From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Mroz, David
`Friday, July 13, 2018 11:02 AM
`Jon Wright; Steve Merrill; Trey Powers; Goldberg, Joshua; Barney, James
`rdl@iplawgroup.com; Seth Ogden (sro@iplawgroup.com); Kyle E. Conklin; Daniel
`E. Yonan; CAT-Wirtgen-IPRs
`RE: Meet and Confer IPR2017-02185 - Pat. No. 7,828,309
`
`Jon,
`
`We have made some progress on the protective order issue. As a starting point, we are working from the default
`protective orders in IPR2017-02187 (’340 patent) IPR2018-00155 (’628 patent). We note that section 2 in these
`protective orders allows the following individuals to see confidential information, provided that they signed the
`acknowledgment to the protective order:
`
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`(A) Parties. Persons who are owners of a patent involved in the proceeding and other persons who are
`named parties to the proceeding.
`
`(B) Party Representatives. Representatives of record for a party in the proceeding.
`
`(C) Experts. Retained experts of a party in the proceeding who further certify in the Acknowledgement that
`they are not a competitor to any party, or a consultant for, or employed by, such a competitor with respect
`to the subject matter of the proceeding.
`
`(D) In-House Counsel. In-house counsel of a party.
`
`(E) Other Employees of a Party. Employees, consultants or other persons performing work for a party, other
`than in-house counsel and in-house counsel’s support staff, who sign the Acknowledgement shall be
`extended access to confidential information only upon agreement of the parties or by order of the Board
`upon a motion brought by the party seeking to disclose confidential information to that person. The party
`opposing disclosure to that person shall have the burden of proving that such person should be restricted
`from access to confidential information.
`
`(F) The Office. Employees and representatives of the Office who have a need for access to the confidential
`information shall have such access without the requirement to sign an Acknowledgement. Such employees
`and representatives shall include the Director, members of the Board and their clerical staff, other support
`personnel, court reporters, and other persons acting on behalf of the Office.
`
`(G) Support Personnel. Administrative assistants, clerical staff, court reporters and other support personnel
`of the foregoing persons who are reasonably necessary to assist those persons in the proceeding shall not be
`required to sign an Acknowledgement, but shall be informed of the terms and requirements of the
`Protective Order by the person they are supporting who receives confidential information.
`
`
`We propose eliminating sections 2.A, 2.D, 2.E, and only allowing the individuals highlighted in yellow to see
`Caterpillar confidential information in any of the Caterpillar IPRs.
`
`Regarding the prosecution bar, we propose the following language:
`
`
`• Prosecution Bar. Notwithstanding the other provisions in this Protective Order: (i) no attorney, patent
`agent, expert, or other person who signs the Acknowledgement associated with this Protective Order may
`disclose any “confidential information” to any counsel, patent agent, or other person who participates in
`Patent Prosecution of any patent application pertaining to road construction machines; (ii) no attorney,
`1
`
`
`
`
`Page 1 of 7
`
`CATERPILLAR EXHIBIT 1155
`CATERPILLAR v. WIRTGEN
`IPR2017-02188
`
`

`

`patent agent, expert, or other person who signs the Acknowledgement associated with this Protective Order
`on behalf of a Party in this inter partes review may be involved in Patent Prosecution relating to the subject
`matter of road construction machines, before any foreign or domestic agency, including the United States
`Patent and Trademark Office. For the purposes of this paragraph, “Patent Prosecution” shall be defined as
`substantive patent prosecution activities involving “competitive decision making” as set forth in In re
`Deutsche Bank, 605 F.3d at 1378 (Fed. Cir. 2010), such as substantively supervising, assisting or participating
`in (including advising on, consulting on, preparing, drafting, editing, amending, or otherwise prosecuting
`applications, claims, and responses to office actions) the prosecution of any pending or future patent
`application before the United States Patent and Trademark Office, any foreign patent office, or any other
`foreign or domestic agency, with respect to any patent application claiming (in whole or in part) the subject
`matter of: (a) road construction machines; or (b) any of the parents, grand-parents, or other predecessor
`applications in the chain, or descendants, of the patent-at-issue (“Related Patents”). Notwithstanding the
`foregoing, “Patent Prosecution” shall not include (a) representing a Party in, or otherwise participating in,
`interferences, reissue proceedings ex parte reexamination, inter partes review, covered business method
`review, or post-grant review proceedings, provided that no claims are amended during these
`proceedings. These prohibitions shall end three years and six months (3.5 years) after the earlier of the final
`resolution or termination of this inter partes review, including all appeals. This prosecution bar is personal
`to any person signing the Acknowledgement associated with this Protective Order in this inter partes review
`and shall not be imputed to any other person or entity.
`
`Please let us know if these proposals are acceptable.
`
`Best regards,
`Dave
`
`From: Mroz, David
`Sent: Thursday, July 12, 2018 2:20 PM
`To: Jon Wright <JWRIGHT@sternekessler.com>; Steve Merrill <SMERRILL@sternekessler.com>; Trey Powers
`<TPOWERS@sternekessler.com>; Goldberg, Joshua <Joshua.Goldberg@finnegan.com>; Barney, James
`<James.Barney@finnegan.com>
`Cc: rdl@iplawgroup.com; Seth Ogden (sro@iplawgroup.com) <sro@iplawgroup.com>; Kyle E. Conklin
`<KCONKLIN@sternekessler.com>; Daniel E. Yonan <DYONAN@sternekessler.com>; CAT-Wirtgen-IPRs <CAT-Wirtgen-
`IPRs@finnegan.com>
`Subject: RE: Meet and Confer IPR2017-02185 - Pat. No. 7,828,309
`
`Jon,
`
`We are still working on it and will get back to you as soon as we can.
`
`Thanks,
`Dave
`
`From: Jon Wright <JWRIGHT@sternekessler.com>
`Sent: Thursday, July 12, 2018 2:19 PM
`To: Mroz, David <David.Mroz@finnegan.com>; Steve Merrill <SMERRILL@sternekessler.com>; Trey Powers
`<TPOWERS@sternekessler.com>; Goldberg, Joshua <Joshua.Goldberg@finnegan.com>; Barney, James
`<James.Barney@finnegan.com>
`Cc: rdl@iplawgroup.com; Seth Ogden (sro@iplawgroup.com) <sro@iplawgroup.com>; Kyle E. Conklin
`<KCONKLIN@sternekessler.com>; Daniel E. Yonan <DYONAN@sternekessler.com>; CAT-Wirtgen-IPRs <CAT-Wirtgen-
`IPRs@finnegan.com>
`Subject: RE: Meet and Confer IPR2017-02185 - Pat. No. 7,828,309
`
`Dave,
`
`Have you all made any progress on a modified PO for the IPRs?
`2
`
`Page 2 of 7
`
`

`

`
`Thank you in advance,
`- Jon
`
`
`Jon Wright
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: jwright@sternekessler.com
`Direct: 202.772.8651
`
`Administrative Assistant: Cecilia Burgess
`Direct: 202.772.8682 Main: 202.371.2600
`
`
`
`
`From: Mroz, David [mailto:David.Mroz@finnegan.com]
`Sent: Friday, July 06, 2018 5:04 PM
`To: Steve Merrill; Trey Powers; Goldberg, Joshua; Barney, James
`Cc: Jon Wright; rdl@iplawgroup.com; Seth Ogden (sro@iplawgroup.com); Kyle E. Conklin; Daniel E. Yonan; CAT-
`Wirtgen-IPRs
`Subject: RE: Meet and Confer IPR2017-02185 - Pat. No. 7,828,309
`
`Steve,
`
`We believe we have been more than accommodating in stipulating to pages that will allow Wirtgen to make its
`copying argument at the PTAB, especially when these pages are considered in combination with Caterpillar’s
`willingness to stipulate to the fact that Caterpillar acquired a Wirtgen cold planer and inspected it. We believe
`Caterpillar’s proposal represents a fair middle ground, which Judge Daniels urged the parties to reach, without
`risking unnecessary disclosure of highly confidential Caterpillar subject matter.
`
` 10 a.m. Eastern call on July 9 works for us. The dial in is provided below.
`
` A
`
`
`
`• Phone: 1-877-211-3621
`• Passcode: 724-908-0149
`
`
`Best regards,
`Dave
`
`
`From: Steve Merrill <SMERRILL@sternekessler.com>
`Sent: Friday, July 6, 2018 12:53 PM
`To: Mroz, David <David.Mroz@finnegan.com>; Trey Powers <TPOWERS@sternekessler.com>; Goldberg, Joshua
`<Joshua.Goldberg@finnegan.com>; Barney, James <James.Barney@finnegan.com>
`Cc: Jon Wright <JWRIGHT@sternekessler.com>; rdl@iplawgroup.com; Seth Ogden (sro@iplawgroup.com)
`<sro@iplawgroup.com>; Kyle E. Conklin <KCONKLIN@sternekessler.com>; Daniel E. Yonan
`<DYONAN@sternekessler.com>; CAT-Wirtgen-IPRs <CAT-Wirtgen-IPRs@finnegan.com>
`Subject: RE: Meet and Confer IPR2017-02185 - Pat. No. 7,828,309
`
`Dave,
`
`
`As you noted on the last Board call, these eight documents contain over 400 pages. As a show of good faith, and in
`accordance with Judge Daniels’ encouragement for the parties to come to agreement, Wirtgen America has been
`very parsimonious in its selection of pages it wishes Caterpillar to produce. The list of pages we provided is limited to
`information relevant to the validity issues in these proceedings, which is in accord with Judge Daniels’ request. Your
`revised list removes the relevant content that prompted Wirtgen America to seek the additional discovery in the first
`place. Consequently, your counter proposal does not move the ball forward in reaching an agreement because it
`eviscerates the content the PTAB should see in determining patentability. And an “outside attorneys only” provision
`and a prosecution bar provision, which you indicated would be in your revised protective order, would address your
`raised concern.
`
`
`3
`
`Page 3 of 7
`
`

`

`Because the following pages are relevant to the validity issues in these proceedings, they should be produced.
`During the meet and confer, we intend to discuss the pages you removed from our list and your reasons for
`suggesting they should not be included.
`
`IPR2017-02185
`CX-0030C: 1-3, 6, 10, 11, 13, 14
`CX-0302C: 1, 6, 7, 39, 40, 41, 43, 45
`CX-0307C: 1-6, 28, 36-38, 47, 53, 54
`CX-0564C: 1, 2, 5-6, 86, 107
`CX-0567C: 2, 10, 23
`CX-0568C: 1, 5
`CX-0594C: 1, 18, 19
`CX-0980C: 1, 2, 13, 38
`
`IPR2017-02188
`CX-0030C: 1, 4, 10, 13
`CX-0307C: 1-3, 28, 42-49
`CX-0563C: 1, 3, 24, 25
`CX-0564C: 1, 2, 107
`CX-0566C: 2, 4, 13, 25
`CX-0568C: 1, 3
`CX-0570C: 1, 5-9
`CX-0571C: 43, 87-88
`CX-0980C: 1, 3, 38
`
`
`We are available on July 9 at 10 AM Eastern. Please provide a dial in number.
`
`
`Best regards,
`Steve
`
`
`
`
`Stephen A. Merrill
`Associate
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: smerrill@sternekessler.com
`Direct: 202.772.8980
`
`Administrative Assistant: David Ofori
`Direct: 202.772.8746 Main: 202.371.2600
`
`
`From: Mroz, David [mailto:David.Mroz@finnegan.com]
`Sent: Thursday, July 05, 2018 2:42 PM
`To: Trey Powers; Goldberg, Joshua; Barney, James
`Cc: Jon Wright; rdl@iplawgroup.com; Seth Ogden (sro@iplawgroup.com); Steve Merrill; Kyle E. Conklin; Daniel E.
`Yonan; CAT-Wirtgen-IPRs
`Subject: RE: Meet and Confer IPR2017-02185 - Pat. No. 7,828,309
`
`Trey,
`
`Thank you for providing this list. We are working on the protective order and will send a draft soon. Our proposed
`additions will track with the protective order from the ITC case in that they will include an “outside attorneys only”
`provision and a prosecution bar provision.
`
`Provided that a protective order with Caterpillar’s proposed additions is put in place, Caterpillar would not object to
`Wirtgen’s use of the following pages from confidential Caterpillar documents:
`
`IPR2017-02185
`CX-0030C: 1-3, 6
`
`4
`
`Page 4 of 7
`
`

`

`CX-0302C: 1
`CX-0307C: 1-6, 28, 36-38, 47, 53, 54
`CX-0564C: 1, 2
`CX-0568C: 1
`CX-0594C: 1
`CX-0980C: 1, 2, 13
`
`IPR2017-02188
`CX-0030C: 1, 4
`CX-0307C: 1-3, 42-49
`CX-0563C: 1, 3
`CX-0564C: 1, 2
`CX-0568C: 1
`CX-0980C: 1, 3
`
`We are available to meet and confer tomorrow, July 6 before 2 p.m. Eastern or Monday, July 9 before 11 a.m.
`Eastern.
`
`Best regards,
`Dave
`
`
`
`From: Trey Powers <TPOWERS@sternekessler.com>
`Sent: Tuesday, July 3, 2018 2:12 PM
`To: Mroz, David <David.Mroz@finnegan.com>; Goldberg, Joshua <Joshua.Goldberg@finnegan.com>; Barney, James
`<James.Barney@finnegan.com>
`Cc: Jon Wright <JWRIGHT@sternekessler.com>; rdl@iplawgroup.com; Seth Ogden (sro@iplawgroup.com)
`<sro@iplawgroup.com>; Steve Merrill <SMERRILL@sternekessler.com>; Kyle E. Conklin
`<KCONKLIN@sternekessler.com>; Daniel E. Yonan <DYONAN@sternekessler.com>; CAT-Wirtgen-IPRs <CAT-Wirtgen-
`IPRs@finnegan.com>
`Subject: RE: Meet and Confer IPR2017-02185 - Pat. No. 7,828,309
`
`Hi Dave,
`
`In the spirit of reaching an accommodation, here are the specific pages Wirtgen America would like to rely on:
`
`IPR2017-02185
`CX-0030C: 1-3, 6, 10, 11, 13, 14
`CX-0302C: 1, 6, 7, 39, 40, 41, 43, 45
`CX-0307C: 1-6, 28, 36-38, 47, 53, 54
`CX-0564C: 1, 2, 5-6, 86, 107
`CX-0567C: 2, 10, 23
`CX-0568C: 1, 5
`CX-0594C: 1, 18, 19
`CX-0980C: 1, 2, 13, 38
`
`IPR2017-02188
`CX-0030C: 1, 4, 10, 13
`CX-0307C: 1-3, 28, 42-49
`CX-0563C: 1, 3, 24, 25
`CX-0564C: 1, 2, 107
`CX-0566C: 2, 4, 13, 25
`CX-0568C: 1, 3
`CX-0570C: 1, 5-9
`CX-0571C: 43, 87-88
`CX-0980C: 1, 3, 38
`
`5
`
`Page 5 of 7
`
`

`

`
`To be clear, until we reach an accord, Wirtgen America reserves the right to modify this list. Please propose a draft
`protective order for our consideration.
`
`Also, please provide your availability for a meet and confer.
`
`The court reporting company was DEG.
`
`Happy Independence Day,
`Trey
`
`
`
`
`R. Wilson “Trey” Powers III, Ph.D.
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: tpowers@sternekessler.com
`Direct: 202.772.8876
`
`Administrative Assistant: Patrick Duffy
`Direct: 202.772.8608 Main: 202.371.2600
`
`
`From: Mroz, David [mailto:David.Mroz@finnegan.com]
`Sent: Monday, July 02, 2018 2:32 PM
`To: Trey Powers; Goldberg, Joshua; Barney, James
`Cc: Jon Wright; rdl@iplawgroup.com; Seth Ogden (sro@iplawgroup.com); Steve Merrill; Kyle E. Conklin; Daniel E.
`Yonan; CAT-Wirtgen-IPRs
`Subject: RE: Meet and Confer IPR2017-02185 - Pat. No. 7,828,309
`
`Trey,
`
`We believe a meet and confer tomorrow is premature given the PTAB’s guidance during today’s call. We propose
`that Wirtgen identify the specific pages and/or excerpts of the documents it intends to rely on at the PTAB, after
`which we can analyze the identified information internally and determine what we object to, if anything. At that
`point, the parties can hold a more meaningful meet and confer along the lines of what the PTAB suggested. Thus,
`we believe it makes the most sense to hold off on scheduling the meet and confer until after Wirtgen sends an email
`identifying the material it intends to rely on at the PTAB.
`
`Best regards,
`Dave
`
`
`David K. Mroz
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4022 | fax: 202.408.4400 | david.mroz@finnegan.com | www.finnegan.com
`
`
`
`From: Trey Powers <TPOWERS@sternekessler.com>
`Sent: Monday, July 2, 2018 1:23 PM
`To: Goldberg, Joshua <Joshua.Goldberg@finnegan.com>; Mroz, David <David.Mroz@finnegan.com>; Barney, James
`<James.Barney@finnegan.com>
`Cc: Jon Wright <JWRIGHT@sternekessler.com>; rdl@iplawgroup.com; Seth Ogden (sro@iplawgroup.com)
`<sro@iplawgroup.com>; Steve Merrill <SMERRILL@sternekessler.com>; Kyle E. Conklin
`<KCONKLIN@sternekessler.com>; Daniel E. Yonan <DYONAN@sternekessler.com>
`Subject: Meet and Confer IPR2017-02185 - Pat. No. 7,828,309
`
`Hi Dave and Josh,
`
`
`6
`
`Page 6 of 7
`
`

`

`What is your availability tomorrow to discuss pages Caterpillar would like to redact? I’m flexible.
`
`Thanks very much,
`Trey
`
`
`
`
`
`
` R. Wilson “Trey” Powers III, Ph.D.
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW, Washington, DC 20005
`
`
`
`
`
`
`
`Email: tpowers@sternekessler.com
`Direct: 202.772.8876
`Administrative Assistant: Patrick Duffy
`Main: 202.371.2600 Direct: 202.772.8608
`
`
`
`
`
`
`
`
`
`
`PLEASE NOTE: Effective March 12, 2018, Sterne, Kessler, Goldstein & Fox P.L.L.C. has a new website URL and email domain.
`The firm’s website address is www.sternekessler.com, and the email domain is @sternekessler.com. Please update
`information regarding our firm in your contacts accordingly. Thank you.
`
`The information in this electronic transmission (including any attachments) may contain confidential or legally privileged
`information and is intended solely for the individual(s) or entity(ies) named above. If you are not an intended recipient or
`an authorized agent, you are hereby notified that reading, distributing, or otherwise disseminating or copying, or taking
`any action based on the contents of this transmission is strictly prohibited. Any unauthorized interception of this
`transmission is illegal under the law. If you have received this transmission in error, please immediately notify the sender
`by return email and then destroy all copies of the transmission.
`
`
`
`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.
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`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
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`
`7
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`Page 7 of 7
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`