From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Jon Wright <JWRIGHT@sternekessler.com>
`Monday, July 16, 2018 5:04 PM
`Mroz, David
`Trey Powers; Steve Merrill; 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
`
`Dave,
`
`Perhaps I can clear things up. I wasn’t on the July 2 PTAB call, and I didn’t understand your question during the July 9
`meet and confer. So I deflected your questions about that call to Trey, who led the both July 2 Board call and the
`June 25 meet and confer.
`
`On the June 25 meet and confer, Trey announced at the outset all those who were present for Wirtgen. They were
`Trey, Steve Merrill and me from Sterne Kessler, and Ryan Levy from Patterson. No other persons from Wirtgen were
`present or joined the call later. At the June 25 meet and confer, I was the only person not subscribed to the ITC PO.
`
`As you know, I subscribed to the ITC PO on July 6. Does this answer your question?
`
`Thank you,
`- 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: Monday, July 16, 2018 1:07 PM
`To: Trey Powers
`Cc: Jon Wright; Steve Merrill; Goldberg, Joshua; Barney, James; 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
`
`Trey,
`
`You mentioned during the PTAB call on July 2 that there were Wirtgen counsel on our meet and confer the week
`before who were not subscribed to the ITC protective order. Please identify those counsel. Please also identify all
`Wirtgen counsel who joined that call, including those who did not announce themselves.
`
` I
`
` raised this issue during our July 9 meet and confer, and the Wirtgen counsel on that call did not have this
`information readily available and pointed me in your direction.
`
`Thanks,
`Dave
`
`
`
`1
`
`Page 1 of 7
`
`
`
`
`CATERPILLAR EXHIBIT 1156
`CATERPILLAR v. WIRTGEN
`IPR2017-02188
`
`

`

`From: Trey Powers <TPOWERS@sternekessler.com>
`Sent: Thursday, July 12, 2018 2:30 PM
`To: Mroz, David <David.Mroz@finnegan.com>
`Cc: Jon Wright <JWRIGHT@sternekessler.com>; Steve Merrill <SMERRILL@sternekessler.com>; Goldberg, Joshua
`<Joshua.Goldberg@finnegan.com>; Barney, James <James.Barney@finnegan.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,
`
`When can we expect it?
`
`Thanks,
`Trey
`
`On Jul 12, 2018, at 8:20 PM, Mroz, David <David.Mroz@finnegan.com> wrote:
`
`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?
`
`
`Thank you in advance,
`- Jon
`
`
`<image002.png>
`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
`
`2
`
`Page 2 of 7
`
`

`

`
`
`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.
`
`
`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
`
`3
`
`Page 3 of 7
`
`

`

`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
`
`
`<image003.png>
`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
`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
`
`
`4
`
`Page 4 of 7
`
`

`

`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
`
`
`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
`
`
`<image003.png>
`R. Wilson “Trey” Powers III, Ph.D.
`Director
`
`5
`
`Page 5 of 7
`
`

`

`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,
`
`
`What is your availability tomorrow to discuss pages Caterpillar would like to redact? I’m flexible.
`
`
`Thanks very much,
`Trey
`
`
`
`
`<image004.png>
`
`
`
` R. Wilson “Trey” Powers III, Ph.D.
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW, Washington, DC 20005
`<image003.png>
`Email: tpowers@sternekessler.com
`Direct: 202.772.8876
`
`
`
`6
`
`Page 6 of 7
`
`

`

`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
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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,
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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
`
`Page 7 of 7
`
`