Case 1:17-cv-00770-RGA Document 24 Filed 05/14/21 Page 1 of 4 PageID #: 2301
`
`WILMINGTON
`RODNEY SQUARE
`
`NEW YORK
`ROCKEFELLER CENTER
`
`Adam W. Poff
`P 302.571.6642
`F 302.576.3326
`apoff@ycst.com
`
`May 14, 2021
`
`
`
`
`
`VIA ELECTRONIC FILING
`
`The Honorable Richard G. Andrews
`United States District Court
`for the District of Delaware
`844 N. King Street
`Wilmington, DE 19801-3555
`
`
`
`
`Re: Wirtgen America, Inc. v. Caterpillar, Inc. C.A. No. 17-770-RGA
`
`Dear Judge Andrews:
`
`Pursuant to the parties’ March 30, 2021 letter, the parties jointly provide this
`
`update on the status of the above-referenced action.
`
`Plaintiff Wirtgen asserted five patents against Caterpillar in U.S. International Trade
`Commission Investigation No. 337-TA-1067, all of which are at issue in this Delaware action:
`U.S. Patent Nos. 7,530,641; 7,828,309; 9,624,628; 9,644,340; 9,656,530. Wirtgen withdrew the
`’628 patent from the Investigation before trial, and the ALJ found no violation for the ’641 and
`’340 patents. Regarding the ’309 and ’530 patents, the Commission issued a final determination
`on April 17, 2019, finding a violation for both patents, which resulted in two Cease and Desist
`Orders and a Limited Exclusion Order issuing on July 18, 2019.
`
`Both parties appealed certain aspects of the ITC’s final determination to the U.S. Court of
`Appeals for the Federal Circuit. Specifically, Caterpillar appealed the finding of a violation with
`respect to the ʼ530 and ʼ309 patents (Appeal No. 19-2445), and Wirtgen appealed the finding of
`no violation for the ʼ641 patent (Appeal No. 19-1911). The Federal Circuit heard consolidated
`oral argument on February 1, 2021, and issued an order on March 15, 2021, affirming-in-part,
`reversing-in-part, and vacating-in-part the ITC’s decision. Caterpillar Prodotti Stradali S.R.L. v.
`Int’l Trade Comm’n, Nos. 2019-2445, 2019-1911, 2021 WL 960759 (Fed. Cir. Mar. 15, 2021).
`Specifically, the Federal Circuit found “no reversible error in the ALJ’s decision (adopted by the
`Commission) with respect to the ’530 and ’309 patents.” Id. at *4. Also, for some of the accused
`products, the Federal Circuit “reverse[d] the ALJ’s finding, adopted by the Commission, that
`Wirtgen failed to prove the knowledge required for inducement,” and it “vacate[d] the finding of
`no induced infringement” of the ’641 patent. Id. at *5. The Court ordered that “the matter is
`remanded for further proceedings consistent with this opinion.” Id. at *6.
`
`Young Conaway Stargatt & Taylor, LLP
`Rodney Square | 1000 North King Street | Wilmington, DE 19801
`P 302.571.6600 F 302.571.1253 YoungConaway.com
`
`

`

`Case 1:17-cv-00770-RGA Document 24 Filed 05/14/21 Page 2 of 4 PageID #: 2302
`
`Young Conaway Stargatt & Taylor, LLP
`The Honorable Richard G. Andrews
`May 14, 2021
`Page 2
`
`
`
`The Federal Circuit’s mandate issued on May 6, 2021, and the case is now pending
`before the ITC on remand. The ITC has not yet issued any orders regarding the remand
`proceedings.
`
`Wirtgen believes the stay in this district court action can and should be lifted. Caterpillar
`disagrees with this assertion. Because the parties have been unable to reach agreement on this
`issue, despite meeting and conferring, they have agreed to succinctly present their positions
`below. If the Court believes that additional briefing or argument is necessary on this issue, the
`parties stand ready to provide such briefing and argument as the Court may direct.
`
`The parties separately state their positions below:
`
`Wirtgen’s Position
`This case should proceed because the Commission’s determination has “become[] final”
`for all issues before this Court. See 28 U.S.C. § 1659; Engel Indus., Inc. v. Lockformer Co., 166
`F.3d 1379, 1382-83 (Fed. Cir. 1999) (“[I]ssues actually decided—those within the scope of the
`judgment appealed from, minus those explicitly reserved or remanded by the court—are
`foreclosed from further consideration.”). The Federal Circuit’s remand indisputably does not
`involve four of the five overlapping patents (the ’309, ’530, ’628, and ’340 patents). And the
`narrow remand regarding the ’641 patent does not “involve[] the same issues” before this Court;
`only infringement, validity, damages, and injunctive relief are before this Court, not a
`determination of whether there is a violation of Section 337. Here, Caterpillar has conflated the
`statute’s discussion of the Commission’s “determination” with a “proceeding” before the
`Commission. See In re Princo, 478 F.3d 1345, 1357 (Fed. Cir. 2007) (“The district court is
`directed to stay its proceedings under 28 U.S.C. § 1659 until Commission proceedings on the
`same issues are final, including any appeals.” (emphasis added)); Spansion, LLC v. Samsung
`Elecs. Co., Ltd., No. 10-cv-685, 2011 WL 13209596, at *2 (W.D. Wis. May 23, 2011) (denying
`stay where “the issues subject to review in that [ITC] proceeding are not the same as those
`here”).
`
`Even if a stay is maintained for the ’641 patent, the Court should still lift the stay of the
`remaining eleven patents to address Caterpillar’s ongoing infringement. First, as explained
`above, Caterpillar is wrong that any “further proceedings” could address the ’309, ’530, ’628,
`and/or ’340 patents. Second, maintaining the stay will irreparably harm Wirtgen. Caterpillar has
`moved manufacturing to Arkansas to circumvent the ITC exclusion order and has begun
`marketing and selling other infringing products in the U.S. since the filing of the ITC and district
`court complaints. Caterpillar’s aggressive pricing practices for these machines are causing
`Wirtgen lost market share and price erosion. Third, maintaining the stay will not simplify the
`issues in question and trial of the case because nothing about the remand impacts any issues
`before this Court. Considering that changed circumstances are irreparably harming Wirtgen,
`fairness dictates that the Court should lift the stay and permit Wirtgen to pursue relief. In the
`alternative, the Court should lift the stay as to the remaining eleven patents-in-suit. See Align
`Tech., Inc. v. 3Shape A/S, Nos. 17-1646, 17-1647, 2018 WL 4292675, at *2-3 (D. Del. Sept. 7,
`2018) (granting mandatory stay but denying discretionary stay as to non-overlapping patents).
`Otherwise, Caterpillar will unduly benefit and Wirtgen will be unjustly prejudiced by a further
`
`

`

`Case 1:17-cv-00770-RGA Document 24 Filed 05/14/21 Page 3 of 4 PageID #: 2303
`
`Young Conaway Stargatt & Taylor, LLP
`The Honorable Richard G. Andrews
`May 14, 2021
`Page 3
`
`delay in a resolution of the case before this Court.
`
`Caterpillar’s Position
`The stay in this case relating to five of the twelve asserted patents is mandatory and
`cannot be lifted until the corresponding ITC action is final and no longer appealable. When a
`party in a civil action who is also a party in a parallel ITC investigation timely requests a district
`court stay (as occurred here), the district court “shall” stay the case “until the determination of
`the [ITC] becomes final.” 28 U.S.C. § 1659(a). Accordingly, this Court properly stayed this
`case “in its entirety” until the parallel ITC investigation is “final and no longer subject to judicial
`review.” D.I. 9 (adopting verbatim the language from the draft order that the parties jointly
`proposed (D.I. 7-2)). Here, the stay cannot be lifted because the corresponding ITC Investigation
`is not yet final. The Federal Circuit specifically “remanded [the case] for further proceedings.”
`Caterpillar Prodotti Stradali S.R.L. v. ITC, No. 2019-2445, -1911, slip op. at 14 (Fed. Cir. Mar.
`15, 2021) (emphasis added). Those “further proceedings” may include supplemental briefing
`requested by the ITC, see, e.g., ITC Investigation Nos. 337-TA-1000, -854, -1008, -971, or they
`could include a remand to the ALJ to reevaluate the evidence and issue a Remand Initial
`Determination, see, e.g., ITC Investigation Nos. 337-TA-936, -562, -613, -750. At this point, the
`ITC has not yet indicated how it intends to handle the remand proceedings, and Wirtgen’s
`attempt to predict what the ITC will do is nothing more than wishful thinking.
`
`Moreover, even if the ITC were to grant a new exclusion order directed to the ’641 patent
`(as Wirtgen predicts will happen), every exclusion order is subject to a mandatory presidential
`review period, during which the president’s trade representative can revoke or modify the
`exclusion as a matter of right. 19 U.S.C. § 1337(j)(2). Thus, by statute, an ITC determination
`only “become[s] final” after the president approves the determination or the review period
`expires. 19 U.S.C. § 1337(j)(4).
`
`Furthermore, even after the presidential review period expires, the ITC proceeding still
`would not be final because Caterpillar would have a right to appeal all issues not previously
`appealable, including invalidity of the ’641 patent. In its previous appeal to the Federal Circuit,
`where Caterpillar was the prevailing party on the ’641 patent, it had no standing to appeal any of
`the ITC’s rulings on the ’641 patent. Typeright Keyboard Corp. v. Microsoft Corp., 374 F.3d
`1151, 1156-57 (Fed. Cir. 2004). If the ITC were to issue a Remand Final Determination adverse
`to Caterpillar on the ’641 patent, Caterpillar would have the right to appeal these previously
`unappealable issues. Amgen Inc. v. F. Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1351-52 (Fed.
`Cir. 2009).
`
`For all these reasons, it is beyond dispute that that the ITC’s proceedings are not yet final
`and, accordingly, the stay in this case relating to five of the twelve asserted patents must remain
`in place. See 28 U.S.C. § 1659(a) (using the mandatory word “shall”). To the extent Wirtgen
`seeks to have the stay partially lifted only as to the seven patents not at issue in the ITC,
`Caterpillar would oppose this request as inefficient and wasteful of judicial resources.1 Absent a
`
`
`1 Of those seven other patents, three are from the same patent families as patents asserted
`by Wirtgen in the ITC action (U.S. Patent No. 8,118,316 is in the same family as U.S. Patent No.
`
`

`

`Case 1:17-cv-00770-RGA Document 24 Filed 05/14/21 Page 4 of 4 PageID #: 2304
`
`Young Conaway Stargatt & Taylor, LLP
`The Honorable Richard G. Andrews
`May 14, 2021
`Page 4
`
`stay, the Court would need to “‘hold status conferences and hearings and address discovery
`disputes only to be faced with many of these same issues after the [ITC-related mandatory] stay
`is lifted’”. Graphic Props. Holdings, Inc. v. Toshiba Am. Info., Sys., Inc., No. CV 12-213-LPS,
`2014 WL 923314, at *2 (D. Del. Mar. 5, 2014).
`
`
`
`Respectfully submitted,
`
`/s/ Adam W. Poff
`
`Adam W. Poff (No. 3990)
`
`AWP
`cc: All Counsel of Record via e-mail
`
`
`
`
`
`7,828,309, and U.S. Patent Nos. 8,113,592 and 9,010,871 are in the same family as U.S. Patent
`No. 9,656,530). There is only one patent family (which includes four patents) that Wirtgen did
`not assert in the ITC action. Notably, one of those four patents has already been held
`unpatentable in its entirety by the Patent Trial and Appeal Board. Caterpillar Inc. v. Wirtgen
`Am., Inc., No. IPR2018-01091 (P.T.A.B. Nov. 27, 2019).
`
`