`
`WILMINGTON
`RODNEY SQUARE
`
`NEW YORK
`ROCKEFELLER CENTER
`
`CHARLOTTE
`CARILLON TOWER
`
`Adam W. Poff
`P 302.571.6642
`apoff@ycst.com
`
`
`
`March 29, 2024
`
`
`VIA CM/ECF
`
`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
`
`
`
`Dear Judge Wolson,
`
`
`
`
`
`Re: Wirtgen America, Inc. v. Caterpillar, Inc. C.A. No. 17-770-JDW
`
`We write in advance of the scheduling conference to advise the Court of two pending
`developments relating to Caterpillar’s request to lift the stay with respect to the ’995 and ’538
`patents.
`
`First, Wirtgen anticipates filing on Monday, April 1, its requests for the USPTO Director
`Review to review the final written decisions of the PTAB. Those requests will raise significant
`errors of law, including patentability arguments that the PTAB failed to address.
`
`Second, Wirtgen also anticipates filing next week a request for ex parte reexamination of
`the ’995 patent. Wirtgen’s reexamination request will raise substantial new questions of
`patentability, including an issue of obviousness-type double patenting that could not be raised in
`the inter partes review. Importantly, 92% of ex parte reexamination requests are granted by the
`USPTO leading to 78% of challenged claims being canceled or amended if the reexam is
`requested by a third party.1 Accordingly, Wirtgen’s ex parte reexamination request is likely to
`have a significant impact on the scope of any future discovery or trial concerning the ’995 patent.
`
`Lastly, Caterpillar submitted a proposed schedule to the Court that it previously did not
`share with Wirtgen America. Nor did Caterpillar attempt to meet-and-confer with Wirtgen over
`any of its proposals regarding discovery. Should the Court lift the stay, Wirtgen respectfully
`
`
`1 https://www.uspto.gov/sites/default/files/documents/ex_parte_historical_stats_.pdf
`
`Young Conaway Stargatt & Taylor, LLP
`Rodney Square | 1000 North King Street | Wilmington, DE 19801
`P 302.571.6600 F 302.571.1253 YoungConaway.com
`
`
`
`Case 1:17-cv-00770-JDW Document 359 Filed 03/29/24 Page 2 of 2 PageID #: 32572
`
`Young Conaway Stargatt & Taylor, LLP
`Judge Wolson
`March 29, 2024
`Page 2
`
`requests that the parties have an opportunity to meet-and-confer over the scope and timing of
`discovery that remains to be completed and associated deadlines.
`
`
`
`Respectfully,
`
`/s/ Adam W. Poff
`
`Adam W. Poff (No. 3990)
`
`AWP:hs
`cc: All Counsel of Record (via email)
`
`
`
`
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