Certain Road Construction Machines and Components Thereof; Commission Final Determination Finding a Section 337 Violation; Issuance of a Limited Exclusion Order and a Cease and Desist Order; Termination of the Investigation

Lisa Barton
International Trade Commission
3 July 2019

[Federal Register Volume 84, Number 128 (Wednesday, July 3, 2019)]
[Notices]
[Pages 31910-31911]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-14189]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1088]


Certain Road Construction Machines and Components Thereof; 
Commission Final Determination Finding a Section 337 Violation; 
Issuance of a Limited Exclusion Order and a Cease and Desist Order; 
Termination of the Investigation

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has found a violation of section 337 of the Tariff Act of 
1930 (``section 337''), as amended, in this investigation. The 
Commission has issued a limited exclusion order (``LEO'') prohibiting 
the importation by respondents Wirtgen GmbH, Wirtgen Group Holding GmbH 
(``Wirtgen Group''), and Wirtgen America, Inc. (``Wirtgen America'') of 
certain road construction machines and components thereof that infringe 
claim 19 of U.S. Patent No. 7,140,693. The Commission has also issued a 
cease and desist order (``CDO'') directed to respondent Wirtgen 
America. The investigation is terminated.

FOR FURTHER INFORMATION CONTACT: Houda Morad, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 708-4716. Copies of non-
confidential documents filed in connection with this investigation are 
or will be available for inspection during official business hours 
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. 
International Trade Commission, 500 E

[[Page 31911]]

Street SW, Washington, DC 20436, telephone (202) 205-2000. General 
information concerning the Commission may also be obtained by accessing 
its internet server at https://www.usitc.gov. The public record for 
this investigation may be viewed on the Commission's electronic docket 
(EDIS) at https://edis.usitc.gov. Hearing-impaired persons are advised 
that information on this matter can be obtained by contacting the 
Commission's TDD terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on November 29, 2017, based on a complaint, as supplemented, filed by 
Caterpillar Inc. of Peoria, Illinois and Caterpillar Paving Products, 
Inc. of Minneapolis, Minnesota (collectively, ``Complainants''). See 82 
FR 56625-26 (Nov. 29, 2017). The complaint, as supplemented, alleges 
violations of section 337 of the Tariff Act of 1930, as amended (19 
U.S.C. 1337), based upon the importation into the United States, the 
sale for importation, and the sale within the United States after 
importation of certain road construction machines and components 
thereof by reason of infringement of certain claims of U.S. Patent Nos. 
7,140,693 (``the '693 patent''); 9,045,871 (``the '871 patent''); and 
7,641,419 (``the '419 patent''). See id. The notice of investigation 
identifies the following respondents: Wirtgen GmbH of Windhagen, 
Germany; Joseph V[ouml]gele AG of Ludwigshafen, Germany; Wirtgen Group 
of Windhagen, Germany; and Wirtgen America of Antioch, Tennessee. See 
id. The Office of Unfair Import Investigations is not a party to this 
investigation. See id.
    The ALJ terminated the '871 patent from the investigation after 
finding the asserted claims of that patent to be invalid under 35 
U.S.C. 101. See Order No. 18 (May 24, 2018), previously reviewed, 
Comm'n Notice (July 3, 2018). The Commission terminated the '419 patent 
from the investigation after Complainants withdrew their allegations 
with respect to that patent. See Order No. 26 (July 5, 2018), 
unreviewed, Comm'n Notice (July 25, 2018). The Commission also 
terminated claim 25 of the '693 patent from the investigation after 
Complainants withdrew their allegations as to that claim. See Order No. 
38 (Oct. 16, 2018), unreviewed, Comm'n Notice (Nov. 9, 2018).
    On February 14, 2019, the ALJ issued the FID finding a violation of 
section 337 by certain accused products by reason of infringement of 
claim 19 of the '693 patent. In addition, the FID finds all the 
asserted claims, except claim 19 of the '693 patent, to be invalid as 
anticipated and/or obvious over the prior art. Furthermore, the FID 
finds that Complainants have satisfied the domestic industry 
requirement with respect to the '693 patent. The ALJ also issued a 
recommended determination (``RD'') recommending that the Commission 
issue an LEO against the infringing products and a CDO against each 
respondent. The ALJ further recommended against setting a bond during 
the period of Presidential review.
    On April 12, 2019, the Commission issued a Notice determining to 
review the FID in part. See 84 FR 16282-83 (Apr. 18, 2019). The 
Commission's notice solicited written submissions on remedy, the public 
interest, and bonding. On April 30, 2019, the parties filed written 
submissions in response to the April 12, 2019 Notice, and on May 10, 
2019, the parties filed responses to each other's submissions.
    Having examined the record of this investigation, including the 
FID, the RD, and the parties' submissions, the Commission has 
determined to affirm with modification the FID's ultimate conclusion of 
a section 337 violation with respect to claim 19 of the '693 patent. In 
addition, as explained in the Commission Opinion filed concurrently 
herewith, the Commission has determined to modify the FID's findings 
with respect to: (1) The construction of the claim term ``a retracted 
position relative to said frame''; (2) the infringement of the asserted 
method claims, i.e., claims 17-19, 24, 26-28, and 38 of the '693 
patent; (3) the invalidity of claims 1, 15-18, 24, 26, 27, 36, and 38 
of the '693 patent over Volpe SF-100 T4 in view of U.S. Patent No. 
3,633,292 (Ulrich); (4) no invalidity of claims 1, 15-19, 24, 26-28, 
36, and 38 of the '693 patent over U.S. Patent No. 3,843,274 (Gutman) 
alone or in combination with other prior art; and (5) no invalidity of 
claim 19 over Volpe SF-100 T4 in view of Ulrich and WO 97/42377 
(Busley). All findings in the FID that are not inconsistent with the 
Commission's determination are affirmed.
    The Commission has also determined to affirm the ALJ's initial 
determination (Order No. 18) terminating the '871 patent from the 
investigation based on the invalidity of the asserted claims of that 
patent under 35 U.S.C. 101. Commissioner Schmidtlein dissents from the 
Commission's decision to affirm Order No. 18 and has filed a separate 
dissenting opinion.
    Accordingly, the Commission finds that there is a violation of 
section 337 with respect to claim 19 of the '693 patent. The Commission 
has determined that the appropriate remedy is a limited exclusion order 
against Wirtgen Group, Wirtgen GmbH, and Wirtgen America's infringing 
products, and a cease and desist order against Wirtgen America. The 
Commission has also determined that the public interest factors 
enumerated in subsections 337(d)(1) and (f)(1) (19 U.S.C. 1337(d)(1), 
(f)(1)) do not preclude the issuance of the limited exclusion order and 
cease and desist order. The Commission has further determined to set a 
bond at zero (0) percent of entered value during the Presidential 
review period (19 U.S.C. 1337(j)).
    The Commission's orders and opinion were delivered to the President 
and to the United States Trade Representative on the day of their 
issuance.
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in part 210 of the Commission's Rules of Practice and Procedure (19 CFR 
part 210).

    By order of the Commission.

    Issued: June 27, 2019.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2019-14189 Filed 7-2-19; 8:45 am]
 BILLING CODE 7020-02-P