Case 1:17-cv-00770-JDW Document 356 Filed 03/21/24 Page 1 of 2 PageID #: 32566
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`WILMINGTON
`RODNEY SQUARE
`
`NEW YORK
`ROCKEFELLER CENTER
`
`CHARLOTTE
`CARILLON TOWER
`
`Adam W. Poff
`P 302.571.6642
`apoff@ycst.com
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`
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`March 21, 2024
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`VIA ELECTRONIC FILING
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`The Honorable Joshua D. Wolson
`United States District Court
`for the Eastern District of Pennsylvania
`James A. Byrne United States Courthouse
`601 Market Street, Room 3809
`Philadelphia, PA 19106
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`
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`Re: Wirtgen America, Inc. v. Caterpillar Inc.
`Case No. 17-770-JDW
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`Dear Judge Wolson:
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`Wirtgen is in receipt of Your Honor’s instruction for the parties to meet and confer
`regarding Caterpillar’s Notice of Development and Request to Lift Stay and Set Scheduling
`Conference (D.I. 350). Wirtgen writes to provide its position on Caterpillar’s request in advance
`of the conference.
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`Wirtgen’s position is that the Court should defer any decision on Caterpillar’s request
`until the USPTO Director has completed any review of the final written decisions in the inter
`partes review proceedings over the ’995 and ’538 patents.
`
`Parties to a PTAB proceeding may request director review of a PTAB final written
`decision. Director reviews were created in response to the decision in United States v. Arthrex, in
`which the Supreme Court held that, in order for the IPR process to comply with the
`Constitution’s Appointments Clause, final written decisions of administrative patent judges in
`IPR proceedings must be subject to the review of the Director of the USPTO before they become
`the decisions of the agency. 594 U.S. 1, 24–25 (2021). The Director conducts such reviews de
`novo and has the power to issue final decisions herself. See Revised Interim Director Review
`Process, USPTO, https://www.uspto.gov/patents/ptab/decisions/revised-interim-director-review-
`process (last updated Sept. 18, 2023).
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`Wirtgen will be filing at least one such request, which would be due within thirty days of
`the entry of a final written decision. 37 C.F.R. 42.71(d). In this case, the final written decisions
`
`Young Conaway Stargatt & Taylor, LLP
`Rodney Square | 1000 North King Street | Wilmington, DE 19801
`P 302.571.6600 F 302.571.1253 YoungConaway.com
`
`

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`Case 1:17-cv-00770-JDW Document 356 Filed 03/21/24 Page 2 of 2 PageID #: 32567
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`Young Conaway Stargatt & Taylor, LLP
`The Honorable Joshua D. Wolson
`March 21, 2024
`Page 2
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`for the two IPR proceedings related to the ’995 patent issued on March 5, 2024, and the final
`written decision for the IPR proceeding related to the ’538 patent issued on March 12, 2024.
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`The decisions in question will not become the final decision of the agency unless and
`until the Director review process is completed. See Arthrex, 594 U.S. at 24–25; Revised Interim
`Director Review Process, available at https://www.uspto.gov/patents/ptab/decisions/revised-
`interim-director-review-process. Accordingly, Wirtgen requests that Your Honor defer any
`decision on Caterpillar’s request to lift the stay until after final resolution of the Director Review
`process.
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`Pursuant to Your Honor’s instruction, the parties will confer on this matter and provide
`the Court with our availability within Your Honor’s prescribed times.
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`Respectfully,
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`/s/ Adam W. Poff
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`Adam W. Poff (No. 3990)
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`cc: All Counsel of Record
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