Case 1:17-cv-00770-JDW Document 305-1 Filed 02/02/24 Page 1 of 9 PageID #: 30329
`Case 1:17-cv-00770-JDW Document 305-1 Filed 02/02/24 Page 1 of 9 PagelD #: 30329
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:17-cv-00770-JDW Document 305-1 Filed 02/02/24 Page 2 of 9 PageID #: 30330
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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
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`JURY TRIAL DEMANDED
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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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`PLAINTIFF/COUNTERCLAIM-DEFENDANT WIRTGEN AMERICA, INC.’S
`RESPONSES AND OBJECTIONS TO DEFENDANT/COUNTERCLAIM-PLAINTIFF
`CATERPILLAR INC.’S FIRST SET OF REQUESTS FOR PRODUCTION (NOS. 1-91)
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`Pursuant to Federal Rules of Civil Procedure 26 and 34 (each, a “Rule”) and D. Del. LR
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`26.1, and in accordance with this Court’s Scheduling Order (see D.I. 28), Plaintiff/Counterclaim-
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`Defendant Wirtgen America, Inc. (“Plaintiff” or “Wirtgen America”) hereby submits its responses
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`and objections
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`to Defendant/Counterclaim-Plaintiff Caterpillar
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`Inc.’s
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`(“Defendant” or
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`“Caterpillar”) First Set of Requests for Production (Nos. 1-91) (each, a “Request”) as follows:
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`RESERVATION OF RIGHTS
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`Wirtgen America’s responses and objections to the Requests are based on information now
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`reasonably available to Wirtgen America and Wirtgen America’s interpretation of the Requests,
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`and represent Wirtgen America’s good-faith, diligent effort to identify and produce documents
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`that it reasonably believes to be required under Rule 26 and 34. Wirtgen America also expressly
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`reserves the right to rely upon additional information as it becomes reasonably available through
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`discovery or otherwise, pursuant to Rule 26(e). Specifically, Wirtgen America expressly reserves
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`the right to modify, amend, supplement, and/or correct the responses and objections, as
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`information becomes reasonably available, Wirtgen America’s investigation continues, the case
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`Case 1:17-cv-00770-JDW Document 305-1 Filed 02/02/24 Page 3 of 9 PageID #: 30331
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`cumulative or duplicative of subject matter sought in other Requests.
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`Wirtgen America objects to this Request to the extent it seeks information from “[a]ll”
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`documents that are “relating to” Wirtgen America’s “Board of Director meetings” that “relate to”
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`Wirtgen America’s asserted patents, without regard for irrelevance, inordinate volume, unbounded
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`time, overbreadth, undue burden, and/or prejudice. Wirtgen America also objects to this Request
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`to the extent that it seeks information of legal entities and related companies whose documents are
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`not in Wirtgen America’s custody, control, or possession. Wirtgen America further objects to this
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`request to the extent it seeks information from “any” license negotiations or discussions, “any”
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`foreign action against Caterpillar or its foreign entities, or “any” action “involving” Wirtgen
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`America’s asserted patents, without regard for irrelevance, inordinate volume, unbounded time,
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`overbreadth, undue burden, and/or prejudice. Wirtgen America objects to this Request as vague,
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`ambiguous, indefinite, and unclear at least to the terms “Board of Directors” and “foreign entities,”
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`as used in this Request.
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` Subject to and without waiving these objections, Wirtgen America will produce relevant,
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`non-privileged documents that are responsive to this Request, to the extent they exist within
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`Wirtgen America’s possession, custody, or control, and can be located after a reasonable search.
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`REQUEST FOR PRODUCTION NO. 3:
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`All Documents related to Wirtgen America’s Asserted Patents, including but not limited to:
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`a. the ownership, title, transfer, or assignment of any interest in Wirtgen America’s Asserted
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`Patents;
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`b. development of the subject matter of Wirtgen America’s Asserted Patents;
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`c. filing and prosecution of patent applications underlying or related to Wirtgen America’s
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`Asserted Patents;
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`d. any obligation of inventor(s) and/or assignee(s) to cooperate or provide Information
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`relating to Wirtgen America’s Asserted Patents; and
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`e. communications with any other Person about any of Wirtgen America’s Asserted Patents
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`or the subject matter claimed therein, including all related applications of Wirtgen
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`America’s Asserted Patents.
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`RESPONSE:
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`Wirtgen America objects to this Request for the reasons set forth in the General Objections,
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`specifically incorporating all of its General Objections and reservation of rights as if specifically
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`set forth herein.
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`Wirtgen America specifically objects to this Request to the extent it seeks information that
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`is not relevant to any claim or defense of any party and/or that is not proportional to the needs of
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`the case. Wirtgen America objects to this Request to the extent it seeks confidential information,
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`as defined and set forth in the Stipulated Amended Protective Order (see D.I. 61), and to the extent
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`it seeks information that is covered by any applicable privilege or immunity that limits discovery.
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`Wirtgen America did not develop the subject matter of Wirtgen America’s Asserted
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`Patents, nor did it file or prosecute the patent applications underlying or relating to Wirtgen
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`America’s Asserted Patents. Wirtgen America objects to this Request to the extent that the
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`information sought is publicly available, is equally accessible to Caterpillar as it is to Wirtgen
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`America, and/or is unreasonably cumulative or duplicative of subject matter sought in other
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`Requests or in other required disclosures set forth in the Scheduling Order (see D.I. 28), including
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`the Patent Disclosures (see D.I. 28, at 4-5 (¶3(h)(ii)).
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`Wirtgen America objects to this Request to the extent it seeks information from “[a]ll”
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`Case 1:17-cv-00770-JDW Document 305-1 Filed 02/02/24 Page 5 of 9 PageID #: 30333
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`documents that are “related to” Wirtgen America’s asserted patents “including but not limited to”
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`the categories of subject matter set forth in the Request, including at least the filing and prosecution
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`of patent applications “underlying or related to” Wirtgen America’s asserted patents, “any”
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`obligation of inventor(s) and/or assignee(s) to provide “Information” “relating to” Wirtgen
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`America’s asserted patents, and “communications” with “any other Person about any” of “the
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`subject matter claimed” in Wirtgen America’s asserts patents, such as “all related applications” of
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`Wirtgen America’s asserted patents without regard for irrelevance, inordinate volume, unbounded
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`time, overbreadth, undue burden, and/or prejudice. Wirtgen America objects to this Request as
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`vague, ambiguous, indefinite, and unclear at least to the terms and phrases “development,” “subject
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`matter,” “obligation,” “cooperate or provide,” and “related applications,” as used in this Request.
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`Wirtgen America did not engage or participate in, nor has it engaged or participated in, the
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`development of the subject matter of Wirtgen America’s asserted patents, nor did it file or
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`prosecute the patent applications underlying or relating to Wirtgen America’s asserted patents.
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`Notwithstanding the foregoing, subject to and without waiving these objections, Wirtgen America
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`will produce relevant, non-privileged documents that are responsive to this Request, to the extent
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`they exist within Wirtgen America’s possession, custody, or control, and can be located after a
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`reasonable search.
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`REQUEST FOR PRODUCTION NO. 4:
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`Documents sufficient to describe or reflect the names, positions, titles, duties, and reporting
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`relationships of any of Your officers, employees, and other personnel (including any named
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`inventors of Wirtgen America’s Asserted Patents) with responsibility for the design, development,
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`testing, manufacture, operation, distribution, importation, sale, licensing, and marketing of any
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`Case 1:17-cv-00770-JDW Document 305-1 Filed 02/02/24 Page 6 of 9 PageID #: 30334
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`products, methods, or intellectual property that embody, fall within the scope of, or are practiced
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`in accordance with any subject matter disclosed or claimed in Wirtgen America’s Asserted Patents.
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`RESPONSE:
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`Wirtgen America objects to this Request for the reasons set forth in the General Objections,
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`specifically incorporating all of its General Objections and reservation of rights as if specifically
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`set forth herein.
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`Wirtgen America specifically objects to this Request to the extent it seeks information that
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`is not relevant to any claim or defense of any party and/or that is not proportional to the needs of
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`the case. Wirtgen America objects to this Request to the extent it seeks confidential information,
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`as defined and set forth in the Stipulated Amended Protective Order (see D.I. 61), and to the extent
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`it seeks information that is covered by any applicable privilege or immunity that limits discovery.
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`Wirtgen America objects to this Request to the extent it seeks information from “any”
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`products, methods, or intellectual property “that embody, fall within the scope of, or are practiced
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`in accordance with any subject matter disclosed or claimed in” Wirtgen America’s asserted
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`patents, without regard for irrelevance, inordinate volume, unbounded time, overbreadth, undue
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`burden, and/or prejudice. Wirtgen America objects to this Request as vague, ambiguous, indefinite,
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`and unclear at least to the terms and phrases “other personnel,” “development,” “responsibility,”
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`“testing,” “embody,” “fall within the scope of,” and “or are practiced in accordance with any
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`subject matter disclosed or claimed” in Wirtgen America’s asserted patents, as used in this
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`Request. Wirtgen America objects to this Request to the extent it seeks to require Wirtgen America
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`to draw legal conclusions and/or make legal determinations regarding the scope of Wirtgen
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`America’s patents, as conveyed by Caterpillar’s Request to disclose “intellectual property that
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`embody, fall within the scope of, or are practiced in accordance with any subject matter disclosed
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`Case 1:17-cv-00770-JDW Document 305-1 Filed 02/02/24 Page 7 of 9 PageID #: 30335
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`or claimed in” Wirtgen America’s asserted patent.
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`Wirtgen America did not engage or participate in, nor has it engaged or participated in, the
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`design, development, or testing of any Wirtgen America products, methods, or intellectual
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`property of Wirtgen America’s asserted patents. Notwithstanding the foregoing, subject to and
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`without waiving these objections, Wirtgen America will produce relevant, non-privileged
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`documents that are responsive to this Request, to the extent they exist within Wirtgen America’s
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`possession, custody, or control, and can be located after a reasonable search.
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`REQUEST FOR PRODUCTION NO. 5:
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`All Documents related to the prosecution of the applications that issued as Wirtgen
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`America’s Asserted Patents or relating to the prosecution of any related patent or application.
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`RESPONSE:
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`Wirtgen America objects to this Request for the reasons set forth in the General Objections,
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`specifically incorporating all of its General Objections and reservation of rights as if specifically
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`set forth herein.
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`Wirtgen America specifically objects to this Request to the extent it seeks information that
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`is not relevant to any claim or defense of any party and/or that is not proportional to the needs of
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`the case. Wirtgen America objects to this Request to the extent it seeks confidential information,
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`as defined and set forth in the Stipulated Amended Protective Order (see D.I. 61), and to the extent
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`it seeks information that is covered by any applicable privilege or immunity that limits discovery.
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`Wirtgen America objects to this Request to the extent that the information sought is
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`publicly available, is equally accessible to Caterpillar as it is to Wirtgen America, and/or is
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`unreasonably cumulative or duplicative of subject matter sought in other Requests, or is or has
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`Case 1:17-cv-00770-JDW Document 305-1 Filed 02/02/24 Page 8 of 9 PageID #: 30336
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`Wirtgen America further objects to this Request to the extent it seeks entry upon land for
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`“inspecting, photographing, and/or videotaping all equipment” or “all equipment and facilities”
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`used with the accused Wirtgen America products, without regard for irrelevance, inordinate
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`volume, unbounded time, overbreadth, undue burden, and/or prejudice. Wirtgen America objects
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`to this Request as vague, ambiguous, and unduly burdensome at least as to the terms and phrases
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`“process and/or test,” “test, analyze, or inspect,” and “equipment,” as used in this Request.
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`Subject to and without waiving these objections, Wirtgen America will meet and confer
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`YOUNG CONAWAY STARGATT & TAYLOR, LLP
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`/s/ Samantha G. Wilson
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, Delaware 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
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`Attorneys for Plaintiff Wirtgen America, Inc.
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`with Caterpillar on this Request.
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`Dated: December 20, 2021
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`OF COUNSEL:
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`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, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`smd@iplawgroup.com
`dar@iplawgroup.com
`mak@iplawgroup.com
`jft@iplawgroup.com
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`Daniel E. Yonan
`Paul A. Ainsworth
`R. Wilson Powers III
`Kyle E. Conklin
`Deirdre M. Wells
`Joseph H. Kim
`STERNE, KESSLER, GOLDSTEIN & FOX, PLLC
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`Case 1:17-cv-00770-JDW Document 305-1 Filed 02/02/24 Page 9 of 9 PageID #: 30337
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`1100 New York Ave., NW, Suite 600
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`tpowers@sternekessler.com
`kconklin@sternekessler.com
`dwells@sternekessler.com
`josephk@sternekessler.com
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`28930737.1
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