Certain Road Milling Machines and Components Thereof; Issuance of a Limited Exclusion Order and Two Cease and Desist Orders; Termination of Investigation

Lisa Barton
International Trade Commission
24 July 2019

[Federal Register Volume 84, Number 142 (Wednesday, July 24, 2019)]
[Notices]
[Pages 35690-35691]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-15689]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1067]


Certain Road Milling Machines and Components Thereof; Issuance of 
a Limited Exclusion Order and Two Cease and Desist Orders; Termination 
of 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 determined to issue: A limited exclusion order (``LEO'') 
prohibiting the unlicensed entry of infringing road-milling machines 
and components thereof covered by one or more of claim 29 of U.S. 
Patent No. 7,828,309 (``the '309 patent'') or claims 2, 5, 16, or 23 of 
U.S. Patent No. 9,656,530 (``the '530 patent'') that are manufactured 
abroad for or on behalf of, or imported by or on behalf of, any of 
Caterpillar Prodotti Stradali S.r.L. of Minerbio, Italy; Caterpillar 
Americas CV of Geneva, Switzerland; Caterpillar Paving Products, Inc. 
of Minneapolis, MN; and Caterpillar Inc. of Peoria, IL 
(``Caterpillar,'' or ``Respondents'') or any of their affiliated 
companies, parents, subsidiaries, or other related business entities, 
or their successors or assigns; and a cease and desist order (``CDO'') 
directed against respondents Caterpillar Paving Products, Inc. and 
Caterpillar Inc., and their affiliated companies, parents, 
subsidiaries, or other related business entities, or their successors 
or assigns. The Commission has terminated this investigation.

FOR FURTHER INFORMATION CONTACT: Michael Liberman, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 205-3115. 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 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 
under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337 
(``section 337''), on August 25, 2017, based on a complaint filed by 
Wirtgen America, Inc. of Antioch, Tennessee (``Wirtgen''). 82 FR 40596-
97 (Aug. 25, 2017). The complaint alleges a violation of section 337 by 
reason of infringement of certain claims of U.S. Patent Nos. 9,644,340 
(``the '340 patent''); 9,624,628 (``the '628 patent''); 7,530,641 
(``the '641 patent''); and the '309 and '530 patents. The complaint 
named Caterpillar Bitelli SpA of Minerbio, Italy (``Caterpillar 
Bitelli'') and Caterpillar as respondents. Id. at 40596. The 
Commission's Office of Unfair Import Investigations was named as a 
party, but later withdrew from the investigation. Subsequently, the 
investigation was terminated as to respondent Caterpillar Bitelli. ALJ 
Order No. 11 dated December 19, 2017 (unreviewed January 18, 2018). The 
investigation was also terminated with respect to the '628 patent. ALJ 
Order No. 30 dated March 27, 2018 (unreviewed April 27, 2018).
    The evidentiary hearing on the question of violation of section 337 
was held April 20-24, 2018. The ALJ issued a final ID on violation on 
October 1, 2018. The ALJ found that a violation of section 337 has 
occurred in this investigation with respect to the '530 and '309 
patents, and no violation of section 337 has occurred with respect to 
the '641 and '340 patent. The ALJ issued his recommended determination 
on remedy, the public interest and bonding on October 18, 2018. The ALJ 
recommended that if the Commission finds a violation of section 337 in 
the present investigation, the Commission should: (1) Issue an LEO 
covering products that infringe the patent claims as to which a 
violation of section 337 has been found; (2) issue a CDO; and (3) 
require no bond during the period of Presidential review.
    Both parties to the investigation filed timely petitions for review 
of various portions of the final ID, as well as timely responses to the 
petitions. The parties also timely filed their respective public 
interest statements pursuant to 19 CFR 210.50(a)(4). Responses from 
public were likewise received by the Commission pursuant to notice. 83 
FR 53296-97 (Oct. 22, 2018).
    On April 17, 2019, the Commission issued a notice in which it 
determined to review-in-part the final ID. See 84 FR 16882-84 (Apr. 23, 
2019). In its 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. See 84 FR 
16882-84 (Apr. 23, 2019). The Commission requested written submissions 
on remedy, the public interest, and bonding. Id. at 1683. On May 8, 
2019, Wirtgen and Caterpillar filed their opening briefs in response to 
the notice, and on May 15--their responsive briefs. No other 
submissions were received by the Commission.
    Having examined the record in this investigation, including the 
parties' submissions on remedy, the public

[[Page 35691]]

interest, and bonding filed in response to the Commission Notice, the 
Commission has determined that the appropriate form of relief in this 
investigation is: (1) 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 (2) a CDO directed 
against Caterpillar Paving Products, Inc. and Caterpillar Inc., and 
their affiliated companies, parents, subsidiaries, or other related 
business entities, or their successors or assigns.
    The Commission has further determined that the public interest 
factors enumerated in subsections (d)(l) and (f)(1) (19 U.S.C. 
1337(d)(l), (f)(1)) do not preclude issuance of the above-referenced 
remedial orders. Additionally, the Commission has determined to impose 
a bond of fourteen (14) percent of entered value of the covered 
products during the period of Presidential review (19 U.S.C. 1337(j)). 
The investigation is terminated.
    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: July 18, 2019.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2019-15689 Filed 7-23-19; 8:45 am]
BILLING CODE 7020-02-P