H308232

HQ H308232 January 21, 2020 OT:RR:BSTC:IPR H308232 JW/CBC CATEGORY: 19 U.S.C. § 1337; Unfair Competition VIA EMAIL: Juan.J.Porras@cbp.dhs.gov; Armando.Taboada@cbp.dhs.gov Mr. Juan J. Porras and Mr. Armando Taboada Directors of Machinery Center of Excellence & Expertise U.S. Customs and Border Protection 109 Shiloh Dr., Ste 300 Laredo, TX 78045 RE: Protest No. 170119100004; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1088, Certain Road Construction Machines and Components Thereof Dear Mr. Porras and Mr. Taboada: This letter is in response to protest number 170119100004 filed by Wirtgen America, Inc. (“Wirtgen” or “Protestant”) on December 24, 2019. Wirtgen is protesting U.S. Customs and Border Protection’s (“CBP”) exclusion of Wirtgen’s series 1810 cold milling machines, models XFi and XTi,1 by reason of the exclusion order issued by the U.S. International Trade Commission (“ITC” or “Commission”) in investigation number 337-TA-1088 under 19 U.S.C. § 1337. Wirtgen Protest at 2; see also, e.g., 1088 LEO (EDIS Doc. No. 679595); 19 U.S.C. § 1337(d). Wirtgen’s protest specifies that it is “filed in accordance with section 514(a)(4), Tariff Act of 1930, as amended (19 U.S.C. 1514(a)(4)), and 19 C.F.R. § 174.” See Wirtgen Protest at 1. However, the statute is clear on its face that the protest is not proper. See 19 U.S.C. § 1514(a)(4) and 19 C.F.R. § 174.11(b)(4). While “the exclusion of merchandise from entry” is generally addressed under subsection (4) of 19 U.S.C. § 1514(a), Congress excepted—carved out—from protest “a determination appealable under section 1337 of this title [i.e., title 19].” See 19 U.S.C. § 1514(a)(4). Wirtgen’s underlying cause of action in the protest stems from the exclusion order issued by the Commission in investigation no. 337-TA-1088, rather than CBP’s exclusion of merchandise from entry. Thus, in accordance with the language of 19 U.S.C. § 1514(a)(4), 1 Entry no. [[ ]] and entry no. [[ ]]. Wirtgen’s remedy is an appeal as provided by 19 U.S.C. § 1337; not a protest under 19 U.S.C. § 1514(a). See, e.g., 19 U.S.C. §1337(c); 19 U.S.C. §1337(k). The determination that Wirtgen is protesting is not one of the seven categories enumerated in 19 U.S.C. § 1514(a); in fact, it is explicitly carved out. 19 U.S.C. § 1514(a)(4) (“except a determination appealable under section 1337 of this title.”). Accordingly, Wirtgen’s protest is not proper under 19 U.S.C. § 1514(a) and should be DENIED AS NOT PROTESTABLE. In addition, on January 16, 2020, the Commission “determined to institute a modification proceeding pursuant to Commission authority under 19 U.S.C. § 1337(k) and Commission Rule 210.76, 19 CFR 210.76.” Certain Road Construction Machines and Components Thereof, Investigation No. 337-TA-1088, EDIS Doc. No. 699503, Notice of Commission Determination to Institute a Modification Proceeding; Request for Written Submissions at 2 (January 16, 2020). “The modification proceeding is addressed to whether Wirtgen’s redesigned Models XFi and XTi machines infringe claim 19 of the ’693 patent [i.e., U.S. Patent No. 7,140,693] and therefore fall within the scope of the LEO, or whether the LEO should be modified to include an explicit exemption for Wirtgen’s Model XFi and XTi redesigned machines.” Id. These are the same articles as the articles at issue in Wirtgen’s protest. Accordingly, this modification proceeding at the Commission will have a direct impact on, and dictate with respect to the exclusion order, CBP’s views on the admissibility of the articles at issue in Wirtgen’s protest. The determination of the Commission is binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision. Information bracketed in red [[ ]] in this letter will be redacted from the public version. A public version of this letter is also enclosed for your files. Nothing in Wirtgen’s protest, which included Exhibits 1 to 8, was designated as confidential. If there is additional information not currently bracketed in red [[ ]] that Wirtgen believes should be redacted from the public version, Wirtgen is asked to email the Intellectual Property Rights Branch (“IPR Branch”) of CBP at IPRBranch.ITC337.Admin@cbp.dhs.gov by 5pm ET on January 30, 2020 identifying the additional information that should be redacted from the public version. Please note that CBP is guided in this regard by the laws relating to confidentiality and disclosure to include, for example, the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (“TSA”) (18 U.S.C. § 1905) and/or the Privacy Act of 1974, as amended (5 U.S.C. § 552a). BACKGROUND Investigation No. 337-TA-1088 The U.S. International Trade Commission instituted investigation no. 337-TA-1088 (“the 1088 investigation”) on November 29, 2017. 82 Fed. Reg. 56625-26 (2017). The complainants were Caterpillar Inc. and Caterpillar Paving Products, Inc. Certain Road Construction Machines and Components Thereof, Investigation No. 337-TA-1088, Final Initial Determination (Feb. 14, 2019) at 2 (“FID”). The respondents were Wirtgen GmbH, Joseph Vogele AG, Wirtgen Group Holding GmbH, and Wirtgen America, Inc. Id. The accused products were Wirtgen’s series 1810 compact milling machines, model numbers W 100 CFi, W 120 CFi, and W 130 CFi. Id. at 3; Certain Road Construction Machines and Components Thereof, Investigation No. 337-TA-1088, Commission Opinion (July 15, 2019) at 9-10 (“Comm’n Op.”). For the series 1810 machines, Wirtgen noted that it was [[ ]] FID at 24. Wirtgen stated that [[ ]] and [[ ]] Id. The Administrative Law Judge (“ALJ”) found that these alternate swing-leg designs “have not been implemented in any imported articles,” and thus “are not ripe for a determination of infringement or non-infringement in this investigation.” Id. at 24–25. Wirtgen did not petition for review of the FID’s findings on this issue, and the Commission determined not to review this issue. Comm’n Op. at 10 n.22. (The Commission noted that Wirtgen “identified [[ ]] but the FID declined to adjudicate those [[ ]] Wirtgen did not petition for review of the FID’s findings with respect to the [[ ]], and the Commission determined not to review this issue.”). The Commission found “a section 337 violation based on the infringement of claim 19 of [U.S. Patent No. 7,140,693 (“the ’693 patent”)] by Wirtgen’s series 1810 milling machines.” Comm’n Op. at 46. 2 Hence, the Commission issued a limited exclusion order in the 1088 investigation (“the 1088 LEO”) on June 27, 2019. See 1088 LEO (EDIS Doc. No. 679595). The 1088 LEO, inter alia, prohibits the unlicensed entry for consumption of road construction machines and components thereof that infringe claim 19 of the ’693 patent that are manufactured abroad by or on behalf of, or are imported by or on behalf of, the respondents Wirtgen GmbH, Wirtgen Group Holding GmbH, and Wirtgen America, Inc.3 2 Wirtgen further identified a prior generation of milling machines, that Complainants did not accuse (the 1310 series, with model numbers W 100 Fi, W 120 Fi, and W 130 Fi), for which Respondents requested that the ALJ adjudicate infringement. FID at 3; Comm’n Op. at 10 footnote Wirtgen’s 1310 series machines were found to not infringe any asserted claims of the ’693 patent. FID at 24. Accordingly, in contrast, “[t]he Commission [determined] that the LEO should include an explicit carve-out for Wirtgen’s series 1310 machines.” Comm’n Op. at 47. 3 It should further be noted that in the 1088 investigation Wirtgen sought to limit the limited exclusion order to accused road milling machines, and asserted that the LEO should not encompass other road construction machines and components. FID at 79. However, the ALJ differentiated this argument citing that “[l]ong-standing Commission precedent supports issuance of broad remedial orders extending to ‘all products covered by the patent claims as to which a viola

of in the past. Rather, this issue has largely gone undisputed and unaddressed. See, e.g., Corning Gilbert, Inc. v. United States, 896 F. Supp. 2d 1281, 1283 (Court noted that plaintiff “timely protested the exclusion [made by CBP based on a general exclusion order issued by the U.S. International Trade Commission] and, pursuant to 19 U.S.C. § 1515(a) and 19 C.F.R. §§ 174.24 and 177.2, applied for further review, and requested an administrative ruling from Customs Headquarters” but did not discuss whether the exclusion was a decision subject to protest under 19 U.S.C. § 1514(a) and 19 C.F.R. § 174.11 in the first instance); Otter Prods., LLC v. United States, 37 F. Supp. 3d 1306, 1313 (Court said that it was without dispute that the court has subject matter jurisdiction in this case pursuant to 28 U.S.C. § 1581(a) without further discussion on whether the exclusion of merchandise by CBP pursuant to an exclusion order issued by the Commission under 19 U.S.C. § 1337 was, in the first instance, a decision subject to protest under 19 U.S.C. § 1514(a) and 19 C.F.R. § 174.11).However, “[i]f that statute is clear on its face, the court must follow Congressional intent, regardless of the existence of an interpretation by Customs to the contrary.” Precision Specialty Metals v. United States, 24 C.I.T. 1016, 1025 (2000) citing Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 842–43 (1984)). 19 U.S.C. § 1514(a), addressing the finality of Custom’s decisions for purposes of administrative protests contains an express exception under 19 U.S.C. § 1514(a)(4) for “a determination appealable under [19 U.S.C. § 1337.]” See, also, 19 C.F.R. § 174.11. 19 U.S.C. § 1337(k) provides for a remedy with respect to the underlying order implementing the Commission’s determination on violation wherein any person previously found in violation of Section 337 may seek “modification or rescission” of the order on15 For purposes of 19 U.S.C. § 1337(k), “a showing that [