Case 1:17-cv-00770-JDW Document 458-3 Filed 09/24/24 Page 1 of 6 PageID #: 40833
`Case 1:17-cv-00770-JDW Document 458-3 Filed 09/24/24 Page 1 of 6 PagelD #: 40833
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`EXHIBIT C
`EXHIBIT C
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`Case 1:17-cv-00770-JDW Document 458-3 Filed 09/24/24 Page 2 of 6 PageID #: 40834
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`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
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`Paul A. Ainsworth
`Cooley, Daniel; Ryan D. Levy; Barney, James
`Mroz, David; Fagan, Jonathan; Will Milliken
`RE: Wirtgen v. Cat - Call re Order
`Monday, September 23, 2024 3:20:19 PM
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`External email
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`Dan,
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`We write to clarify two points.
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`First, with respect to machines sold prior to the injunction going into effect, we have further considered
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`your position in view of controlling law. Under the circumstances, we do not think we can agree to the
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`language you have proposed. We agree that the law does not permit a double recovery for damages
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`once a patentee has been fully compensated via a damages award. That is not quite the situation we
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`are in here as that principle applies only after a patentee has actually collected on a damages award.
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`See Gelayre Elecs., Inc. v. Jackson, 443 F.3d 851, 873 (Fed. Cir. 2006); Fuji Photo Film Co. v. Int'l Trade
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`Comm'n, 474 F.3d 1281, 1294–95 (Fed. Cir. 2007). As Caterpillar has not satisfied the damages award
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`here, we do not think the double recovery principle applies.
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`Second, the sentence where we struck that sentence already referred to the “former design,” which we
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`thought captured the point. By adding the language “that existed prior to the products post ITC
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`redesigns” seemed to us as at best duplicative if not confusing. If you don’t think “former design”
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`captures the point adequately, happy to discuss at 4.
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`Thanks,
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`Paul
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`From: Cooley, Daniel <Daniel.Cooley@finnegan.com>
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`Sent: Monday, September 23, 2024 1:36 PM
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`To: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Ryan D. Levy <rdl@iplawgroup.com>;
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`Barney, James <James.Barney@finnegan.com>
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`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>; Will
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`Milliken <WMilliken@sternekessler.com>
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`Subject: RE: Wirtgen v. Cat - Call re Order
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`EXTERNAL EMAIL: Use caution before clicking links or attachments.
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`Ryan and Paul,
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`For clarity, we wanted to memorialize a few points from our discussion today.
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`

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`Case 1:17-cv-00770-JDW Document 458-3 Filed 09/24/24 Page 3 of 6 PageID #: 40835
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`Wirtgen agreed to reconsider our language starting “nothing in this order . . .,” which
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`addresses activities that may occur on machines that Caterpillar sold prior to the
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`injunction going into effect and would be accounted for in damages (either at trial or in
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`supplemental damages). There was agreement that the law does not permit a double
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`recovery, including both injunction and damages on the same sold machine. Wirtgen will
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`consider sending revisions if it has particular issues.
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`The parties are at an impasse regarding the argument in “Section A.” It is Wirtgen’s position
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`that the jury decided this issue.
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`The parties at an impasse on Rule 54(b). Wirtgen believes that the court should enter
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`partial judgment. Caterpillar opposes partial judgment. Unless an agreement is reached,
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`Wirtgen will send its 2.5 pages of argument today by midnight. Caterpillar will send its
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`responsive 2.5 pages by noon tomorrow (9/24). The parties may then meet and confer.
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`Wirtgen will file the briefing by 5:00 pm ET tomorrow.
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`The parties agreed to continue to discuss prejudgment interest.
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`Caterpillar will further consider Wirtgen’s additions to the order (e.g., “colorably different”
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`language).
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`One additional point that requires clarification: Wirtgen had removed the language “that existed
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`prior to the post ITC redesigns.” Can you please clarify your opposition to the language?
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`Thanks,
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`Dan
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`Daniel C. Cooley | Bio
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`1875 Explorer Street, Suite 800, Reston, Virginia 20190-6023
`571.203.2778 | fax: 202.408.4400 | daniel.cooley@finnegan.com | www.finnegan.com
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`From: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>
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`Sent: Friday, September 20, 2024 7:43 PM
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`To: Cooley, Daniel <Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney,
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`James <James.Barney@finnegan.com>
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`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>; Will
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`Milliken <WMilliken@sternekessler.com>
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`Subject: RE: Wirtgen v. Cat - Call re Order
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`Dan,
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`Thank you for sending the draft and for the discussion today. Attached are our edits to the draft. Happy
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`to discuss on Monday. Also happy to consider any additional changes you may have beforehand.
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`

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`Case 1:17-cv-00770-JDW Document 458-3 Filed 09/24/24 Page 4 of 6 PageID #: 40836
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`Thanks,
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`Paul
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`From: Cooley, Daniel <Daniel.Cooley@finnegan.com>
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`Sent: Friday, September 20, 2024 12:06 PM
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`To: Ryan D. Levy <rdl@iplawgroup.com>; Barney, James <James.Barney@finnegan.com>
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`Cc: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Mroz, David <David.Mroz@finnegan.com>;
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`Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
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`Subject: RE: Wirtgen v. Cat - Call re Order
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`EXTERNAL EMAIL: Use caution before clicking links or attachments.
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`Ryan,
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`
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`Please see the attached draft language. We look forward to discussing this further today.
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`Regards,
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`Dan
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`Daniel C. Cooley | Bio
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`1875 Explorer Street, Suite 800, Reston, Virginia 20190-6023
`571.203.2778 | fax: 202.408.4400 | daniel.cooley@finnegan.com | www.finnegan.com
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`From: Ryan D. Levy <rdl@iplawgroup.com>
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`Sent: Thursday, September 19, 2024 5:11 PM
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`To: Barney, James <James.Barney@finnegan.com>
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`Cc: painsworth@sternekessler.com; Mroz, David <David.Mroz@finnegan.com>; Cooley, Daniel
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`<Daniel.Cooley@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
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`Subject: RE: Wirtgen v. Cat - Call re Order
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`Thanks James. I’ll circulate a Teams meeting for noon CT.
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`Ryan D. Levy | Managing Shareholder
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`PATTERSON INTELLECTUAL PROPERTY LAW
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`Phone: 615.242.2400 | Fax: 615.242.2221 | rdl@iplawgroup.com
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`Roundabout Plaza | 1600 Division Street, Suite 500
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`Nashville, TN 37203
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`Case 1:17-cv-00770-JDW Document 458-3 Filed 09/24/24 Page 5 of 6 PageID #: 40837
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`This email message, including any attachment(s), is intended only for the named recipient(s) and may contain confidential, proprietary or
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`attorney-client privileged information. Unauthorized individuals or entities are not permitted access to this information. Any dissemination,
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`From: Barney, James <James.Barney@finnegan.com>
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`Sent: Thursday, September 19, 2024 3:47 PM
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`To: Ryan D. Levy <rdl@iplawgroup.com>
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`Cc: painsworth@sternekessler.com; Mroz, David <David.Mroz@finnegan.com>; Cooley, Daniel
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`<Daniel.Cooley@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
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`Subject: Wirtgen v. Cat - Call re Order
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`Ryan,
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`
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`Jim Yoon passed along your message regarding a potential call tomorrow at noon CT to
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`discuss the next steps following the order on post-trial motions. We are available at noon CT
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`tomorrow to discuss this. Let me know if that still works for you.
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`FYI, Finnegan will be handling this case on behalf of Caterpillar going forward, so please direct all
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`correspondence to our attention, including the attorneys copied. Thanks.
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`Best Regards,
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`
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`James
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`James R. Barney
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4412 | fax: 202.408.4400 | James.Barney@finnegan.com | www.finnegan.com
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`Case 1:17-cv-00770-JDW Document 458-3 Filed 09/24/24 Page 6 of 6 PageID #: 40838
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