`Lucy,
`
`
`Were you able to connect with your client yesterday? Please let us know when we can expect to receive
`your proposal. We would like to have this issue resolved.
`
`
`Best,
`Deirdre
`
`
`
`<image001.png>
`
`Deirdre M. Wells (She/Her)
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: dwells@sternekessler.com
`Direct: 202.772.8985
`
`
`From: Deirdre Wells
`Sent: Friday, November 10, 2023 6:01 PM
`To: 'Yen, Lucy' <LYen@wsgr.com>; WSGR - Caterpillar Litigation <caterpillar@wsgr.com>; Potter
`IPservice <IPservice@potteranderson.com>
`Cc: apoff@ycst.com; pkraman@ycst.com; swilson@ycst.com; Wirtgen DCT Lit
`<WirtgenDCTLit@sternekessler.com>; wirtgen1-litigation@iplawgroup.com; External-Bindu Palapura
`(potteranderson.com) <bpalapura@potteranderson.com>
`Subject: RE: Wirtgen v. Caterpillar: Documents regarding good faith belief
`
`
`Thanks. Monday at 11:30 AM ET works well. We can use the below call-in information.
`
`-- Do not delete or change any of the following text. --
`
`
`Deirdre Wells is inviting you to a Webex Personal Room meeting.
`
`
`
`Join meeting
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`
`More ways to join:
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`Join from the meeting link
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`Join by meeting number
`Meeting number (access code): 644 379 589
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`3
`
`

`

`Case 1:17-cv-00770-JDW Document 271-4 Filed 12/26/23 Page 5 of 9 PageID #: 29494
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`
`
`Tap to join from a mobile device (attendees only)
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`<image001.png>
`
`Deirdre M. Wells (She/Her)
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: dwells@sternekessler.com
`Direct: 202.772.8985
`
`
`From: Yen, Lucy <LYen@wsgr.com>
`Sent: Friday, November 10, 2023 5:54 PM
`To: Deirdre Wells <DWELLS@sternekessler.com>; WSGR - Caterpillar Litigation <caterpillar@wsgr.com>;
`Potter IPservice <IPservice@potteranderson.com>
`Cc: apoff@ycst.com; pkraman@ycst.com; swilson@ycst.com; Wirtgen DCT Lit
`<Wirtgendctlit@sternekessler.com>; wirtgen1-litigation@iplawgroup.com; External-Bindu Palapura
`(potteranderson.com) <bpalapura@potteranderson.com>
`Subject: RE: Wirtgen v. Caterpillar: Documents regarding good faith belief
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`
`Monday 10-12 would be fine.
`
`
`
`
`From: Deirdre Wells <DWELLS@sternekessler.com>
`Sent: Friday, November 10, 2023 5:11 PM
`To: Yen, Lucy <LYen@wsgr.com>; WSGR - Caterpillar Litigation <caterpillar@wsgr.com>; Potter IPservice
`<IPservice@potteranderson.com>
`Cc: apoff@ycst.com; pkraman@ycst.com; swilson@ycst.com; Wirtgen DCT Lit
`<Wirtgendctlit@sternekessler.com>; wirtgen1-litigation@iplawgroup.com
`Subject: RE: Wirtgen v. Caterpillar: Documents regarding good faith belief
`
`
`4
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`

`

`Case 1:17-cv-00770-JDW Document 271-4 Filed 12/26/23 Page 6 of 9 PageID #: 29495
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`EXT - dwells@sternekessler.com
`
`
`
`
`Lucy,
`
`
`Please let us know when you are available on Monday for a meet and confer?
`
`
`Best,
`Deirdre
`
`
`
`<image001.png>
`
`Deirdre M. Wells (She/Her)
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: dwells@sternekessler.com
`Direct: 202.772.8985
`
`
`From: Yen, Lucy <LYen@wsgr.com>
`Sent: Friday, November 10, 2023 5:05 PM
`To: Deirdre Wells <DWELLS@sternekessler.com>; WSGR - Caterpillar Litigation <caterpillar@wsgr.com>;
`Potter IPservice <IPservice@potteranderson.com>
`Cc: apoff@ycst.com; pkraman@ycst.com; swilson@ycst.com; Wirtgen DCT Lit
`<Wirtgendctlit@sternekessler.com>; wirtgen1-litigation@iplawgroup.com
`Subject: RE: Wirtgen v. Caterpillar: Documents regarding good faith belief
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`
`Dear Deidre:
`
`
`Caterpillar will not be producing any documents or communications protected by the attorney-client
`privilege and objects to your attempt to improperly expand the doctrine of waiver. Caterpillar’s “good-
`faith belief that the accused reverse shut-off feature does not practice the asserted claims” neither
`discloses nor relies upon the advice of counsel.
`
`
`Advice is not in issue merely because it is relevant, and does not necessarily become in
`issue merely because the attorney’s advice might affect the client’s state of mind in a
`relevant manner. The advice of counsel is placed in issue where the client asserts a claim
`or defense, and attempts to prove that claim or defense by disclosing or describing an
`attorney client communication. . . . Thus, in a patent suit, where an infringer is alleged
`to have acted willfully, the advice of the infringer’s lawyer may be relevant to the question
`of whether the infringer acted with a willful state of mind. However, the advice of the
`infringer’s counsel is not placed in issue, and the privilege is not waived, unless the
`infringer seeks to limit its liability by describing that advice and by asserting that he relied
`on that advice.
`
`
`
`Rhone-Poulenc Rorer v. Home Indem. Co., 32 F.3d 851, 863 (3d. Cir. 1994). Neither in its brief nor in the
`cited deposition testimony has Caterpillar “placed the advice of counsel or contents of previously
`identified privileged communications in issue.” Jorjani v. New Jersey Inst. of Tech., No. CV 18-11693
`(WJM), 2023 WL 2986694, at *12 (D.N.J. Apr. 18, 2023) (denying motion to compel privileged
`communications because witnesses’ testimony that they acted in good faith and without willfulness and
`that they consulted counsel on related topics did not waive the attorney-client privilege); see also
`
`5
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`Case 1:17-cv-00770-JDW Document 271-4 Filed 12/26/23 Page 7 of 9 PageID #: 29496
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`Astrazeneca LP v. Breath Ltd., No. CV 08-1512 (RBK/AMD), 2010 WL 11428457, at *6 (D.N.J. Aug. 26,
`2010) (finding no waiver of attorney-client privilege because testimony that defendant lacked the
`specific intent to induce infringement did not place advice of counsel in issue).
`
`
`Caterpillar has never raised an advice-of-counsel defense in this action and, as you noted in your email,
`has actively asserted its privilege throughout this litigation. There is no support in the law or
`Caterpillar’s actions for your claims of waiver.
`
`
`Regards,
`Lucy
`
`.
`
`
`
`From: Deirdre Wells <DWELLS@sternekessler.com>
`Sent: Wednesday, November 8, 2023 1:23 PM
`To: WSGR - Caterpillar Litigation <caterpillar@wsgr.com>; Potter IPservice
`<IPservice@potteranderson.com>
`Cc: apoff@ycst.com; pkraman@ycst.com; swilson@ycst.com; Wirtgen DCT Lit
`<Wirtgendctlit@sternekessler.com>; wirtgen1-litigation@iplawgroup.com
`Subject: Wirtgen v. Caterpillar: Documents regarding good faith belief
`
`
`
`EXT - dwells@sternekessler.com
`
`
`
`
`Counsel,
`
`
`Caterpillar’s briefing in Opposition to Wirtgen’s Motion for Partial Summary Judgment indicates that
`Caterpillar intends to rely on “a good-faith belief” of non-infringement for the ’641 patent and cites to
`Mr. Engelmann for this proposition. Opp. Br. at 17. This is the first time Caterpillar has disclosed this
`purported defense. Moreover, this is contrary to Caterpillar’s previously consistent position that it
`would not permit discovery into the full basis of Mr. Engelmann’s purported belief that Caterpillar did
`not infringe the ‘641 patent. See Engelmann March 17, 2023 Dep. Tr. at 278:18 – 282:8 (counsel’s
`repeated instructions to Mr. Englemann to not answer and/or to not disclose the substance of any
`privileged communications).
`
`
`While Mr. Engelmann testified that he had basic personal opinions regarding the ’641 patent and the
`accused products, he repeatedly testified that he did not form non-infringement opinions with respect
`to the ’641 patent and that he relies on the Caterpillar legal team for such analyses. Specifically, he was
`asked whether he “personally form[ed] an opinion that Caterpillar’s PM600, PM800, or PM300 did not
`infringe the ’641 patent.” Engelmann March 17, 2023 Dep. Tr. at 279:8-10. He responded: “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 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. Therefore, any belief Mr. Engelmann actually had with respect to non-
`infringement of the ’641 patent was in reliance on the Caterpillar legal team.
`
`
`Caterpillar has never disclosed that it was relying on either Mr. Englemann’s “personal opinions” or its
`legal team’s opinions to support its defense to non-infringement. In fact, Caterpillar withheld documents
`relevant to this very issue during discovery, thwarting Wirtgen’s ability to—as you say—“challenge
`
`6
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`Case 1:17-cv-00770-JDW Document 271-4 Filed 12/26/23 Page 8 of 9 PageID #: 29497
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`Caterpillar’s non-infringement position or its good faith.” Opp. Br. at 18. Specifically, in July 2023
`Caterpillar clawed back a PowerPoint document beginning with Bates number CAT_00007715 asserting
`that it is privileged. See July 13 2023 Ltr. from J. Yoon to P. Ainsworth. During its claw back, 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).” The document includes analysis of the
`’641 patent. See, e.g., CAT-700_09522 (reproduced 1-page excerpt of the clawed back CAT_00007715
`PowerPoint). This document thus appears to include the very input from the “legal team at Caterpillar in
`the intellectual property department [that] help[ed] [Mr. Engelmann] with [non-infringement]
`determinations.”
`
`
`By 5 PM ET Friday, November 10 please produce unredacted copies of all documents sent to, in the
`custody of, or authored by Mr. Engelmann regarding infringement or non-infringement of the ’641
`patent (including but not limited to CAT_00007715). If you refuse, please let us know when you are
`available on Monday November 13 for a meet and confer to we can promptly address this dispute.
`
`
`Best,
`Deirdre
`
`
`<image002.png> Deirdre M. Wells (She/Her)
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1101 K Street NW, 10th Floor, Washington, DC 20005
`<image001.png>
`Email: dwells@sternekessler.com
`Direct: 202.772.8985
`
`
`
`
`
`Please be aware as of August 1, 2023, the Sterne, Kessler, Goldstein & Fox office
`address is 1101 K Street, NW, 10th Floor, Washington, DC 20005. Information about
`our new address is being provided for your awareness and updating of our firm profile,
`your records, etc. if/as needed.
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`
`
`7
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`

`

`Case 1:17-cv-00770-JDW Document 271-4 Filed 12/26/23 Page 9 of 9 PageID #: 29498
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`This email and any attachments thereto may contain private, confidential, and privileged material
`for the sole use of the intended recipient. Any review, copying, or distribution of this email (or
`any attachments thereto) by others is strictly prohibited. If you are not the intended recipient,
`please contact the sender immediately and permanently delete the original and any copies of this
`email and any attachments thereto.
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`
`This email and any attachments thereto may contain private, confidential, and privileged material for
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`This email and any attachments thereto may contain private, confidential, and privileged material for the sole
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`8
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`