H314355

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. (ci

that “a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim” is not applicable here. See also Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318 (Fed. Cir. 2013) (appeal from grant of summary judgment of noninfringement, which also cited High Tech Medical, 49 F.3d at 1555-56, and further noted that accepting Accent’s argument, i.e., but for the stop on the accused product, the mount would be permitted to pivot the required 90°, would render the ninety degree limitation meaningless). Moreover, as noted supra, Wirtgen does not dispute that the Updated Machines as shown in the pictures without the coupling lines between the front and rear right legs, and the front and rear left legs do not infringe, the dispute is with respect to possible modification post importation.HOLDINGWe find that Caterpillar has met its burden to establish that Updated Machines do not infringe any of claims 2, 5, 16, and 23 of the ‘530 patent and claim 29 of the ‘309 patent. Accordingly, we find that the articles at issue are not subject to the LEO issued as result of Investigation No. 337-TA-1067.The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).Sincerely,Dax TerrillChief, Exclusion Order Enforcement BranchCC: Mr. Daniel YonanSterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, NW Washington, D.C. 20005wirtgen4-itc@sternekessler.com