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

Published date03 July 2019
Citation84 FR 31910
Record Number2019-14189
SectionNotices
CourtInternational Trade Commission
Federal Register, Volume 84 Issue 128 (Wednesday, July 3, 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
                

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