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`Exhibit A
`to Opening Brief in Support of
`Wirtgen America, Inc.’s Motion
`to Sever and Transfer
`Caterpillar Inc.’s Permissive
`Counterclaims for Patent
`Infringement
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`Exhibit A
`to Opening Brief in Support of
`Wirtgen America, Inc.’s Motion
`to Sever and Transfer
`Caterpillar Inc.’s Permissive
`Counterclaims for Patent
`Infringement
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 2 of 97 PageID #: 9655
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 17-770-RGA
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`JURY TRIAL DEMANDED
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`WIRTGEN AMERICA, INC.
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`CATERPILLAR INC.
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`Defendant/Counterclaim-Plaintiff.
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`DECLARATION OF JEFF WILEY
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 3 of 97 PageID #: 9656
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`I, Jeff Wiley, hereby declare as follows:
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`I.
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`2.
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`I am over the age of eighteen and otherwise competent to testify.
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`I make this declaration in support of Wirtgen America's Motion to sever and
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`transfer Defendant Caterpillar Inc.'s Permissive Counterclaims for Patent Infringement.
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`3.
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`I am currently the Senior Vice President of Sales and Marketing at Wirt gen
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`America, Inc. ("Wirtgen America"). I am responsible for the sales of Wirtgen products including
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`milling machines and concrete slip-form pavers. I have been with Wirtgen America since 1992.
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`4.
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`5.
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`Wirtgen America is headquartered in Antioch, Tennessee, a suburb of Nashville.
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`Wirtgen America also has a Center for Training and Technology adjacent to its
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`headquarters that offers an extensive curriculum tailored to the learning needs of technicians,
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`operators, work crews, site managers, service engineers, and service department personnel.
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`6.
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`All Wirtgen America's executive officers are based out ofWirtgen America's
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`headquarters in Antioch, Tennessee; eight live in Tennessee, one in Georgia, and one in
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`Pennsylvania.
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`7.
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`8.
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`195 of268 Wirtgen America employees work in Antioch, Tennessee.
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`Wirtgen America does not maintain any offices, warehouses, retail locations, or
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`other facilities in Delaware.
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`9.
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`Wirtgen America has no ownership stake in any dealer in Delaware, including
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`Elliot and Franz, Inc., the dealer referred to by Caterpillar as being located at 38420 Sussex
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`Highway, Delmar, Delaware, 19940.
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`I 0. Wirtgen America does not operate or control any of its Delaware dealers.
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`11. Wirtgen America does not own or lease the places of any Delaware dealers.
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`12. Wirtgen America does not store company inventory at any Delaware dealers.
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`I
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 4 of 97 PageID #: 9657
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`13. Wirtgen America has no requirement that any Delaware dealers exclusively sell
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`Wirtgen products.
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`14.
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`No Wirtgen America employees are based in or reside in Delaware. The district
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`sales manager whose territory includes Delaware lives in Maryland and works out of his home
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`office.
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`15. Wirtgen America first provided the accused slip-form pavers to customers in the
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`United States as follows: SP 64i in August 2016; SP 94i in June 2015; and SP 124i in June 2020.
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`The accused slip-form pavers can have an operating weight anywhere from 37,500 to 224,872
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`lbs., depending on how they are equipped.
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`16. Wirtgen America first sold the accused milling machine, i.e., the W 210 Fi, in the
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`United States in May 2019. The accused milling machine has an operating weight of64,500 lbs.
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`17. Wirtgen America's documents regarding the Wirtgen America accused products
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`are principally at Wirtgen America's headquarters in Tennessee. Wirtgen America does not
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`maintain any technical or business information about the accused products in Delaware.
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`18. Wirtgen America stores its products that it owns at its headquarters in Tennessee.
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`2
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 5 of 97 PageID #: 9658
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`I declare under penalty of perjury under the laws of the United States of America that
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`the foregoing is true and correct.
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`Executed at Nashville, Tennessee on November 4, 2021
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`JEFF WILEY
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`3
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 6 of 97 PageID #: 9659
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`Exhibit B
`to Opening Brief in Support of
`Wirtgen America, Inc.’s Motion
`to Sever and Transfer
`Caterpillar Inc.’s Permissive
`Counterclaims for Patent
`Infringement
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 7 of 97 PageID #: 9660
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v.
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`CATERPILLAR INC.,
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`Defendant.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 17-770-RGA-MPT
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`JURY TRIAL DEMANDED
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`CATERPILLAR INC.’S IDENTIFICATION OF
`ASSERTED PATENTS AND ACCUSED PRODUCTS
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`Pursuant to Paragraph 3(h)(ii)(1) of the Scheduling Order (D.I. 28), Defendant and
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`Counterclaim-Plaintiff Caterpillar Inc. (“Caterpillar”) hereby makes the following disclosures
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`based on information reasonably available to Caterpillar at this time, while reserving the right to
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`amend, supplement, and/or alter the disclosures pursuant to the Federal Rules of Civil Procedure,
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`the Local Rules of the District of Delaware, and the Scheduling Order, and/or as based on fact and
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`expert discovery developed by Caterpillar or Plaintiff and Counterclaim-Defendant Wirtgen
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`America, Inc. (“Wirtgen America”).
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`I. CATERPILLAR’S IDENTIFICATION OF ASSERTED PATENTS
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`Caterpillar hereby discloses that it is asserting the following patents against Wirtgen
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`America: U.S. Patent Nos. 7,523,995 (the “’995 patent”), 9,975,538 (the “’538 patent”), and
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`9,371,618 (the “’618 patent”) (collectively, “Caterpillar Patents”). Copies of the Caterpillar
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`Patents as well as the file histories of the Caterpillar Patents are produced concurrently herewith.
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 8 of 97 PageID #: 9661
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`II. CATERPILLAR’S IDENTIFICATION OF ACCUSED PRODUCTS
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`Based on the information available to Caterpillar at this time, Caterpillar identifies the
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`following accused products for each Caterpillar Patent.
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`With respect to the ’995 patent, Caterpillar hereby accuses Wirtgen America’s paver
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`machines and cold planer machines with pivoting track units, including, without limitation, model
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`numbers SP 64i, SP 94i, SP 124i, W 100 CFi, W 120 CFi, and W 130 CFi to the extent made,
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`used, sold, and/or offered for sale in the United States since at least the filing of Caterpillar’s
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`Counterclaims on October 14, 2021.
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`With respect to the ’538 patent, Caterpillar hereby accuses Wirtgen America’s cold planer
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`machines having a multi-speed transmission, including, without limitation, model numbers
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`W 210 Fi and W 220 Fi to the extent made, used, sold, and/or offered for sale in the United States
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`since at least May 22, 2018.
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`With respect to the ’618 patent, Caterpillar hereby accuses Wirtgen America’s cold planer
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`machines having an electronically controlled water system, including, without limitation, model
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`numbers W 210 Fi, W 220 Fi, and W 250 Fi to the extent made, used, sold, and/or offered for sale
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`in the United States since at least the filing of Caterpillar’s Counterclaims on October 14, 2021.
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`Caterpillar reserves the right to amend and/or supplement this information as necessary
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`pursuant to deadlines set by the Court, including deadlines relating to infringement contentions
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`and/or expert disclosures, or pursuant to Federal Rule of Civil Procedure 26(e).
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`III. RESERVATION OF RIGHTS
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`These disclosures are based upon information reasonably and presently available to
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`Caterpillar, without the benefit of any discovery, or the production of any of Wirtgen America’s
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`documents. Accordingly, Caterpillar reserves the right, consistent with its obligations under the
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 9 of 97 PageID #: 9662
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`Federal Rules of Civil Procedure, the Local Rules of the District of Delaware, and the Scheduling
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`Order, to modify, amend, and/or supplement the disclosures made herein as additional evidence
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`and information become available or as otherwise appropriate, including based on the Court’s
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`claim constructions, any position taken by Wirtgen America in this action, or to reflect additional
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`information that becomes available to Caterpillar as discovery proceeds.
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`POTTER ANDERSON & CORROON LLP
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`/s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Alan R. Silverstein (#5066)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`asilverstein@potteranderson.com
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`Attorneys for Defendant Caterpillar Inc.
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`OF COUNSEL:
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`James C. Yoon
`Ryan R. Smith
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`jyoon@wsgr.com
`rsmith@wsgr.com
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`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`lyen@wsgr.com
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`Dated: October 28, 2021
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 10 of 97 PageID #: 9663
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`CERTIFICATE OF SERVICE
`I hereby certify that on October 28, 2021, a copy of the foregoing document was served
`via electronic mail upon all counsel of record.
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`/s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 11 of 97 PageID #: 9664
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`Exhibit C
`to Opening Brief in Support of
`Wirtgen America, Inc.’s Motion
`to Sever and Transfer
`Caterpillar Inc.’s Permissive
`Counterclaims for Patent
`Infringement
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 12 of 97 PageID #: 9665
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`SONOSINC.,
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`Plaintiff,
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`v.
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`D&M HOLDINGS INC., et al.,
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`Defendants.
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`Civil Action No. 14-1330-RGA
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`ORDER ON PENDING MOTIONS
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`Upon consideration of the pending motions, this L-f-thaay of March 2016, IT IS HEREBY
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`. ORDERED that:
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`1. Defendants' motion for leave to amend (D.I. 81) is GRANTED;
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`2. Plaintiffs motion for leave to file a sur-reply (D.I. 91) is DISMISSED as moot;
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`3. Plaintiffs motion for leave to amend complaint (D.I. 93) is GRANTED;
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`4. Defendants' counterclaims for patent infringement are, pursuant to Fed. R. Civ. P.
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`42(b), and consistent with the Court's practice, SEVERED for a separate trial. The
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`counterclaims are to be docketed with a new civil action number. The parties should meet and
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`confer and submit by March 14, 2016, a Rule 16 scheduling order for the counterclaims. If the
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`parties do not agree on a schedule, they should promptly call Chambers to get a date and time for
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`a scheduling conference.
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 13 of 97 PageID #: 9666
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`Exhibit D
`to Opening Brief in Support of
`Wirtgen America, Inc.’s Motion
`to Sever and Transfer
`Caterpillar Inc.’s Permissive
`Counterclaims for Patent
`Infringement
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 14 of 97 PageID #: 9667
`Case 1:12-cv-00205-RGA Document 33 Filed 07/22/12 Page 1 of 16 PageID #: 760
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`1
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`CA NO. 12-205-RGA
`July 19, 2012
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`11:00 O'clock a.m.
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`: : : : : : : : : :
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`COMCAST IP HOLDINGS I LLC
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`Plaintiff,
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`v.
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`SPRINT COMMUNICATIONS
`COMPANY LP, ET AL
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`Defendants,
`.............................
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`TRANSCRIPT OF RULE 16 CONFERENCE
`BEFORE THE HONORABLE RICHARD G. ANDREWS
`UNITED STATES DISTRICT JUDGE
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`APPEARANCES:
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`For Plaintiff:
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`CONNOLLY, BOVE, LODGE & HUTZ
`BY: ARTHUR G. CONNOLLY, III, ESQ
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`Case 1:12-cv-00205-RGA Document 33 Filed 07/22/12 Page 2 of 16 PageID #: 761
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`For Defendants:
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`-and-
`DAVIS POLK LLP
`BY: MATTHEW B. LEHR, ESQ
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`MORRIS JAMES LLP
`BY: RICHARD K. HERRMANN, ESQ
`-and-
`BY: BART A. STARR, ESQ
`BY: ROBERT H. RECKERS, ESQ
`BY: AARON E. HANKEL, ESQ
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`Court Reporter:
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`LEONARD A. DIBBS
`Official Court Reporter
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 16 of 97 PageID #: 9669
`Case 1:12-cv-00205-RGA Document 33 Filed 07/22/12 Page 3 of 16 PageID #: 762
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`P R O C E E D I N G S
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`THE COURT: Are you, Mr. Starr?
`MR. STARR: I'm Mr. Starr.
`THE COURT: What's your first name?
`MR. STARR: Bart.
`THE COURT: I thought I saw your name. A pretty tough
`name to grow up with.
`So we're here for the Rule 16 Conference in Comcast IP
`Holdings 1 LLC versus Sprint Communications, et al, Civil Action
`No. 12-205. I have the proposed Scheduling Order.
`Mr. Connolly, who have you got with you? You don't
`have Bart Starr.
`MR. CONNOLLY: I have with me Matt Lehr from Davis
`Polk. He started his career at Morris Nichols in Delaware.
`He's a member of the Delaware bar. And my colleague, Ryan
`Newell.
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`THE COURT: Good to see you all.
`MR. LEHR: Good to see you, your Honor.
`THE COURT: Mr. Herrmann?
`MR. HERRMANN: Good morning, your Honor. Bart Starr,
`Robert Reckers. And on the phone is Aaron Hankel. D.
`THE COURT: Good morning, Mr. Hankel.
`All right. A housekeeping matter. I looked at the
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 17 of 97 PageID #: 9670
`Case 1:12-cv-00205-RGA Document 33 Filed 07/22/12 Page 4 of 16 PageID #: 763
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`docket and there was a motion, docket item 18 to Motion to
`Dismiss Counterclaims and there was a First Amended Complaint.
`Is the first Motion to Dismiss, is that moot now or is
`that on something different than the Second Motion to Dismiss?
`MR. LEHR: It's moot, your Honor, by the Second Motion
`to Dismiss.
`THE COURT: Okay. I was hoping you would say that. So
`the second Motion to Dismiss, I don't want argument. It was
`just filed. So the briefing is underway.
`The gist of it is that the plaintiff says the
`defendant -- plaintiff says the defendant counterclaims against
`different parties, or at least some different parties than the
`plaintiff, that that's a matter of law erroneous or that that's
`a discretionary matter, what is the argument?
`MR. LEHR: It's a matter of law, we believe, your
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`Honor.
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`THE COURT: And I also saw just from trying to figure
`out whether the first one was moot, there was some reference to
`litigation in Kansas or someplace else. Does that actually have
`anything to do with anything, or is that just suppose to give me
`context?
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`MR. LEHR: Just to give you context, your Honor.
`THE COURT: All right.
`I take it since we've got Comcast and Sprint here, the
`patents have something to do with communications?
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`Case 1:12-cv-00205-RGA Document 33 Filed 07/22/12 Page 5 of 16 PageID #: 764
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`MR. LEHR: Broadly speaking, your Honor.
`THE COURT: It looks to me right now that Comcast has
`six and Sprint has six?
`MR. HERRMANN: Correct.
`THE COURT: My inclination is to treat these as two
`separate cases, because I'm quickly becoming convinced that you
`can't at the end of the day have a trial with one side saying
`here are my six patents and here's the other side saying here
`are my six patents.
`It seems to me that it kind of makes sense to have that
`understanding upfront, and then it presents a way to actually
`resolve most of the scheduling disputes, too, so we can use the
`plaintiff's schedule for the plaintiff's patents and your
`proposed schedule for your patents. That's my idea here.
`Is there anything that you want to say about it?
`MR. HERRMANN: I'll ask Mr. Reckers to respond.
`MR. RECKERS: What we propose is a single proceeding
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`for one.
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`Our rationale is following the rules. The rules
`contemplate a single proceeding, one case in controversy for the
`jury to understand the full nature of the dispute between the
`parties.
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`We had proposed a single proceeding with the twelve
`patents-in-suit. The jury can understand the issues are between
`both parties. And there are some efficiencies that would be
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`gained.
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`THE COURT: There is also a lot of confusion that will
`be gained.
`MR. RECKERS: That is certainly true. Efficiencies are
`what they are. The communications in general, the jury has to
`understand how the communication networks work and to be able to
`do it once, in one proceeding. We think it has some strong
`efficiencies. Of course, there are inefficiencies. Certainly a
`lot of confusion with that many issues. That's the rationale.
`THE COURT: I don't object to your rationale, whatever.
`I have a relatively strong feeling that the confusion
`outweighs the efficiencies, just at a generic matter, and so in
`this case, too.
`Since you proposed two trials, I assume you don't have
`anything to add here?
`MR. LEHR: I learned a long time ago not to say
`anything when it's going my way, your Honor.
`THE COURT: In terms of the actual Scheduling Order,
`sort of housekeeping matters; Sprint, the defendant, you, want
`to have a couple extra paragraphs on page 3 about amending
`proposed final contentions. I guess as a general matter it
`seems reasonable.
`So what do you say about that?
`MR. LEHR: Your honor, I don't have a problem with
`final contentions in principle. It just strikes me that this is
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`probably a bit early to do final contentions.
`THE COURT: So your problem is not so much the concept
`but the dates that they picked?
`MR. LEHR: Yes, I think that's probably right.
`THE COURT: So Sprint is proposing these dates about a
`half year before fact discovery?
`MR. LEHR: I believe that's correct, your Honor, before
`fact discovery closes.
`Your Honor, if I may?
`THE COURT: Sure.
`MR. LEHR: I looked at the final contentions.
`Typically the way I have done them over the years is they sort
`of make their way into a final Pretrial Order, everything has
`been done. The Markman Hearing been done. The issues are
`really tailored.
`I'm not suggesting it has to be that late in this case.
`At least where we've got a better framework to do it.
`THE COURT: Then the counterbalancing, countervailing
`thing is that -- then there's argument that they need to do a
`little more discovery because you're saying something different
`than what they thought you were saying.
`MR. HERRMANN: It would be nice, your Honor, to be able
`to have the final contentions other than those contentions that
`have to be changed because of the claim construction, the final
`contentions in enough time to be able to know how to select
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 21 of 97 PageID #: 9674
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`party issues.
`THE COURT: Okay.
`MR. STARR: Your honor, if I may?
`THE COURT: Yes.
`MR. STARR: The parties negotiated this proposed order
`at a time that we were unaware they were going to file a Motion
`to Dismiss our counterclaims.
`This order anticipated six patents on each side.
`Would it make sense -- I don't presume to know how the
`Court will rule on the Motion to Dismiss.
`I wonder if it might make sense to let the motion
`briefing and the Court's order on their motion run its course
`and then revisit possibly some of these dates at that time?
`THE COURT: Let me just ask because that brings up
`something else I was thinking of, which is this: Presumably,
`other than the question of joint trials, there's no actual
`reason why the appropriateness of bringing the counterclaims
`that you've brought actually even has to be decided, is there,
`because you could just -- if, in the end, I agreed with them and
`said your counterclaims get dismissed, you would just file a new
`lawsuit against the same parties with the same claims, right?
`MR. STARR: That's a option. Sure.
`THE COURT: I guess what I'm wondering, do you want to
`
`do that?
`
`MR. STARR: I don't know, given that this motion, I
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 22 of 97 PageID #: 9675
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`believe, was just filed two days ago.
`THE COURT: That's fair enough.
`MR. STARR: We haven't had the opportunity to really
`discuss it with the client.
`I read it on the plane this morning for the first time.
`My only comment is that this Motion to Dismiss, which
`was filed after we negotiated this proposed order, is a bit of a
`game changer, I believe, in terms of some of these dates.
`MR. HERRMANN: Or could be.
`THE COURT: I guess the only thing that I'm wondering
`about is -- it's certainly to the extent of what I did was, I
`printed out the table of contents of both of them.
`I appears part of the reason why I thought the first
`one was moot was because it appears to be more or less the first
`one. I didn't go into it enough.
`It's like trying to figure out did you do something
`different in the amended counterclaims. And maybe there's
`negotiations back and forth between you and -- I don't want to
`get into that.
`Just from as the outside observer looking at the docket
`sheet, it doesn't look that strange that they filed the Motion
`to Dismiss other than I suppose if you sat down and, you know,
`talked about all this and nobody brought it up, so you walked
`away saying, Well, I guess they are not doing that again. And
`they walked away saying, I'm surprised they didn't ask us what
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 23 of 97 PageID #: 9676
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`they were doing, you know, whatever. But you're all here.
`Where are you all from?
`MR. LEHR: Menlo Park, California, your Honor.
`MR. STARR: Kansas.
`MR. RECKERS: Houston.
`THE COURT: So you flew a long ways to get here.
`MR. LEHR: Your Honor, if I may interject? Our view,
`again, I don't want to argue the merits of the motion, it's not
`fair to Mr. Starr.
`Based on your Honor's predilection, do one of two
`things; either treat these cases, sever their case and treat
`them separately. If they want to have a schedule like they
`propose for their case, fine.
`We prefer our schedule for our case, or if they want to
`refile and start a new case, fine.
`Our case has been pending since February. We'd like to
`get a move on.
`THE COURT: All right.
`Well, that was original inclination. But I am
`concerned talking about inventors overseas.
`What I'm going to do, I'm going to work out the
`schedule for your set of patents right now. Then we'll see if
`we can work them out for you, too.
`MR. HERRMANN: With the extra months on the plaintiff's
`set of patents that we were looking for your Honor, because of
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 24 of 97 PageID #: 9677
`Case 1:12-cv-00205-RGA Document 33 Filed 07/22/12 Page 11 of 16 PageID #: 770
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`the depositions overseas, I think we're only five months apart
`in terms of the trial date.
`THE COURT: What do you have to say about the
`depositions overseas?
`MR. LEHR: Your honor, I think it's really only three
`witnesses. The problem with pegging schedules to depositions
`under the Hague, they could take forever to get done. They
`could get done quickly. We really don't have any control over
`that.
`
`MR. HERRMANN: That's the reason, your Honor, that we
`want to have enough of a cushion so we don't have to come back
`to the Court and change the trial date.
`THE COURT: In the end, if you need to change the
`dates, you need to change the dates.
`With that in mind, let's try working backwards from the
`date that Comcast proposed for its five day jury trial.
`How about June 2nd 2014?
`And the Pretrial Conference would be May 16th of 2014
`at 10:30 a.m.
`And the Case Dispositive Motions date would be January
`17th of 2014.
`The disclosure of expert testimony would be December
`6th of 2013.
`And then all dates that correspond to that for the
`extra reports, in other words, September 20th, October 25th,
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 25 of 97 PageID #: 9678
`Case 1:12-cv-00205-RGA Document 33 Filed 07/22/12 Page 12 of 16 PageID #: 771
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`November 8th.
`And the idea behind the contentions date that you've
`suggested, Sprint, is to have them firmed up before doing the
`briefing on claim construction?
`MR. RECKERS: I believe it's around the same time.
`THE COURT: But that's the reason?
`MR. RECKERS: Yes. All right.
`THE COURT: How about if we have the Comcast claim
`construction hearing on June 20th at 9:00 a.m?
`MR. LEHR: That's fine, your Honor.
`THE COURT: And then the briefing would be as Comcast
`proposes it, but you can move it back a month so that the final
`Comcast -- so that the final Joint Claim Construction Brief, or
`package, would be due on May 31st.
`Maybe you all can work out the dates leading up to
`
`that?
`
`question?
`
`MR. LEHR: Yes, your Honor. Your Honor, may I ask a
`
`THE COURT: Sure.
`MR. LEHR: Do you have a practice in terms of how many
`claim terms parties are entitled to tee up?
`THE COURT: No. But you have the page limits.
`The idea is to pick the ones that actually matter.
`MR. LEHR: Fair enough, your Honor.
`THE COURT: Roughly speaking, if that's May 31st, that
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 26 of 97 PageID #: 9679
`Case 1:12-cv-00205-RGA Document 33 Filed 07/22/12 Page 13 of 16 PageID #: 772
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`moves all the briefing up by about six weeks.
`That means that claim construction identification
`starts in roughly, maybe by the end of January of 2013.
`I guess no matter how I do this, I'm not seeing how the
`utility of now that I'm actually working on the schedule of the
`Sprint final contentions is helping on the claim construction.
`MR. RECKERS: The dates would have to be moved. Our
`dates lined up with our other proposals. They would have to be
`moved.
`
`THE COURT: Right. I guess what I'm wondering is in
`terms of -- I guess I'm wondering how realistic it is to have
`final infringement invalidity contentions -- the further you
`move them up, the less they get from the preliminary.
`MR. RECKERS: That's right. Given the schedule the way
`it works, that makes sense.
`THE COURT: I hate to do this after telling you I
`thought it was a great idea and I would accept it.
`Why don't we knock it out?
`MR. RECKERS: I think that's right.
`THE COURT: In terms of the discovery cutoff that
`Comcast proposes, I think it's August 30th.
`Is there anything that I've just done that makes it
`seem that it should be changed?
`MR. LEHR: I don't believe so, your Honor.
`MR. RECKERS: Not from our perspective, your Honor.
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 27 of 97 PageID #: 9680
`Case 1:12-cv-00205-RGA Document 33 Filed 07/22/12 Page 14 of 16 PageID #: 773
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`THE COURT: Leaving aside the actual claim construction
`intermediate dates, which you can work out yourselves, does that
`then resolve the schedule for Comcast's patents?
`MR. LEHR: I believe so, your Honor.
`MR. RECKERS: I think so.
`THE COURT: Let's do the same thing for the Sprint
`
`patents.
`
`By the way, if we end up that you file a separate
`lawsuit, we'll just roll the dates over, okay? At least that's
`what I would expect.
`So I was thinking in keeping with the proposal from
`Sprint, that the trial, the second one could be on October 6th.
`That would also be scheduled for five days.
`The pretrial conference would be September 19th, 2014
`at 8:30 a.m.
`Case Dispositive Motions would be June 23rd as Sprint
`
`proposes.
`
`proposes.
`
`The expert timetable ending in May 10th, 2014 as Sprint
`
`The claim construction for the Sprint patent, how about
`October 10th, 2013 at 9:00 a.m?
`The briefing on the claim construction can be as Sprint
`
`proposes.
`
`And the claim construction issue identification, too.
`And the discovery cutoff, I think, could be as Sprint
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 28 of 97 PageID #: 9681
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`proposes, December 6th.
`Does that cover all the dates for the Sprint patents?
`MR. RECKERS: I believe so.
`THE COURT: Then that leaves the limitation on hours
`for deposition discovery.
`It occurs to me when I was looking at this, there is no
`way that I can actually make a rational decision, picking
`between a 175 and a 140. So, therefore, my inclination is to go
`with a 140 on the theory if Sprint thinks it can get it done in
`a 140, Comcast, they won't be prejudiced by not having the 35
`hours.
`
`And so I'm kind of inclined to go with a 140. I
`understand part of my job here is to avoid unnecessary
`discovery. Since Sprint thinks it's unnecessary, I'm inclined
`to make you go with a 140, too.
`MR. LEHR: I'm not going to fight that too hard, your
`
`Honor.
`
`THE COURT: I wouldn't limit it to the 25 depositions,
`however, it works out. If you've got the 140 hours, you got the
`140 hours.
`If you find a 141 hour deposition to be useful.
`MR. LEHR: One thing we should clarify, your Honor. If
`we go with the total number of a 140, I assume that would be
`split across both cases as the parties see fit?
`THE COURT: Yes, that was my thinking. You could
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 29 of 97 PageID #: 9682
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`allocate to yourselves.
`Is there anything else?
`MR. LEHR: Nothing from Comcast.
`MR. RECKERS: Nothing more from us.
`THE COURT: All right. I appreciate you all coming
`from a long distance. I appreciate, Mr. Hankel, if you're still
`there?
`
`And I guess I'll look forward to the to the
`counterclaim briefing.
`Mr. Connolly, I guess you'll submit -- whoever.
`MR. CONNOLLY: We'll work it out with Mr. Herrmann,
`your Honor.
`THE COURT: Work out the intermediate dates.
`My suggestion is just break it out and submit two
`orders. That will make it easier. It will be complicated if
`you try to write them both in the same order, I think.
`MR. CONNOLLY: That makes sense.
`MR. LEHR: Thank you, your Honor.
`THE COURT: Thank you.
`(At this time, the Rule l6 conference concluded)
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`Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 30 of 97 PageID #: 9683
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`
`Exhibit E
`to Opening Brief in Support of
`Wirtgen America, Inc.’s Motion
`to Sever and Transfer
`Caterpillar Inc.’s Permissive
`Counterclaims for Patent
`Infringement
`
`
`
`
`Case 1:12-cv-01063-LPS Document 91 Filed 08/31/15 Page 1 of 30 PageID #: 3080Case 1:17-cv-00770-RGA-MPT Document 57-1 Filed 11/04/21 Page 31 of 97 PageID #: 9684
`1
`
`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`
`CIVIL ACTION
`
`NO. 12-1063-LPS
`
`::
`
`:
`
`::
`
`:
`
`::
`
`:
`:
`
`::
`
`:
`
`::
`
`:
`:
`:
`:
`
`v
`LG ELECTRONICS, INC., LG
`ELECTRONICS U.S.A., INC., and LG
`International (AMERICA), INC.,
`Counterclaim-Defendants.
`- - -
`Wilmington, Delaware
`Wednesday, July 22, 2015
`Telephone Conference
`- - -
`HONORABLE LEONARD P. STARK, Chief Judge
`- - -
`
`LG ELECTRONICS, INC. and
`LG ELECTRONICS U.S.A., INC.,
`Plaintiffs,
`
`v
`TOSHI
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