Certain Road Construction Machines and Components Thereof; Commission Decision To Institute a Rescission Proceeding; Permanent Rescission of a Limited Exclusion Order and Cease and Desist Order; Termination of the Rescission Proceeding

Lisa Barton
International Trade Commission
20 May 2021

[Federal Register Volume 86, Number 96 (Thursday, May 20, 2021)]
[Notices]
[Page 27478]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-10585]


-----------------------------------------------------------------------

INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1088 (Rescission)]


Certain Road Construction Machines and Components Thereof; 
Commission Decision To Institute a Rescission Proceeding; Permanent 
Rescission of a Limited Exclusion Order and Cease and Desist Order; 
Termination of the Rescission Proceeding

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to institute a proceeding to determine 
whether to permanently rescind the Commission's limited exclusion order 
(``LEO'') and cease and desist order (``CDO'') issued in the above-
captioned investigation. The LEO and the CDO are permanently rescinded. 
The rescission proceeding 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 may 
be viewed on the Commission's electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email 
EDIS3Help@usitc.gov. 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, ``Caterpillar''). 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) (``section 337''), 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; and 7,641,419. 
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 Holding GmbH of Windhagen, 
Germany; and Wirtgen America, Inc. of Antioch, Tennessee (``Wirtgen 
America'') (collectively, ``Wirtgen''). See id. The Office of Unfair 
Import Investigations is not a party to this investigation. See id.
    On June 27, 2019, the Commission found a violation of section 337 
based on the infringement of claim 19 of the '693 patent and issued an 
LEO against the infringing articles and a CDO against Wirtgen America 
(collectively, ``the remedial orders''). See 84 FR 31910-11 (July 3, 
2019).
    On January 16, 2020, the Commission instituted a modification 
proceeding to determine whether Wirtgen's redesigned series 1810 
machines infringe claim 19 of the '693 patent. On August 31, 2020, the 
Commission determined that Wirtgen's redesigned machines do not 
infringe and issued modified remedial orders exempting the redesigned 
machines from the scope of the orders. See 85 FR 55320-21 (Sept. 4, 
2020).
    On April 29, 2021, Caterpillar and Wirtgen filed a joint petition 
to rescind the remedial orders. Commission Rule 210.76(a)(1), 19 CFR 
210.76(a)(1), permits rescission of Commission remedial orders on the 
basis of ``changed conditions of fact or law.'' The petition asserts 
that such changed conditions exist here. In particular, the parties 
explain that the Patent Trial and Appeal Board (``PTAB'') of the U.S. 
Patent and Trademark Office found claim 19 of the '693 patent to be 
unpatentable in a Final Written Decision, that Caterpillar took an 
appeal from the PTAB to the U.S. Court of Appeals for the Federal 
Circuit, that Caterpillar moved the Federal Circuit to dismiss its 
appeal, and that the Federal Circuit granted that motion. Pet. at 1-2.
    In view of the Federal Circuit's dismissal of Caterpillar's appeal 
from the PTAB's Final Written Decision, the fact that the patent claim 
upon which the remedial orders are based is unpatentable, and the fact 
that Caterpillar and Wirtgen both agree that rescission is appropriate 
now, the Commission has determined to institute a rescission proceeding 
and to grant the joint petition for rescission. The Commission 
permanently rescinds the LEO and the CDO. The rescission proceeding is 
hereby terminated.
    The Commission's vote for this determination took place on May 14, 
2021.
    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: May 14, 2021.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2021-10585 Filed 5-19-21; 8:45 am]
BILLING CODE 7020-02-P