Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 1 of 14 PageID #: 39053
`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 1 of 14 PagelD #: 39053
`
`EXHIBIT 4
`EXHIBIT 4
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 2 of 14 PageID #: 39054
`
`From:
`Sent:
`To:
`Subject:
`
`Smith, Ryan
`Thursday, May 9, 2024 8:05 PM
`WSGR - Caterpillar Litigation
`Re: Wirtgen v. Caterpillar - Supplemental Discovery
`
`On May 9, 2024, at 3:05 PM, Ryan D. Levy <rdl@iplawgroup.com> wrote:
`
`EXT - rdl@iplawgroup.com
`
`Hi Ryan,
`
`Your request to inspect machines that were released prior to the stay is inconsistent with what we had
`discussed and agreed to previously. The first sale date of some of these machines go back more than a decade.
`Caterpillar had ample opportunity to inspect these machines during discovery. With the sole exception of the
`W220 XFi, Wirtgen has already produced thousands of documents relating to each of these machines in
`addition to the many documents pertaining to these machines being available to you in WIDOS.
`
`Machine
`SP 15i
`SP 25i
`SP 94i
`W 120 CFi
`W 100 Fi
`W 120 Fi
`W 130 Fi
`W 210 Fi
`W 100 XFi
`W 120 XFi
`W 130 XFi
`W 220 XFi
`
`First Sale Date
`November 2014
`November 2016
`June 2020
`March 2015
`May 2013
`March 2012
`March 2013
`April 2022
`May 2022
`May 2020
`March 2020
`April 2024
`
`Number of Documents
`Produced
`
`11,385
`10,167
`9,485
`14,750
`1,124
`3,663
`2,073
`7,246
`951
`2,819
`1,369
`0
`
`It is unclear what justification Caterpillar has now to request inspection of multiple machines that were
`publicly available prior to the close of fact discovery, prior to the parties’ agreement on representative
`products, and prior to the parties’ agreement to stay this portion of the case. In the meantime, we are looking
`into the availability of a W220 XFi.
`
`Ryan D. Levy | Managing Shareholder
`PATTERSON INTELLECTUAL PROPERTY LAW
`Phone: 615.242.2400 | Fax: 615.242.2221 | rdl@iplawgroup.com
`Roundabout Plaza | 1600 Division Street, Suite 500
`Nashville, TN 37203
`
`1
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 3 of 14 PageID #: 39055
`
`This email message, including any aftachment(s), is intended only for the named recipient(s) and may contain confidenfial, proprietary or aftorney-client privileged
`informafion. Unauthorized individuals or enfifies are not permifted access to this informafion. Any disseminafion, distribufion, disclosure, or copying of this
`informafion by other than the intended recipient(s) is unauthorized and strictly prohibited. If you have received this message in error, please advise me by reply
`email, and delete this message and any aftachments. Thank you.
`
`From: Smith, Ryan <rsmith@wsgr.com>
`Sent: Tuesday, May 7, 2024 10:50 AM
`To: Ryan D. Levy <rdl@iplawgroup.com>
`Cc: Yen, Lucy <LYen@wsgr.com>; Mays, Christopher <cmays@wsgr.com>; Macdonald, Matthew
`<matthew.macdonald@wsgr.com>; Paul A. Ainsworth <painsworth@sternekessler.com>; Yoon, James
`<JYoon@wsgr.com>
`Subject: RE: Wirtgen v. Caterpillar - Supplemental Discovery
`
`Ryan L.,
`
`Thanks for your response. We’d like to at least understand whether there’s any dispute by the end of the week so that
`we can evaluate the need for a meet and confer.
`
`Best,
`Ryan
`
`From: Ryan D. Levy <rdl@iplawgroup.com>
`Sent: Monday, May 6, 2024 1:47 PM
`To: Smith, Ryan <rsmith@wsgr.com>
`Cc: Yen, Lucy <LYen@wsgr.com>; Mays, Christopher <cmays@wsgr.com>; Macdonald, Matthew
`<matthew.macdonald@wsgr.com>; Paul A. Ainsworth <painsworth@sternekessler.com>; Yoon, James
`
`2
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 4 of 14 PageID #: 39056
`
`<JYoon@wsgr.com>
`Subject: RE: Wirtgen v. Caterpillar - Supplemental Discovery
`
`EXT - rdl@iplawgroup.com
`
`Hi Ryan-
`
`We are still considering this request. We will be back in touch soon on it.
`
`Ryan D. Levy | Managing Shareholder
`PATTERSON INTELLECTUAL PROPERTY LAW
`Phone: 615.242.2400 | Fax: 615.242.2221 | rdl@iplawgroup.com
`Roundabout Plaza | 1600 Division Street, Suite 500
`Nashville, TN 37203
`
`This email message, including any aftachment(s), is intended only for the named recipient(s) and may contain confidenfial, proprietary or aftorney-client privileged
`informafion. Unauthorized individuals or enfifies are not permifted access to this informafion. Any disseminafion, distribufion, disclosure, or copying of this
`informafion by other than the intended recipient(s) is unauthorized and strictly prohibited. If you have received this message in error, please advise me by reply
`email, and delete this message and any aftachments. Thank you.
`
`From: Smith, Ryan <rsmith@wsgr.com>
`Sent: Monday, May 6, 2024 12:00 PM
`To: Ryan D. Levy <rdl@iplawgroup.com>
`Cc: Yen, Lucy <LYen@wsgr.com>; Mays, Christopher <cmays@wsgr.com>; Macdonald, Matthew
`<matthew.macdonald@wsgr.com>; Paul A. Ainsworth <painsworth@sternekessler.com>; Yoon, James
`<JYoon@wsgr.com>
`Subject: RE: Wirtgen v. Caterpillar - Supplemental Discovery
`3
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 5 of 14 PageID #: 39057
`
`Ryan L.,
`
`Please let us know about the machine inspections. If you perceive any issue, let’s have a call to discuss.
`
`Best regards,
`
`Ryan Smith
`Wilson Sonsini
`Cell: 650.269.0822
`Email: rsmith@wsgr.com
`
`From: Smith, Ryan
`Sent: Wednesday, May 1, 2024 5:32 PM
`To: 'Ryan D. Levy' <rdl@iplawgroup.com>
`Cc: Yen, Lucy <LYen@wsgr.com>; Mays, Christopher <cmays@wsgr.com>; Macdonald, Matthew
`<matthew.macdonald@wsgr.com>; 'Paul A. Ainsworth' <painsworth@sternekessler.com>; Yoon, James
`<JYoon@wsgr.com>
`Subject: RE: Wirtgen v. Caterpillar - Supplemental Discovery
`
`Ryan L.,
`
`I wanted to check-in and see if you have any update on the timing of the machine inspection. Please let us know if you’d
`like to have a call to discuss.
`
`Best regards,
`
`Ryan Smith
`Wilson Sonsini
`Cell: 650.269.0822
`Email: rsmith@wsgr.com
`
`From: Smith, Ryan
`Sent: Tuesday, April 23, 2024 10:24 AM
`To: Ryan D. Levy <rdl@iplawgroup.com>
`Cc: Yen, Lucy <LYen@wsgr.com>; Mays, Christopher <cmays@wsgr.com>; Macdonald, Matthew
`<matthew.macdonald@wsgr.com>; Paul A. Ainsworth <painsworth@sternekessler.com>; Yoon, James
`<JYoon@wsgr.com>
`Subject: RE: Wirtgen v. Caterpillar - Supplemental Discovery
`
`Ryan L.,
`
`For machine inspection, we’d like to inspect the following machines:
`
`1. SP 15i / SP 25i / SP 61i (one representative model of these)
`2. SP 94i
`3. W 210 Fi
`4. W 220 XFi (to the extent that W 210 Fi is not representative)
`5. W 120 CFi
`6. W 100 XFi / W 120 XFi / W 130 XFi (one representative model of these)
`4
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 6 of 14 PageID #: 39058
`
`7. W 100 Fi / W 120 Fi / W 130 Fi (one representative model of these; this is the 2022 version)
`
`CAT does not agree that its limited to Wirtgen machines released since the stay was ordered. One of the stated reasons
`for the stipulated stay was “reducing the amount of fact
`discovery needed regarding the parties’ respective contentions.” (D.I. 185 at 3). The parties were clearly contemplating
`additional fact discovery that was placed on hold while the stay was negotiated and ultimately put in place. CAT was
`unable to amend its contentions for the ‘995 and ‘538 patents in view of the Court’s Claim Construction Order.
`
`We agree to the April 26, May 10 and May 24 deadlines as articulated in your email. However, we believe that the
`parties may also need to update their document productions. For example, we anticipate the need for technical
`documents for several of the products identified above. We also anticipate the need for a source code inspection for
`the W 220 XFi to the extent that it’s not deemed to fall within the representative product stipulation. Please let us know
`if we can include an updated document production in the May 24 deadline.
`
`Please let me know if you’d like to have a call to discuss.
`
`Thank you,
`
`Ryan Smith
`Wilson Sonsini
`Cell: 650.269.0822
`Email: rsmith@wsgr.com
`
`From: Ryan D. Levy <rdl@iplawgroup.com>
`Sent: Tuesday, April 23, 2024 8:21 AM
`To: Yoon, James <JYoon@wsgr.com>; Paul A. Ainsworth <painsworth@sternekessler.com>
`Cc: Smith, Ryan <rsmith@wsgr.com>; Yen, Lucy <LYen@wsgr.com>; Mays, Christopher <cmays@wsgr.com>; Macdonald,
`Matthew <matthew.macdonald@wsgr.com>
`Subject: RE: Wirtgen v. Caterpillar - Supplemental Discovery
`
`EXT - rdl@iplawgroup.com
`
`Hi Ryan S.-
`
`Following up on this and I don’t believe we heard back from you on the dates.
`
`Ryan D. Levy | Managing Shareholder
`PATTERSON INTELLECTUAL PROPERTY LAW
`Phone: 615.242.2400 | Fax: 615.242.2221 | rdl@iplawgroup.com
`Roundabout Plaza | 1600 Division Street, Suite 500
`Nashville, TN 37203
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 7 of 14 PageID #: 39059
`
`This email message, including any aftachment(s), is intended only for the named recipient(s) and may contain confidenfial, proprietary or aftorney-client privileged
`informafion. Unauthorized individuals or enfifies are not permifted access to this informafion. Any disseminafion, distribufion, disclosure, or copying of this
`informafion by other than the intended recipient(s) is unauthorized and strictly prohibited. If you have received this message in error, please advise me by reply
`email, and delete this message and any aftachments. Thank you.
`
`From: Ryan D. Levy
`Sent: Thursday, April 18, 2024 3:26 PM
`To: Yoon, James <JYoon@wsgr.com>; Paul A. Ainsworth <painsworth@sternekessler.com>
`Cc: Smith, Ryan <rsmith@wsgr.com>; Yen, Lucy <LYen@wsgr.com>; Mays, Christopher <cmays@wsgr.com>; Macdonald,
`Matthew <matthew.macdonald@wsgr.com>
`Subject: RE: Wirtgen v. Caterpillar - Supplemental Discovery
`
`Thanks Jim-
`
`Regarding machines, our understanding was that what you were interested in machines that have been
`released since the case was stayed that could have a bearing on your infringement assertions and you planned
`to provide that list to us this week as well. With such, we would be able to let you know if such machines
`were sold after the stay in the U.S. and then discuss whether an inspection should occur.
`
`Here is what we would suggest for dates:
`
`1. April 22, 2024 – Caterpillar identify new machines for inspection
`2. April 26, 2024 – Each party identify the interrogatories they plan to supplement and interrogatories
`they request the other side to supplement
`3. May 10, 2024 – Caterpillar identifies the claims it plans to assert
`4. May 24, 2024 – The parties exchange the supplements to the interrogatories
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 8 of 14 PageID #: 39060
`
`This is generally in line with what we discussed previously with the addition of dates for the identification of
`asserted claims and machine identification. Please let us know if we have agreement.
`
`Ryan D. Levy | Managing Shareholder
`PATTERSON INTELLECTUAL PROPERTY LAW
`Phone: 615.242.2400 | Fax: 615.242.2221 | rdl@iplawgroup.com
`Roundabout Plaza | 1600 Division Street, Suite 500
`Nashville, TN 37203
`
`This email message, including any aftachment(s), is intended only for the named recipient(s) and may contain confidenfial, proprietary or aftorney-client privileged
`informafion. Unauthorized individuals or enfifies are not permifted access to this informafion. Any disseminafion, distribufion, disclosure, or copying of this
`informafion by other than the intended recipient(s) is unauthorized and strictly prohibited. If you have received this message in error, please advise me by reply
`email, and delete this message and any aftachments. Thank you.
`
`From: Yoon, James <JYoon@wsgr.com>
`Sent: Thursday, April 18, 2024 11:54 AM
`To: Ryan D. Levy <rdl@iplawgroup.com>; Paul A. Ainsworth <painsworth@sternekessler.com>
`Cc: Smith, Ryan <rsmith@wsgr.com>; Yen, Lucy <LYen@wsgr.com>; Mays, Christopher <cmays@wsgr.com>; Macdonald,
`Matthew <matthew.macdonald@wsgr.com>
`Subject: Re: Wirtgen v. Caterpillar - Supplemental Discovery
`
`sophospsmartbannerend Ryan,
`
`Thanks for the email.
`
`It would be great to get dates.
`
`7
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 9 of 14 PageID #: 39061
`
`We would be happy to provide a list of the machines that we would like to inspect. We are finalizing that.
`
`I think it makes sense to add dates to (1) identify the asserted claims (which we plan to do as part of updated
`infringement contentions) and (2) identify the products that we request to inspect.
`
`Hopefully that answers your questions.
`
`Jim
`
`From: Ryan D. Levy <rdl@iplawgroup.com>
`Date: Thursday, April 18, 2024 at 9:32 AM
`To: Yoon, James <JYoon@wsgr.com>
`Subject: RE: Wirtgen v. Caterpillar - Supplemental Discovery
`
`EXT - rdl@iplawgroup.com
`
`Hi Jim-
`
`Sorry for the delay here, Paul and I had meetings earlier this week where we didn’t connect till late yesterday.
`
`I should be able to get you proposed dates later today. Also, I may be recalling such incorrectly, but I thought
`that you were going to provide a list of machines you were interested in re a possible inspection. Can you
`provide such to me?
`
`Finally, would you be opposed to including a date as well for you to identify claims you plan to assert
`considering the outcomes of the IPRs? Thanks.
`
`Ryan D. Levy | Managing Shareholder
`PATTERSON INTELLECTUAL PROPERTY LAW
`Phone: 615.242.2400 | Fax: 615.242.2221 | rdl@iplawgroup.com
`Roundabout Plaza | 1600 Division Street, Suite 500
`Nashville, TN 37203
`
`8
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 10 of 14 PageID #: 39062
`
`This email message, including any attachment(s), is intended only for the named recipient(s) and may contain confidential, proprietary or attorney-client privileged
`information. Unauthorized individuals or entities are not permitted access to this information. Any dissemination, distribution, disclosure, or copying of this
`information by other than the intended recipient(s) is unauthorized and strictly prohibited. If you have received this message in error, please advise me by reply
`email, and delete this message and any attachments. Thank you.
`
`From: Yoon, James <JYoon@wsgr.com>
`Sent: Tuesday, April 16, 2024 4:17 PM
`To: Ryan D. Levy <rdl@iplawgroup.com>; Paul A. Ainsworth <painsworth@sternekessler.com>
`Cc: Wirtgen Matter <wirtgen1-litigation@iplawgroup.com>; wirtgenDCTlit@sternekessler.com; WSGR - Caterpillar
`Litigation <caterpillar@wsgr.com>; Poff, Adam <APOFF@ycst.com>; Palapura, Bindu A.
`<bpalapura@potteranderson.com>; Moore, David E. <dmoore@potteranderson.com>; Moshos, Andrew M.
`<amoshos@potteranderson.com>
`Subject: Wirtgen v. Caterpillar - Supplemental Discovery
`
`sophospsmartbannerend Ryan and Paul,
`
`Following up on our call last Friday, any thoughts about?
`
`1. Date for Identification of Written Discovery to Supplement
`2. Date for Supplementation of Written Discovery
`Inspections
`3.
`
`Would you like to have a follow-up call this week?
`
`Jim
`
`James Yoon
`
`9
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 11 of 14 PageID #: 39063
`
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`Direct: (650) 320-4726
`Cell: (650) 714-8493
`Email: jyoon@wsgr.com
`
`From: Ryan D. Levy <rdl@iplawgroup.com>
`Date: Wednesday, April 3, 2024 at 1:58 PM
`To: Yoon, James <JYoon@wsgr.com>, Paul A. Ainsworth <painsworth@sternekessler.com>
`Cc: Wirtgen Matter <wirtgen1-litigation@iplawgroup.com>, wirtgenDCTlit@sternekessler.com
`<Wirtgendctlit@sternekessler.com>, WSGR - Caterpillar Litigation <caterpillar@wsgr.com>, Poff, Adam
`<APOFF@ycst.com>, Palapura, Bindu A. <bpalapura@potteranderson.com>, Moore, David E.
`<dmoore@potteranderson.com>, Moshos, Andrew M. <amoshos@potteranderson.com>
`Subject: RE: Wirtgen v. Caterpillar - Supplemental Discovery
`
`EXT - rdl@iplawgroup.com
`
`Jim-
`
`How does Wednesday afternoon between 2pm and 4pm Central or Friday between 3pm and 4pm Central
`work for you?
`
`Ryan D. Levy | Managing Shareholder
`PATTERSON INTELLECTUAL PROPERTY LAW
`Phone: 615.242.2400 | Fax: 615.242.2221 | rdl@iplawgroup.com
`Roundabout Plaza | 1600 Division Street, Suite 500
`Nashville, TN 37203
`
`10
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 12 of 14 PageID #: 39064
`
`This email message, including any attachment(s), is intended only for the named recipient(s) and may contain confidential, proprietary or attorney-client privileged
`information. Unauthorized individuals or entities are not permitted access to this information. Any dissemination, distribution, disclosure, or copying of this
`information by other than the intended recipient(s) is unauthorized and strictly prohibited. If you have received this message in error, please advise me by reply
`email, and delete this message and any attachments. Thank you.
`
`From: Yoon, James <JYoon@wsgr.com>
`Sent: Wednesday, April 3, 2024 1:20 PM
`To: Ryan D. Levy <rdl@iplawgroup.com>; Paul A. Ainsworth <painsworth@sternekessler.com>
`Cc: Wirtgen Matter <wirtgen1-litigation@iplawgroup.com>; wirtgenDCTlit@sternekessler.com; WSGR - Caterpillar
`Litigation <caterpillar@wsgr.com>; Poff, Adam <APOFF@ycst.com>; Palapura, Bindu A.
`<bpalapura@potteranderson.com>; Moore, David E. <dmoore@potteranderson.com>; Moshos, Andrew M.
`<amoshos@potteranderson.com>
`Subject: Wirtgen v. Caterpillar - Supplemental Discovery
`
`sophospsmartbannerend Ryan and Paul,
`
`Is there a good time next week for a call about supplemental discovery?
`
`We would like to discuss:
`
`Identification of each party’s written discovery that needs to be supplemented
`1.
`2. Timetable for supplementation of written discovery
`3. Resolving any discovery disputes prior to the mid-June hearing with the Court
`
`11
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 13 of 14 PageID #: 39065
`
`Let me know what date and times work for a call. After we find the date/time, I will send
`out an appointment.
`
`Jim
`
`James Yoon
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`Direct: (650) 320-4726
`Cell: (650) 714-8493
`Email: jyoon@wsgr.com
`
`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.
`
`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.
`
`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.
`
`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.
`
`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
`12
`
`

`

`Case 1:17-cv-00770-JDW Document 428-4 Filed 06/28/24 Page 14 of 14 PageID #: 39066
`
`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.
`
`13
`
`