Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 1 of 12 PageID #: 40875
`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 1 of 12 PagelD #: 40875
`
`E(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87)(cid:3)(cid:37)
`Exhibit B
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 2 of 12 PageID #: 40876
`
`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Cooley, Daniel
`Paul A. Ainsworth; Ryan D. Levy; Barney, James
`Mroz, David; Fagan, Jonathan; Will Milliken; CAT-Wirtgen-Dist-DE
`RE: Wirtgen v. Cat - Call re Order
`Tuesday, September 24, 2024 4:27:08 PM
`image004.png
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`Paul,
`
`It is our position that it is premature to submit the formal judgment at this time because the
`Court asked for a submission of the language of a proposed judgment only “[t]o the extent that
`the parties agree that I should enter partial judgment.” Dkt. 457 at 3. First, because we have
`taken no position on this issue, we disagree with at least the following two statements:
`
`
`WHEREAS, the interest of judicial efficiency would be enhanced if the rulings on
`Wirtgen’s asserted patents could be considered in the same appeal with any appeal
`from the injunction, see 28 U.S.C. § 1292(a)(1), if the Court of Appeals so desires;
`WHEREAS, the parties have consented to and jointly sought entry of this Partial Final
`Judgment;
`
`
`Second, because we only received your draft yesterday at 3:30 pm, we have not had sufficient
`time to discuss the draft with our client, so we are not in position to agree or disagree with the
`language that you have provided.
`
`Therefore, we think the best course is to indicate to the Court that, if the Court decides to grant
`partial judgment, the parties will have a chance to meet and confer and provide a proposed
`judgment.
`
`Best,
`Dan
`
`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
`
`
`From: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>
`Sent: Tuesday, September 24, 2024 3:16 PM
`To: Cooley, Daniel <Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney,
`James <James.Barney@finnegan.com>
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>; CAT-Wirtgen-Dist-DE <CAT-Wirtgen-Dist-
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 3 of 12 PageID #: 40877
`
`DE@finnegan.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`Dan,
`
`We can accept your proposed language below for the form of injunction. We do not oppose the
`“post-ITC” design language. Do you also agree to include the “more than” language referenced
`below?
`
`As to entry of final judgment, we are a bit surprised that you are now taking the position that you do
`not oppose entry given our meet-and-confer. We are also surprised that it took you until 3PM to
`advise us of your actual position. In any event, we intend to submit our proposed form of final
`judgment with the joint letter and note that you believe it is premature to submit. If you have any
`disagreements with the language, we’ll consider them if received before 4pm.
`
`Thanks,
`Paul
`
`
`
`
`From: Cooley, Daniel <Daniel.Cooley@finnegan.com>
`Sent: Tuesday, September 24, 2024 2:59 PM
`To: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Ryan D. Levy <rdl@iplawgroup.com>;
`Barney, James <James.Barney@finnegan.com>
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>; CAT-Wirtgen-Dist-DE <CAT-Wirtgen-Dist-
`DE@finnegan.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`Paul,
`
`We understand your point about Federal Rule 65. That said, Caterpillar would be more
`comfortable using the actual language in Judge Wolson’s order. Some of the language in
`Wirtgen’s proposal draws inferences from the order with which Caterpillar does not agree.
`Thus, we propose the following language:
`
`
`I impose a permanent injunction for the reasons that I outline in my Memorandum
`issued on September 17, 2024. D.I. 456.
`
`We take from your email that you do not oppose our “post-ITC” design language as you
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 4 of 12 PageID #: 40878
`
`already stated on the phone. If that is incorrect, please let us know.
`
`We also attach edits to your Rule 54(b) letter.
`
`Regards,
`Dan
`
`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
`
`
`From: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>
`Sent: Tuesday, September 24, 2024 2:25 PM
`To: Cooley, Daniel <Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney,
`James <James.Barney@finnegan.com>
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>; CAT-Wirtgen-Dist-DE <CAT-Wirtgen-Dist-
`DE@finnegan.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`Dan,
`
`Thank you for confirming our agreement on the first point.
`
`Two minor points:
`
`First, to be consistent with legal standard, we think the phrase should be “products that are not
`more than colorably different from these adjudicated products”. The underlined language was
`omitted from our earlier redlines.
`
`Also, to be consistent with our reading of FRCP 65(d)(1)(A), we think the order is required to state
`the reason why issued. This is why we inserted the following language at the beginning: “Because I
`have concluded that (i) Wirtgen is suffering irreparable harm from Caterpillar’s infringement,
`(ii) Wirtgen does not have an adequate remedy at law, (iii) the balance of hardships weighs in
`Wirtgen’s favor, and (iv) the public interest would be served by granting injunctive relief, see
`D.I. 456 at 52–62 (hereby incorporated by reference),”
`
`Any issues with these additions?
`
`Thanks,
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 5 of 12 PageID #: 40879
`
`Paul
`
`
`
`
`
`
`
`
`From: Cooley, Daniel <Daniel.Cooley@finnegan.com>
`Sent: Tuesday, September 24, 2024 2:03 PM
`To: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Ryan D. Levy <rdl@iplawgroup.com>;
`Barney, James <James.Barney@finnegan.com>
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>; CAT-Wirtgen-Dist-DE <CAT-Wirtgen-Dist-
`DE@finnegan.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`Paul and Ryan,
`
`We attach the agreed upon language for the injunction order. In particular, we agreed to your
`addition of the “colorably language” given that you agree that the standard two-part injunction
`test applies, and you agreed to our insertion of the language from the Judge’s memorandum
`regarding “Caterpillar’s prior machine design (the design Caterpillar used before the post-ITC
`redesign).”
`
`Outside of this, the parties did not reach agreement on any of the other redlined language. We
`intend to include this as an exhibit to facilitate the Judge’s review.
`
`If you have any questions, please let us know by 3:00 pm ET.
`
`Best,
`Dan
`
`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
`
`
`From: Cooley, Daniel
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 6 of 12 PageID #: 40880
`
`Sent: Tuesday, September 24, 2024 1:56 PM
`To: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Ryan D. Levy <rdl@iplawgroup.com>;
`Barney, James <James.Barney@finnegan.com>
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>; CAT-Wirtgen-Dist-DE <CAT-Wirtgen-Dist-
`DE@finnegan.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`Paul,
`
`We do have some issues with the language, but this is a moot point for now because the
`submission of an order is premature. The court asked for a submission of the language of a
`proposed judgment only “[t]o the extent that the parties agree that I should enter partial
`judgment.” Dkt. 457 at 3 (emphasis added). Because Caterpillar does not outright agree to the
`partial judgment, the submission is premature. That said, we are happy to discuss the
`language with you once the Court rules.
`
`Regards,
`Dan
`
`
`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
`
`
`From: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>
`Sent: Tuesday, September 24, 2024 1:39 PM
`To: Cooley, Daniel <Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney,
`James <James.Barney@finnegan.com>
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`Dan –
`
`As to the form of final judgment, does Caterpillar have any edits or comments? Please let us know if
`there’s a dispute over language on this.
`
`Thanks,
`Paul
`
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 7 of 12 PageID #: 40881
`
`From: Paul A. Ainsworth
`Sent: Monday, September 23, 2024 3:30 PM
`To: 'Cooley, Daniel' <Daniel.Cooley@finnegan.com>; 'Ryan D. Levy' <rdl@iplawgroup.com>; 'Barney,
`James' <James.Barney@finnegan.com>
`Cc: 'Mroz, David' <David.Mroz@finnegan.com>; 'Fagan, Jonathan' <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`Dan,
`
`Attached is a draft form of final judgment. We understand that we disagree on whether a Rule 54(b)
`judgment ought to be entered, but let us know whether you have any concerns with the proposed
`form.
`
`Thanks,
`Paul
`
`From: Paul A. Ainsworth
`Sent: Monday, September 23, 2024 3:20 PM
`To: 'Cooley, Daniel' <Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney,
`James <James.Barney@finnegan.com>
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`Dan,
`
`We write to clarify two points.
`
`First, with respect to machines sold prior to the injunction going into effect, we have further
`considered your position in view of controlling law. Under the circumstances, we do not think we
`can agree to the language you have proposed. We agree that the law does not permit a double
`recovery for damages once a patentee has been fully compensated via a damages award. That is not
`quite the situation we are in here as that principle applies only after a patentee has actually
`collected on a damages award. See Gelayre Elecs., Inc. v. Jackson, 443 F.3d 851, 873 (Fed. Cir. 2006);
`Fuji Photo Film Co. v. Int'l Trade Comm'n, 474 F.3d 1281, 1294–95 (Fed. Cir. 2007). As Caterpillar has
`not satisfied the damages award here, we do not think the double recovery principle applies.
`
`Second, the sentence where we struck that sentence already referred to the “former design,” which
`we thought captured the point. By adding the language “that existed prior to the products post ITC
`redesigns” seemed to us as at best duplicative if not confusing. If you don’t think “former design”
`captures the point adequately, happy to discuss at 4.
`
`Thanks,
`Paul
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 8 of 12 PageID #: 40882
`
`
`
`
`From: Cooley, Daniel <Daniel.Cooley@finnegan.com>
`Sent: Monday, September 23, 2024 1:36 PM
`To: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Ryan D. Levy <rdl@iplawgroup.com>;
`Barney, James <James.Barney@finnegan.com>
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`Ryan and Paul,
`
`For clarity, we wanted to memorialize a few points from our discussion today.
`
`
`Wirtgen agreed to reconsider our language starting “nothing in this order . . .,” which
`addresses activities that may occur on machines that Caterpillar sold prior to the
`injunction going into effect and would be accounted for in damages (either at trial or in
`supplemental damages). There was agreement that the law does not permit a double
`recovery, including both injunction and damages on the same sold machine. Wirtgen
`will consider sending revisions if it has particular issues.
`The parties are at an impasse regarding the argument in “Section A.” It is Wirtgen’s
`position that the jury decided this issue.
`The parties at an impasse on Rule 54(b). Wirtgen believes that the court should enter
`partial judgment. Caterpillar opposes partial judgment. Unless an agreement is
`reached, Wirtgen will send its 2.5 pages of argument today by midnight. Caterpillar will
`send its responsive 2.5 pages by noon tomorrow (9/24). The parties may then meet and
`confer. Wirtgen will file the briefing by 5:00 pm ET tomorrow.
`The parties agreed to continue to discuss prejudgment interest.
`Caterpillar will further consider Wirtgen’s additions to the order (e.g., “colorably
`different” language).
`
`
`One additional point that requires clarification: Wirtgen had removed the language “that
`existed prior to the post ITC redesigns.” Can you please clarify your opposition to the
`language?
`
`Thanks,
`Dan
`
`
`Daniel C. Cooley | Bio
`Partner
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 9 of 12 PageID #: 40883
`
`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
`
`
`From: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>
`Sent: Friday, September 20, 2024 7:43 PM
`To: Cooley, Daniel <Daniel.Cooley@finnegan.com>; Ryan D. Levy <rdl@iplawgroup.com>; Barney,
`James <James.Barney@finnegan.com>
`Cc: Mroz, David <David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>;
`Will Milliken <WMilliken@sternekessler.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`Dan,
`
`Thank you for sending the draft and for the discussion today. Attached are our edits to the draft.
`Happy to discuss on Monday. Also happy to consider any additional changes you may have
`beforehand.
`
`Thanks,
`Paul
`
`From: Cooley, Daniel <Daniel.Cooley@finnegan.com>
`Sent: Friday, September 20, 2024 12:06 PM
`To: Ryan D. Levy <rdl@iplawgroup.com>; Barney, James <James.Barney@finnegan.com>
`Cc: Paul A. Ainsworth <PAINSWORTH@sternekessler.com>; Mroz, David
`<David.Mroz@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`
`Ryan,
`
`Please see the attached draft language. We look forward to discussing this further today.
`
`Regards,
`Dan
`
`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
`
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 10 of 12 PageID #: 40884
`
`
`From: Ryan D. Levy <rdl@iplawgroup.com>
`Sent: Thursday, September 19, 2024 5:11 PM
`To: Barney, James <James.Barney@finnegan.com>
`Cc: painsworth@sternekessler.com; Mroz, David <David.Mroz@finnegan.com>; Cooley, Daniel
`<Daniel.Cooley@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
`Subject: RE: Wirtgen v. Cat - Call re Order
`
`
`Thanks James. I’ll circulate a Teams meeting for noon CT.
`
`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 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: Barney, James <James.Barney@finnegan.com>
`Sent: Thursday, September 19, 2024 3:47 PM
`To: Ryan D. Levy <rdl@iplawgroup.com>
`Cc: painsworth@sternekessler.com; Mroz, David <David.Mroz@finnegan.com>; Cooley, Daniel
`<Daniel.Cooley@finnegan.com>; Fagan, Jonathan <Jonathan.Fagan@finnegan.com>
`Subject: Wirtgen v. Cat - Call re Order
`
`Ryan,
`
`Jim Yoon passed along your message regarding a potential call tomorrow at noon CT to
`discuss the next steps following the order on post-trial motions. We are available at noon CT
`tomorrow to discuss this. Let me know if that still works for you.
`
`FYI, Finnegan will be handling this case on behalf of Caterpillar going forward, so please direct
`all correspondence to our attention, including the attorneys copied. Thanks.
`
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 11 of 12 PageID #: 40885
`
`Best Regards,
`
`James
`
`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
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`

`

`Case 1:17-cv-00770-JDW Document 460-2 Filed 09/24/24 Page 12 of 12 PageID #: 40886
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`