Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1067; Certain Road Milling Machines and Components Thereof.

HQ H314355 May 19, 2021  OT:RR:BSTC:EOE H314355 JW CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. James R. Barney Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, D.C. 20001- 4413 VIA EMAIL: cat-wirtgen-177-customs@finnegan.com RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1067; Certain Road Milling Machines and Components Thereof. Dear Mr. Barney: Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter. We find that Caterpillar Prodotti Stradali S.r.l., Caterpillar Americas CV, Caterpillar Paving Products Inc. and Caterpillar Inc. (collectively, “Caterpillar”) has met its burden to show that Caterpillar’s updated PM600 and PM800 cold planar machines (“Updated Machines” or “articles at issue”) do not infringe claim 29 of U.S. Patent No. 7,828,309 (“the ‘309 patent”) or claims 2, 6, 16, and 23 of U.S. Patent No. 9,656,530 (“the ‘530 patent”).1 Thus, CBP’s position is that the Updated Machines are not subject to the limited exclusion order issued by the U.S. International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1067 (“the underlying investigation” or “the 1067 investigation”), pursuant to section 337 of the Tariff Act of 1930, as 1 We note that on March 15, 2021, the Court of Appeals for the Federal Circuit (“Federal Circuit”) issued a decision in the appeal and cross-appeal from the Commission’s Final Determination in the 1067 investigation. Specifically, the Federal Circuit affirmed the Commission’s determination as to the ‘530 patent and the ‘309 patent, but reversed in part, vacated in part, and remanded for further proceedings as to the ‘641 patent. Caterpillar Prodotti Stradali S.R.L. v. ITC, Nos. 2019- 2445, 2019-1911, 2021 U.S. App. LEXIS 7457 (Fed. Cir. Mar. 15, 2021). However, as of the date of this ruling letter, the Commission has not included any claims of the ‘641 patent in an exclusion order or directed CBP to refuse entry on this basis pursuant to 19 U.S.C. § 1337. amended, 19 U.S.C. § 1337 (“section 337”). We further note that determinations of the Commission resulting from the underlying investigation and a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision pertaining to section 337 exclusion orders. This ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177, which was conducted on an inter partes basis, upon consent of the parties. See, e.g., EOE Branch email to Parties dated January 26, 2021. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Caterpillar, the ruling requester and respondent in the 1067 investigation; and (2) Wirtgen America, Inc. (“Wirtgen”), complainant in the 1067 investigation. See, e.g., 19 C.F.R. § 177.1(c). The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]] in all of their submissions to the CBP. See, e.g., EOE Branch email to Parties dated January 26, 2021; see also 19 C.F.R. §§ 177.2 and 177.8. If there is additional information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential information, and should be redacted from the published ruling, then the parties are asked to contact CBP within ten (10) working days of the date of this ruling letter. See, e.g., 19 C.F.R. § 177.8(a)(3). Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor of disclosure. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, e.g., U.S. Department of Justice, Office of Information Policy: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019). BACKGROUND ITC Investigation No. 337-TA-1067 Procedural History at the ITC The Commission instituted Investigation No. 337-TA-1067 on August 25, 2017, based on a complaint filed by Wirtgen America, Inc. of Antioch, Tennessee. Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067, EDIS Doc. ID 684600, Public Commission Opinion (Aug. 7, 2019) (“Comm’n Op.”) at 1 (citing 82 Fed. Reg. 40595-96 (Aug. 25, 2017)). The complaint alleged a violation of section 337 by reason of infringement of certain claims of U.S. Patent Nos. 7,530,641 (“the ‘641 patent”); 7,828,309 (“the ‘309 patent”); 9,624,628 (“the ‘628 patent”);2 9,644,340 (“the ‘340 patent”); and 9,656,530 (“the ‘530 patent”). Comm’n Op. at 1. The notice of investigation named Caterpillar Bitelli SpA of Minerbio BO, Italy;3 Caterpillar Prodotti Stradali S.r.L. of Minerbio BO, Italy; Caterpillar Americas CV of Geneva, Switzerland; Caterpillar Paving Products, Inc. of Minneapolis, Minnesota; and Caterpillar Inc., of Peoria, Illinois. Id. at 1-2. The Commission’s Office of Unfair Import Investigations (“OUII”) was named as a party, but later withdrew from the investigation. Id. at 2 (citation omitted). On October 1, 2018, the Administrative Law Judge (“ALJ”) issued his final initial determination (“FID”) finding a violation of section 337. Id. Specifically, the ALJ determined that a violation of section 337 occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of certain road milling machines and components thereof with respect to the ‘309 and ‘530 patents, but that such violation did not occur with respect to the ‘641 and ‘340 patents. Id. On October 18, 2018, the ALJ issued his Recommended Determination on remedy and bonding, recommending that, if the Commission finds a violation of section 337 in the investigation, the Commission should: (1) issue a limited exclusion order (“LEO”) covering products that infringe the patent claims as to which a violation of section 337 has been found; (2) issue a cease and desist order; and (3) require no bond during the Presidential review period. Id. (citation omitted). On April 17, 2019, the Commission issued a notice in which it determined to review in part the FID. Comm’n Op. at 3 (citation omitted). In the notice, the Commission determined not to review any issues relating to the ‘340, ‘641, and ‘530 patents and reversed the finding of no invalidity as to claim 36 of the ‘309 patent. Id. (citation omitted). Thus, the Commission found a violation of section 337 as to the ‘309 and ‘530 patents, and requested written submissions on remedy, the public interest, and bonding. Id. (citation omitted). The Commission determined that the appropriate remedy was: “(a) an LEO prohibiting the unlicensed entry of infringing road-milling machines and components thereof covered by one or more of claim 29 of the ‘309 patent or claims 2, 5, 16, or 23 of the ‘530 patent that are manufactured abroad for or on behalf of, or imported by or on behalf of, any of the Respondents or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns; and (b) CDOs directed against Caterpillar Paving Products, Inc. of Minneapolis, Minnesota, and Caterpillar Inc., of Peoria, Illinois, and their affiliated companies, 2 Wirtgen filed an unopposed motion on March 14, 2018 seeking to terminate the investigation as to the ‘628 patent. Id. at 1, fn. 1. The motion was granted by the Administrative Law Judge in an ID (Order No. 30) issued on March 27, 2018 (unreviewed on April 27, 2018). Id. 3 Wirtgen filed an opposed motion on December 4, 2017 seeking to terminate respondent Caterpillar Bitelli SpA based on the withdrawal of the complaint as to that respondent. Id. at 1, fn. 2. The Administrative Law Judge granted the motion in an ID (Order No. 11) that issued on December 19, 2017 (unreviewed on January 18, 2018). Id. parents, subsidiaries, or other related business entities, or their successors or assigns.” Id. at 40. The Commission further found “consideration of the public interest factors does not warrant denial of the remedial relief [and] set [a] bond during the period of Presidential review.” Id.; see also Certain Road Milling Machines and Components Thereof, Investigation No. 337-TA-1067, EDIS Doc. ID 682174, Limited Exclusion Order (July 18, 2019) (“1067 LEO”). The Legacy Products in the Underlying Investigation The legacy products in the underlying investigation were cold planers. Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067, EDIS Doc. ID 684600, Public Final Initial Determination (Oct. 31, 2018) (“FID”) at 7. In particular, Wirtgen accused Caterpillar’s PM600 Series (e.g., the PM620 and PM622 models) and PM800 Series (e.g., the PM820, PM822, and PM825 models) cold planer machines of infringing the asserted claims of the asserted patents. Id. at 8 (citation omitted). Wirtgen further accused Caterpillar’s PM300 Series (e.g., the PM310, PM312, and PM313 models) cold planer machines of infringing the asserted claims of the ‘641 patent. Id. The ALJ determined that the PM620 model was representative of the PM600 Series and PM800 Series products, and that the PM312 model was representative of the PM300 Series products. Id. The Patents and Claims in the 1067 LEO The 1067 LEO prohibits the unlicensed entry for consumption of road-milling machines and components thereof that infringe claim 29 of the ‘309 patent or claims 2, 5, 16, or 23 of the ‘530 patent manufactured for or on behalf of, or imported by or on behalf of, Caterpillar, or any of their affiliated companies, parents, subsidiaries, contractors, joint venture, agents, distributors, or other related business entities, or their successor or assigns. See ¶ 1 of 1067 LEO. Claim 29 of the ‘309 patent The ‘309 patent is titled “Road-building machine” and “directed to a four-way floating- axle that aims to improve the stability of road-building machines.” FID at 41 (citations omitted). Claim 29 of the ‘309 patent depends from independent claim 26. FID at 55. Both claims 26 and 29 of the ‘309 patent are reproduced below: 26. A road-building machine, comprising: a chassis having a forward direction; a left front wheel or caterpillar; a right front wheel or caterpillar; a left rear wheel or caterpillar; a right rear wheel or caterpillar; a first working cylinder rigidly connected to the chassis and connected to the left front wheel or caterpillar for adjusting a height of the left front wheel or caterpillar relative to the chassis; a second working cylinder rigidly connected to the chassis and connected to the right front wheel or caterpillar for adjusting a height of the right front wheel or caterpillar relative to the chassis; a third working cylinder rigidly connected to the chassis and connected to the left rear wheel or caterpillar for adjusting a height of the left rear wheel or caterpillar relative to the chassis; a fourth working cylinder rigidly connected to the chassis and connected to the right rear wheel or caterpillar for adjusting a height of the right rear wheel or caterpillar relative to the chassis; a rotating working roller or rotor supported from the chassis between the front wheels or caterpillars and the rear wheels or caterpillars and extending transversely to the forward direction; each of the working cylinders including at least one working chamber filled with a pressure medium; and coupling lines connecting the working cylinders to one another and providing a positive hydraulic coupling between the working cylinders in such a way that the left front wheel or caterpillar and the right rear wheel or caterpillar are adjusted in height in the same direction and in the opposite direction to the right front wheel or caterpillar and the left rear wheel or caterpillar. See FID at 43; ‘309 patent. 29. The road-building machine of claim 26, wherein the machine has a four sided stability pattern having a widest transverse dimension, transverse to the forward direction of the chassis, which widest transverse dimension falls within a footprint of the working roller or rotor. Id. In the underlying investigation, the parties agreed that the term “positive hydraulic coupling,” in claim 26 means “hydraulically connected in such a way that movement of one actuating member causes another actuating member to move.” FID at 44 (citation omitted). However, the parties disputed the construction of, inter alia, the phrase in claim 26, “are adjusted in height in the same direction and in the opposite direction.” Id. The ALJ construed this phrase to mean “adjusted in height similarly and inversely.” FID at 48; see also 84 Fed. Reg. at 16882-84.4 Claims 2, 5, 16, or 23 of the ‘530 Patent The ‘530 patent is titled “Automotive construction machine, as well as lifting column for a construction machine” and in general concerns “the lifting columns, or legs, that are used to raise or lower a construction machine.” FID at 343-4. “The columns are equipped with sensors that relay position information to a controller that uses the information to regulate the lifting position of the columns and the vertical depth (e.g., the height) of the drum.” Id. at 344 (citation omitted). In the ‘530 patent, claim 2 depends from claim 1, and claims 5 and 16 depend from claim 2; while claim 23 depends from claim 22, which in turn depends from claim 1. Claims 1, 2, 5, 16, and 22, 23 of the ‘530 patent are reproduced below: A road construction machine, comprising: a machine frame; a working drum supported from the machine frame for working a ground surface or traffic surface; 4 The Commission reversed the ALJ’s finding that claim 36 of the ‘309 patent is not invalid, but did not disturb the remainder of the ALJ’s findings with respect to the ‘309 and ‘530 patents. See e.g., Comm’n Op. at 3 (citing 84 Fed. Reg. at 16882-84).  a plurality of ground engaging supports for supporting the construction machine on the ground surface or traffic surface; a plurality of lifting columns, each one of the lifting columns being connected between the machine frame and one of the ground engaging supports, each one of the lifting columns including two telescoping hollow column members and at least one piston cylinder unit located within the telescoping hollow column members for adjusting a height of the lifting column so that each one of the lifting columns is adjustable in height relative to the machine frame, each lifting column having a lifting position corresponding to a position of one of the two telescoping hollow column members relative to the other of the two telescoping hollow column members; and a plurality of lifting position sensors, each lifting position sensor being coupled with elements of one of the lifting columns, which elements are capable of being displaced relative to one another in accordance with the lifting position of the lifting column in such a manner that a signal including information on a current lifting position of the lifting column is produced by the lifting position sensor, wherein each of the lifting position sensors is connected to the at least one piston cylinder unit located within its associated lifting column. * * * The road construction machine of claim 1, further comprising: a controller configured to receive the signals from the lifting position sensors, and to regulate the lifting positions of the lifting columns in response at least in part to the signals from the lifting position sensors. * * * 5. The road construction machine of claim 2, wherein: the controller is configured to provide at least one limiting value for the height adjustment of each of the lifting columns. * * * 16. The road construction machine of claim 2, wherein: the controller is configured to raise the lifting columns synchronously to one another.  * * * The road construction machine of claim 1, further comprising: an indicator device operable to display the lifting positions of each of the lifting columns corresponding to the signals produced by the lifting position sensors. * * * The road construction machine of claim 22, wherein: the plurality of lifting columns includes two front lifting columns and two rear lifting columns; and the indicator device is operable to display the lifting positions of the two front lifting columns and two rear lifting columns. See ‘530 patent; see also FID at 344-5 (citing JX-0003 at 7:51-9:55). In the underlying investigation, the parties agreed that the phrase in claim 1 of the ‘530 patent “each lifting position sensor being coupled with elements of one of the lifting columns, which elements are capable of being displaced relative to one another in accordance with the lifting position of the lifting column in such a manner that a signal including information on a current lifting position of the lifting column is produced by the lifting position sensor” should be afforded its plain and ordinary meaning, which is “each lifting position sensor is coupled to two or more components within its respective lifting column, these components are capable of being displaced relative to one another such that their displacement reflects the lifting position of the lifting column, the lifting position sensor generates a signal that contains information about the lifting position of the column based on the displacement of the components.” FID at 347. The parties disputed the construction of the “controller” term, which appears in claims 2, 4, 5, 8-10, 13-19, 24, and 25 of the ‘530 patent. FID at 347. The ALJ construed the term “controller” as used in the ‘530 patent to mean “a standard electronic controller” such as a single- board controller or a programmable-logic controller available at the time of the patent, and found that the term “controller” is not functionally claimed. Id. at 350-1. Caterpillar Prodotti Stradali S.R.L. v. ITC, Nos. 2019-2445, 2019-1911, 2021 U.S. App. LEXIS 7457 (Fed. Cir. Mar. 15, 2021) As noted above, Caterpillar appealed the Commission’s determination with respect to the ‘530 and ‘309 patents to the Federal Circuit, and Wirtgen cross-appealed as to the ‘641 patent. On March 15, 2021, the Federal Circuit affirmed the Commission’s decision as to the ‘530 and ‘309 patents, but reversed in part, vacated in part, and remanded as to the ‘641 patent. On May 6, 2021, the Federal Circuit’s mandate issued to the Commission. See Fed. R. App. P. 41(b). As of the time of this ruling letter, the Commission has not issued an order requesting views of the parties regardin