H324012

HQ H324012 April 2, 2022 OT:RR:BSTC:EOE H324012 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: james.barney@finnegan.com; 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 claims 11 and 17 of U.S. Patent No. 7,530,641 (“the ‘641 patent”). Thus, CBP’s position is that the Updated Machines are not subject to the modified limited exclusion order (“LEO”), dated November 4, 2021, that the U.S. International Trade Commission (“Commission” or “ITC”) issued in Investigation No. 337-TA-1067 (“the underlying investigation” or “the 1067 investigation”) pursuant to section 337 of the Tariff Act of 1930, as 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. 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 in all of their submissions to the CBP. See 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 Food Marketing Institute v. Argus Leader Media, 588 U. S. , , 139 S. Ct. 2356, 2366 (2019) (concluding that “[a]t least where commercial or financial information is both customarily and actually treated as private by its owner and provided to the government under an assurance of privacy, the information is ‘confidential’ within the meaning of exemption 4.”); see also U.S. Department of Justice, Office of Information Policy (OIP): 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) and OIP Guidance: Exemption 4 after the Supreme Court’s Ruling in Food Marketing Institute v. Argus Leader Media (updated 10/4/2019). 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”); 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; 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 presiding 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 April 17, 2019, the Commission issued a notice in which it determined to review in part the FID. Comm’n Op. at 3. 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 only claim 36 of the ‘309 patent. Id. Thus, the Commission found a violation of section 337 as to claim 29 of the ‘309 patent and claims 2, 5, 16, and 23 of the ‘530 patent, and requested written submissions on remedy, the public interest, and bonding. Id. On March 15, 2021, the Court of Appeals for the Federal Circuit (“Federal Circuit”) issued a decision in an appeal and cross-appeal Wirtgen and Caterpillar filed, respectively, challenging the Commission’s final determination in the 1067 investigation. 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 as to the ‘641 patent. Caterpillar Prodotti Stradali S.R.L. v. ITC, 847 Fed. Appx. 893, 2021 U.S. App. LEXIS 7457 (Fed. Cir. 2021). Specifically, the Federal Circuit reversed and vacated the Commission’s finding, adopted from the FID, that Wirtgen failed to prove the knowledge required for inducement and, as such, remanded as to the ‘641 patent for further proceedings. Id. at 899-900; see also Commission Order (Remand) at 3 (dated June 7, 2021). On June 17, 2021, Caterpillar submitted comment