Case 1:17-cv-00770-JDW Document 250-68 Filed 10/25/23 Page 1 of 3 PageID #: 27918
`Case 1:17-cv-00770-JDW Document 250-68 Filed 10/25/23 Page 1 of 3 PagelD #: 27918
`
`EXHIBIT 65
`EXHIBIT 65
`
`

`

`Case 1:17-cv-00770-JDW Document 250-68 Filed 10/25/23 Page 2 of 3 PageID #: 27919
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`To: Karl E Weiss[CN=Karl E. Weiss/OU=OF/O=Caterpillar@caterpillarj
`From: Paul J Clark[CLARK_PAUL_J@cat.coml
`Sent: Fri 6/16/2017 9:03:23 PM Coordinated Univet sal Time
`Subject: Fwd: Caterpillar PM 620/622/820/822/825 Infringement of Wirtgen Patents
`Attachment: FINAL Complaint.pdf
`Attachment: Untitled attachment 00358.htm
`
`For your reading enjoyment
`
`Paul Clark
`Cell phone: 309 253-2754
`Sent from my iPad
`
`Begin forwarded message:
`
`From: "1 Iahn Ginter" <Guenter. Haehn@wirtgen.de>
`To: "Clark Paul 4eat.eom" <CLARK PAUL 4@cateom>
`Subject: Re: Caterpillar PM 620/622/820/822/825 Infringement of Wirtgen Patents
`
`THIS CORRESPONDENCE IS AN OFFER OF COMPROMISE AND NEGOTIATION AND UNDER FEDERAL RULE OF EVIDENCE 408 IS NOT TO
`BE ADMISSIBLE TO PROVE OR DISPROVE THE MATTERS DISCUSSED HEREIN
`
`Dear Mr. Clark,
`
`I am writing to notify you of actions taken by Wirtgen America, Inc. and to propose a process for us to explore an early resolution of
`this matter. I would like to discuss this with you during our scheduled call at 9:00 AM your time this morning.
`Wirtgen America has filed suit against Caterpillar in the U.S. for infringement of a number of J.S. patents by features present on your
`large milling machines. A courtesy copy of that complaint is attached. In the spirit of good faith and our prior willingness to resolve
`our disputes with you, Wirtgen America will refrain from formally serving this complaint until we have had the opportunity to discuss
`with you the possibility of settlement.
`We propose that both Wirtgen and Caterpillar agree that neither will institute any further legal proceedings for a period of thirty
`days, so that we may discuss a resolution. If that is agreeable to you we will have our legal counsel prepare an appropriate written
`agreement for your review.
`We further believe that ;t makes sense to discuss settlement in a global context. Accordingly our proposal is that agreement
`between us as to the features that are to be permited or changed on your machines should apply on a worldwide basis.
`For us to have any realistic chance of resolving this matter without litigation we need to have frank and open discussions. If you
`believe that the allegations of infringement in the U.S. complaint are inaccurate, or if you believe you have grounds for a defense of
`invalidity regarding any of the patents we ask that you provide us with your position and any evidence that we should consider. We
`will give you a prompt response to any issues you may raise. Both I and aim McEvoy of Wirtgen America are available to meet with
`you at a convenient place and time to further the discussion. We are willing to discuss a reasonable time for Caterpillar to implement
`the agreed upon changes.
`Our initial proposal for resolution is that Caterpillar make the following changes on these machines:
`1. Redesign the actuating mechanism for the pivoting scraper blade (service door) in a manner acceptable to Wirtgen so as
`to avoid further infringement of U.S. Patent No. 9644340. This change to remain in effect until August 13, 2028.
`
`2. Eliminate the "auxiliary rotor service drive" for turning the milling drum during servicing. This change to remain in effect
`until May 10, 2021 (expiration of U.S. Patent No. 9,624,628).
`
`3. Eliminate the "automatic rotor disengagement feature" which detects a condition where the rotor could come into
`contact with a surface while the machine is traveling in reverse. This change to remain in effect until Oct. 31, 2027
`(expiration of U.S. Patent No. 7,530,641).
`
`4. Eliminate the "ride control feature" by which you place the four leg cylinders in a series circuit. This change to remain in
`effect until March 9, 2026 (expiration of U.S. Patent Nos. 8,118,316 and 7,828,309).
`
`5. You agree not to implement any additional control functionality beyond the features currently on your machines using
`sensor signals indicative of the lifting position of the lifting columns, and you further agree to eliminate the following
`current control functionalities:
`
`a. "Obstacle lump"
`
`b. "All Legs Raise"
`
`c.
`
`"All Legs Lower"
`
`d. Regulation of milling depth based at least in part in response to lifting position of the lifting columns.
`
`This change to remain in effect until Sept. 12, 2026 (expiration of U.S. Patent Nos. 8113592, 9010871, and 9656530).
`
`6. Eliminate the "hot swapping" feature by which you switch sensors for milling depth control on the fly. This change to
`remain in effect until April 12, 2027 (expiration of U.S. Patent Nos. 7,946,788; 8,308,395; 8,511,932; and 8,690,474).
`
`By agreeing to remove the features mentioned above, it would be with the intent that they are not reintroduced later either in the
`
`HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS' EYES ONLY
`
`CAT_00022089
`
`

`

`Case 1:17-cv-00770-JDW Document 250-68 Filed 10/25/23 Page 3 of 3 PageID #: 27920
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`same or a redesigned capacity that continues to infringe Wirtgen America's patents. Such a settlement would be embodied in a
`formal legal agreement to be prepared by our respective legal counsel, and to include all other provisions that typically accompany
`such an agreement.
`
`Please contact me at your earliest convenience to discuss how we will proceed.
`
`With best regards
`
`Dr. Gunter Hahn
`5FescluV2zarhrer- IMana9ing Director
`
`w:ERTGEEN SmE-IN
`Reinhard-16'irtge:1-55.r. 2. 0-535731 Wiridhager:
`WWW.wirtp,en.de
`
`1: +49 26 45 / 7:31 321
`F: +49 2.6 415 137 779
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`HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS' EYES ONLY
`
`CAT_00022090
`
`