Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 1 of 447 PageID #: 26342
`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 1 of 447 PagelD #: 26342
`
`EXHIBIT 44
`EXHIBIT 44
`
`

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`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 2 of 447 PageID #: 26343
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`PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`In the Matter of
`
`CERTAIN ROAD MILLING
`MACHINES AND COMPONENTS
`- THEREOF
`
`Inv. No. 337-TA-1067
`
`FINAL INITIAL DETERMINATION
`
`Administrative Law Judge David P. Shaw
`
`Pursuant to the notice of investigation, 82 Fed. Reg. 40595 (Aug. 25, 2017), this is the
`
`initial determination in Certain Road Milling Machines and Components Thereof, United States
`
`International Trade Commission Investigation No. 337-TA-1067. It is held that a violation of
`
`section 337 of the Tariff Act, as amended, has occurred in the importation into the United States,
`
`the sale for importation, or the sale within the United States after importation, of certain road
`
`milling machines and components thereof, with respect to U.S. Patent Nos. 7,828,309 and
`
`9,656,530. It is held that a violation has not occurred with respect to U.S. Patent Nos. 7,530,641
`
`and 9,644,340.
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`

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`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 3 of 447 PageID #: 26344
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`PUBLIC VERSION
`
`Table of Contents
`
`II.
`
`III.
`
`Table of Abbreviations
`Background
`I.
`Institution of the Investigation
`A.
`Procedural History
`B.
`The Private Parties
`C.
`D.
`The Accused Products
`The Domestic Industry Products
`E.
`Technological Background
`F.
`Jurisdiction and Standing
`Personal and Subject Matter Jurisdiction
`A.
`In Rem Jurisdiction
`B.
`The Importation Requirement
`C.
`Standing
`D.
`General Principles of Law
`Claim Construction
`A.
`Infringement
`B.
` Validity
`C.
`Domestic Industry
`D.
`U.S. Patent No. 7,828,309
`Overview of the `309 Patent (JX-0005)
`A.
`Claim Construction
`B.
`Infringement
`C.
`Domestic Industry (Technical Prong)
`D.
`Obviousness — Swisher and Neumeier
`E.
`Obviousness — Swisher, Neumeier, and Frey
`F.
`Obviousness — Secondary Considerations
`G.
`U.S. Patent No. 7,530,641
`Overview of the `641 Patent (JX-0004)
`A.
`Claim Construction
`B.
`Infringement
`C.
`Domestic Industry (Technical Prong)
`D.
`Anticipation — PM-565
`E.
`
`IV.
`
`V.
`
`iv
`1
`1
`2
`5
`7
`9
`12
`14
`14
`15
`15
`24
`28
`28
`30
`34
`39
`41
`41
`44
`55
`81
`94
`120
`130
`137
`137
`139
`153
`176
`190
`
`

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`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 4 of 447 PageID #: 26345
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`PUBLIC VERSION
`
`F.
`G.
`
`H.
`
`VI.
`
`Anticipation — PM-465
`Obviousness — "PM-565 combined with the
`knowledge of a POSITA and/or PM-465"
`Obviousness — "PM 465 alone and in combination
`with the knowledge of a POSITA"
`Obviousness — Secondary Considerations
`I.
`U.S. Patent No. 9,644,340
`Overview of the `340 Patent (JX-0001)
`A.
`Claim Construction
`B.
`C.
`Infringement
`Domestic Industry — Technical Prong
`D.
`Obviousness — Marini MP 1300
`E.
`Obviousness — Marini MP 1300 in View of Overton
`F.
`Obviousness — PM-565
`G.
`Obviousness — PM-565 in View of Overton
`H.
`Obviousness — "combination of the PM-565 with MP 1300"
`I.
`Obviousness — Secondary. Considerations
`J.
`VII. - U.S. Patent No. 9,656,530
`Overview of the `530 Patent (JX-0003)
`A.
`Claim Construction
`B.
`Infringement
`C.
`Domestic Industry (Technical Prong)
`D.
`Obviousness — "Roadtec RX-500 (alone . . . ),
`E.
`in combination with Davis"
`Obviousness — "Roadtec RX-500 (. . . in view of Glasson),
`in combination with Davis"
`Obviousness — "Roadtec RX-500 (alone or in view of Glasson),
`in combination with Davis and Hosseini"
`Obviousness — "Obvious over Roadtec RX-500
`(alone or in view of Glasson)" (without Davis)
`Obviousness - "Swisher in Combination With Glasson"
`I.
`Obviousness — "Swisher in Combination With Glasson and Hosseini"
`J.
`Obviousness — "Swisher in Combination With Glasson and Davis"
`K.
`Obviousness — Secondary Considerations
`L.
`Indefiniteness
`M.
`VIII. Domestic Industry — Economic Prong
`
`F.
`
`G.
`
`H.
`
`• ii
`
`208
`
`225
`
`237
`242
`247
`247
`250
`254
`272
`285
`310
`316
`335
`339
`340
`343
`343
`346
`351
`366
`
`370
`
`388
`
`391
`
`395
`399
`410
`412
`416
`423
`424
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`

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`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 5 of 447 PageID #: 26346
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`PUBLIC VERSION
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`Investment in Plant and Equipment
`A.
`Labor or Capital
`B.
`Conclusions of Fact and Law
`Order Concerning Proposed Redactions for Public Version
`Initial Determination on Violation
`
`IX.
`X.
`XI.
`
`425
`429
`435
`438
`439
`
`iii
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`

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`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 6 of 447 PageID #: 26347
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`PUBLIC VERSION
`
`Table of Abbreviations
`
`The following abbreviations may be used in this Initial Determination:
`
`ABBREVIATION
`
`FULL WORD 012 l) 1 I R kSE
`
`_.
`
`All
`
`CDX
`
`CPX
`
`CX
`
`-
`
`Dep.
`
`EDIS
`
`Enf.
`
`JPX
`
`JX
`
`RDX
`
`RPX
`
`RWS
`
`RX
`
`Tr.
`
`WS
`
`Administrative Law Judge
`
`Complainant's Demonstrative Exhibit
`
`Complainant's Physical Exhibit
`
`Complainant's Exhibit
`
`Deposition
`
`Electronic Document Imaging System
`
`Enforcement Proceeding
`
`Joint Physical Exhibit
`
`Joint Exhibit
`
`Respondent's Demonstrative Exhibit
`
`Respondent's Physical Exhibit
`
`Rebuttal Witness Statement
`
`Respondent's Exhibit
`
`Transcript
`
`Witness Statement
`
`1V
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`

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`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 7 of 447 PageID #: 26348
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`PUBLIC VERSION
`
`I.
`
`Background
`
`A.
`
`Institution of the Investigation
`
`On July 19, 2017, complainant Wirtgen America, Inc. ("Wirtgen" or "Wirtgen America,"
`
`depending on the context) filed a complaint alleging that the Caterpillar respondents unlawfully
`
`import "certain road milling machines and components thereof[.]" Compl., ¶ 2. The complaint
`
`asserted the following five patents:
`
`• U.S. Patent No. 7,530,641 (the "`641 Patent") (JX-0004);
`
`• U.S. Patent No. 7,828,309 (the "309 Patent") (JX-0005);
`
`• U.S. Patent No. 9,624,628 (the '628 Patent");
`
`• U.S. Patent No. 9,644,340 (the "340 Patent") (JX-0001); and
`
`• U.S. Patent No. 9,656,530 (the "530 Patent") (JX-0003).
`
`Id.
`
`By publication of a notice in the Federal Register on August 25, 2017, pursuant to
`
`subsection (b) of section 337 of the Tariff Act of 1930, as amended, the Commission instituted
`
`this investigation to determine:
`
`[W]hether there is a violation of subsection (a)(1)(B) of section 337
`in the importation into the United States, the sale for importation, or
`the sale within the United States after importation of certain road
`milling machines and components thereof by reason of infringement
`of one or more of claims 1-5, 7-12, and 14-17 of the `340 patent;
`claims 1, 2, 5, 6, 9-22, and 27-29 of the `628 patent; claims 1-7,
`13-24, and 26 of the `530 patent; claims 1, 2, 4, 6—8, 11, 12, and 15-
`17 of the `641 patent; and claims 1-3, 5-24, and 26-36 of the `309
`patent; and whether an industry in the United States exists as
`required by subsection (a)(2) of section 337;
`
`82 Fed. Reg. 40595 (Aug. 25, 2017). The Commission did not direct the administrative law
`
`judge to take evidence or hear argument regarding the public interest. See id.; 19 C.F.R.
`
`§ 210.50(b)(1).
`
`1
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 8 of 447 PageID #: 26349
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`PUBLIC VERSION
`
`The Commission named Wirtgen America, Inc. as complainant. The Commission named
`
`Caterpillar Bitelli SpA, Caterpillar Prodotti Stradali S.r.L., Caterpillar Americas CV, Caterpillar
`
`Paving Products, Inc., and Caterpillar Inc. as respondents. The Office of Unfair Import
`
`Investigations ("Staff') was also named a party to the investigation, although the Staff later
`
`withdrew from the investigation.
`
`B.
`
`Procedural History
`
`The administrative law judge issued the procedural schedule on October 5, 2017. See
`
`Order No. 6 (Procedural Schedule). The procedural schedule set a target date of December 26,
`
`2018, which is approximately 16 months after institution. Id.; see also Order No. 4 (Setting
`
`Target Date); 19 C.F.R. § 210.51(a); 19 C.F.R. § 210.42(a)(1)(i); 19 C.F.R. § 201.14(a).
`
`In accordance with the procedural schedule, the parties filed initial claim construction
`
`briefs in December 2017, reply claim construction briefs in January 2018, and supplemental
`
`briefs in March 2018. See Order No. 6 (Procedural Schedule); Order No. 14 (granting joint
`
`motion to amend the procedural schedule).
`
`On October, 31, 2017, the Staff filed a "Notice of Non-Participation" that stated "OUII
`
`will cease to participate" in the investigation.
`
`On December 4, 2017, Wirtgen filed an unopposed motion seeking to terminate
`
`respondent Caterpillar Bitelli SpA based on the withdrawal of the complaint as to that
`
`respondent. The administrative law judge granted the motion in an initial determination, which
`
`issued on December 19, 2107. See Order No. 11 (initial determination not reviewed per.
`
`Commission Notice (EDIS Doc. ID No. 634173)).
`
`2
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`

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`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 9 of 447 PageID #: 26350
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`PUBLIC VERSION
`
`On December 5, 2017, Wirtgen filed a motion seeking a summary determination that it
`
`has satisfied the economic prong of the domestic industry requirement. The administrative law
`
`judge denied Wirtgen's motion on January 19, 2018. See Order No. 16.
`
`On January 29, 2018, Wirtgen filed an unopposed motion seeking to terminate the
`
`investigation as to multiple claims from the `340, `628, `530, `309, and `641 Patents. The
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`admithstrative law judge granted the motion in an initial determination, which issued on
`
`February 5, 2018. See Order No. 20 (initial determination not reviewed per Commission Notice
`
`(EDIS Doc. ID No. 638181)).
`
`On January 23, 2018, Wirtgen filed a motion seeking a summary determination that it has
`
`met the importation requirement. The administrative law judge granted Wirtgen's motion in
`
`part. See Order No. 23 (initial determination not reviewed per Commission Notice (EDIS Doc.
`
`ID No. 639371)). The initial determination held "that Wirtgen has shown Caterpillar Paving,
`
`Caterpillar Prodotti, and Caterpillar Inc. have met the importation requirement" in relation to the
`
`PM312, PM620, PM622, PM820, PM822 and PM825 cold planers. Id. at 14-18. The initial
`
`determination further held that the importation requirement had not been met with respect to
`
`products that contain the so-called 2018 product updates. Id. at 19.
`
`On February 16, 2018, Caterpillar filed a motion seeking summary determination that its
`
`2018 Product Updates to the PM600 and PM800 series road milling machines do not infringe the
`
``309, `340, and `628 Patents. See Order No. 26 (March 29, 2018). The administrative law judge
`
`declined to adjudicate the 2018 product updates on summary determination, as Caterpillar failed
`
`to show that it was entitled to a summary determination as a matter of law that the 2018 product
`
`updates do not infringe the `309, `340, and `628 Patents. Id. at 3.
`
`3
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`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 10 of 447 PageID #: 26351
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`PUBLIC VERSION
`
`On March 14, 2018, Wirtgen filed an unopposed motion seeking to terminate the
`
`investigation as to multiple claims from the `340, `628, `530, `309, and `641 Patents. The
`
`administrative law judge granted the motion in an initial determination, which issued on March
`
`15, 2018. See Order No. 28 (initial determination not reviewed per Commission Notice (EDIS
`
`Doc. ID No. 641964)).
`
`On March 14, 2018, Wirtgen filed an unopposed motion seeking to terminate the
`
`investigation as to the `628 Patent. The administrative law judge granted the motion in an initial
`
`determination, which issued on March 27, 2018. See Order No. 30 (initial determination not
`
`reviewed per Commission Notice (EDIS Doc. ID No. 643454)).
`
`A prehearing conference was held on April 20, 2018, with the evidentiary hearing
`
`beginning immediately thereafter. See, e.g., Prehearing Tr. (Apr. 20, 2018); Order No. 32
`
`(Allocation of Hearing Time). The hearing concluded on April 24, 2018. See, e.g., Tr. 939-940.
`
`The parties were requested to file post-hearing briefs not to exceed 300 pages, and to file reply
`
`briefs not to exceed 100 pages. See Pre-Hr'g Tr. 6.
`
`On May 11, 2018, Wirtgen filed its post-hearing brief, which asserts the following
`
`claims:
`
`• Claims 4, 5, 9, and 12 of the `340 Patent;
`
`• Claims 2, 5, 16, and 23 of the `530 Patent;
`
`• Claims 1, 7, 11, and 17 of the `641 Patent; and
`
`• Claims 10, 29, and 36 of the `309 Patent.
`
`See Wirtgen Br. at 11.
`
`4
`
`

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`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 11 of 447 PageID #: 26352
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`PUBLIC VERSION
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`Pursuant to Order No. 2 (Ground Rules), the parties also submitted a joint outline of the
`
`issues to be decided in the Final Initial Determination. See Joint Outline of Issues to Be Decided
`
`(EDIS Doc. ID No. 644951) ("Joint Outline").
`
`On August 9, 2018, the administrative law judge issued an initial determination, extending
`
`the target date to February 1, 2019. See Initial Determination (Aug. 9, 2018) (not reviewed per
`
`Commission Notice dated Aug. 30, 2018).
`
`C.
`
`The Private Parties
`
`1.
`
`Complainant and Related Entities
`
`a)
`
`Wirtgen
`
`Complainant Wirtgen America, Inc. ("Wirtgen" or "Wirtgen America") is a privately
`
`held Tennessee corporation, with a principal place of business at 6030 Dana Way, Antioch,
`
`Tennessee 37013-3116. Compl., ¶ 15.
`
`b)
`
`Wirtgen GmbH and Wirtgen Group
`
`Wirtgen's complaint, pre-hearing brief, post-hearing brief, and post-hearing reply
`
`mention two Wirtgen-related entities, Wirtgen GmbH and Wirtgen Group, which both reside in
`
`Germany. Wirtgen does not provide much detail about these entities.
`
`Caterpillar argues that Wirtgen GmbH and Wirtgen Group are largely responsible for
`
`"designing, developing, manufacturing, servicing, and supporting the domestic industry
`
`products." Caterpillar Br. at 285. The parties do not dispute that the asserted patents were
`
`originally assigned to Wirtgen GmbH and that Wirtgen GmbH assigned the asserted patents to
`
`Wirtgen America in May 2017, before Wirtgen America filed the complaint. See generally JX-
`
`0011 (assignment for the `340 Patent); JX-0013 (assignment for the `530 Patent); JX-0014
`
`(assignment for the `641 Patent); JX-0015 (assignment for the `309 Patent).
`
`5
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 12 of 447 PageID #: 26353
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`PUBLIC VERSION
`
`c)
`
`Deere & Company
`
`Deere & Company (i.e., John Deere) acquired the Wirtgen Group in 2017. See, e.g., RX-
`
`0408C; Order No. 22 (granting motion to quash subpoena served on Deere). Apart from
`
`opposing a subpoena, Deere did not participate in the investigation. See, e.g., Order No. 22.
`
`2.
`
`Respondents
`
`a)
`
`The "Caterpillar" Respondents
`
`"Caterpillar" collectively refers to respondents Caterpillar Prodotti Stradali S.r.L.,
`
`Caterpillar Americas CV, Caterpillar Paving Products, Inc., and Caterpillar Inc.
`
`b)
`
`Caterpillar Bitelli SpA
`
`Caterpillar's Response to the Complaint stated that "Caterpillar Bitelli does not, exist as a
`
`legal entity" and disputed that Caterpillar Bitelli SpA was a proper respondent. Resp. at 2-3.
`
`Caterpillar Bitelli SpA was terminated from the investigation on December 19, 2107. See Order
`
`No. 11 (initial determination not reviewed per Commission Notice (EDIS Doc. ID No. 634173)).
`
`c)
`
`Caterpillar Prodotti Stradali S.r.L.
`
`Caterpillar Prodotti Stradali S.r.L. ("Caterpillar Prodotti") is an Italian corporation with a
`
`principal place of business at Via IV Novembre, 2, I-40061 Minerbio BO, Italy. Resp. to the
`
`Compl. at 12-13.
`
`d)
`
`Caterpillar Americas CV
`
`Caterpillar Americas CV ("Caterpillar Americas") is a Swiss corporation- with a principal
`
`place of business at 76 Route de Frontenex, Boite Postale 6000, 1211 Geneva Switzerland.
`
`Resp. to the Compl. at 13.
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 13 of 447 PageID #: 26354
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`PUBLIC VERSION
`
`e)
`
`Caterpillar Paving Products, Inc.
`
`Caterpillar Paving Products, Inc. ("Caterpillar Paving Products") is an Oklahoma
`
`corporation with a principal place of business at 8401 85th Avenue North, Minneapolis,
`
`Minnesota 55445. Resp. to the Compl. at 13.
`
`.1)
`
`Caterpillar Inc.
`
`Caterpillar Inc. is a Delaware corporation with its principal place of business at 100 NE
`
`Adams Street, Peoria, Illinois 61629. Resp. to the Compl. at 13. Caterpillar Inc. is the parent
`
`company of Caterpillar Prodotti, Caterpillar Americas CV, and Caterpillar Paving Products, Inc.
`
`D.
`
`The Accused Products
`
`1.
`
`Overview
`
`The accused products are cold planers, which are large machines that remove pavement.
`
`CX-0062C features the following image of the PM620 cold planer:
`
`w.
`
`•••••••0.1Ile•"""
`
`al
`
`7
`
`CX-0062.0007.
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 14 of 447 PageID #: 26355
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`PUBLIC VERSION
`
`Wirtgen accuses Caterpillar's PM600 Series (e.g., the PM620 and PM622 models) and
`
`PM800 Series (e.g., the PM820, PM822, and PM825 models) cold planer machines of infringing
`
`the asserted claims from the asserted patents. Wirtgen Br. at 14. Wirtgen further accuses
`
`Caterpillar's PM300 Series (e.g., the PM310, PM312, and PM313 models) cold planer machines
`
`of infringing the asserted claims of the `641 Patent. Id. Wirtgen submits that the parties have
`
`agreed that the PM620 model "is representative of the PM622 model and PM800 Series products
`
`for purposes of infringement." Id. (citing JX-0017C (Representative Accused Products
`
`Stipulation)). Wirtgen also submits that the PM312 model is representative of the PM310 and
`
`PM313 models. Id. As discussed below, the administrative law judge has determined that the
`
`PM620 model is representative of the PM600 Series and PM800 Series products, and that the
`
`PM312 model is representative of the PM300 Series products.
`
`2.
`
`Products Imported "on or before December 31, 2017"
`
`Wirtgen and Caterpillar filed a stipulation agreeing that the PM620 model is
`
`representative of the PM600 and PM800 series products and that the PM312 model is
`
`representative of the PM300 series products "imported on or before December 31, 2017." JX-
`
`0017C at 1-3.
`
`3.
`
`Products Imported "after December 31, 2017" — the So-Called "2018
`Product Updates"
`
`Caterpillar argues that it has modified portions of the PM600 and PM800 series products;
`
`Caterpillar refers to the modified products as the "2018 Product Updates." Caterpillar argues:
`
`The parties dispute whether, for the `340 and `309 patents, the
`PM620 Model may be representative of all machines imported after
`December 31, 2017. Id. Caterpillar has developed 2018 Product
`Updates for the PM600 and PM800 Series of Cold Planers (the
`to the alleged
`"2018 Product Update Machines") relevant
`infringement of these two patents. See Caterpillar's Motion for
`Partial Summary Determination of Noninfringement (Feb. 16,
`
`8
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 15 of 447 PageID #: 26356
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`PUBLIC VERSION
`
`2018), EDIS Doc. ID 636793; RX-0993C (Engelmann Rebuttal
`Witness Statement) at Q/A 4-5. Relevant to the `340 patent, the
`2018 Product Update Machines [
`
`]. Id. at Q/A
`8; RX-0990C (Fronczak Rebuttal Witness Statement) at Q/A 64.
`And relevant to the `309 patent, the 2018 Product Update Machines
`].
`RX-0993C at Q/A 17-18; RX-0991C (Alleyne Rebuttal Witness
`Statement) at Q/A 385-386.
`
`Caterpillar Br. at 7.1
`
`The administrative law judge addresses the 2018 products in the subsequent analysis. See
`
`Part II(C)(4), infra.
`
`E.
`
`The Domestic Industry Products
`
`Wirtgen introduces its products as follows:
`
`There are sixteen models of domestic-industry products ("the DI
`Products") that can be grouped by three size categories: small,
`compact, or large. CX-0002C (Schmidt WS) Q25-28; CX-0010C
`(Allen WS) Q10. The small DI machines include the W50Ri and
`W60Ri (corresponding to series 1505). The compact machines
`include the W100Ri, W120Ri, W100Fi, W120Fi, W100CFi,
`W120CFi, W130CFi, W150i, and W150CFi models (corresponding
`to series 1610, 1310, 1810, 0613, and 0813). Finally, the large
`machines include the W200i, W210i, W220, W220i, and W250i
`models (corresponding to series 1420, 1520, 0522, 0722, and 0622).
`CX-0002C (Schmidt WS) Q25-28. These models are sometimes
`referred to by Series Number, as summarized below.
`
`1 NVirtgen Model No.
`
`Wirtgen Series N.
`
`W200i
`
`W210i
`
`W220
`
`W220i
`
`W250i
`
`W50Ri
`
`1420
`
`1520
`
`0522
`
`0722
`
`0622
`
`1505
`
`1 Any emphasis from the parties' briefs is generally omitted in this initial determination.
`
`9
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 16 of 447 PageID #: 26357
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`PUBLIC VERSION
`
`WArtgen Model No.
`
`W'irtgen Series N.
`
`W60Ri
`
`W100Ri
`
`W120Ri
`
`W100Fi
`
`W120Fi
`
`W100CFi
`
`W120CFi
`
`W130CFi
`
`W150i
`
`W150CFi
`
`1610
`
`1310
`
`1810
`
`0613
`
`0813
`
`The different model numbers relate to the size of the milling drum,
`and the suffixes after the model number relate to certain attributes
`of the machines that differ between the same model number. For
`instance, the suffix "i" denotes a model with a "Tier four final"
`engine (specifying that it meets certain emissions criteria). The "R"
`and "F" suffixes indicate the direction of the conveyor—whether it
`is a rear-facing conveyer (R) or a front-facing conveyer (F). The
`final suffix, in the DI Products, "CFi," denotes a compact front-load
`machine, or a front-load machine that has tracks instead of wheels,
`as other smaller cold-milling machines do.
`
`The DI products that practice various claims of the Asserted Patents
`are summarized below.
`
`Asserted Patent
`
`DI Claims
`
`DI Products
`
``340 Patent
`(Improved Pivoting Scraper)
`
`4, 5, 9, 12
`
``641 Patent
`(Safely Driving Backward)
`
`1, 7, 11, 17
`
``530 Patent
`(Intelligent Leg Control)
`
`2, 5, 16, 18, 23
`
`10
`
`W200i, W210i, W220, W220i,
`W250i, W150i, W150CFi
`
`W200i, W210i, W220, W220i,
`W250i, W5ORi, W60Ri,
`W100Ri, W120Ri, W100Fi,
`W120Fi, W100CFi, W120CFi,
`W130CFi, W150i, W150CFi
`
`W200i, W210i, W220, W220i,
`W250i, W5ORi, W60Ri,
`W100Ri, W120Ri, W100Fi,
`W120Fi, W100CFi, W120CFi,
`W130CFi, W150i, W150CFi
`
`

`

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`
`PUBLIC VERSION
`
``309 Patent
`(Four-Way Floating Axle)
`
`10, 29
`
`W200i, W210i, W220, W220i,
`W250i, W150i, W150CFi
`
`Wirtgen Br. at 15-16.
`
`Caterpillar introduces Wirtgen's machines as follows:
`
`In the Complaint, Wirtgen identified three categories of Domestic
`Articles: 1) Large Milling Machines; 2) Small Milling Machines;
`and 3) Compact Milling Machines. Compl. at ¶ 94. On October 27,
`2017, Wirtgen filed its Identification of Products on Which It Will
`Rely to Satisfy the Domestic Industry Requirement. In relevant part,
`Wirtgen identified the following machines for each of the Asserted
`Patents: 1) the `340 patent— W200i, W210i, W220, W220i, W250i,
`W150i, W150CFi; 2) the `530 patent— W200i, W200Hi, W210i,
`W220, W220i, W250i, W50Ri, W60Ri, W100Ri, W120Ri,
`W100Fi, W120Fi, W100CFi, W120CFi, W130CFi, W150i,
`W150CFi; 3) the `641 patent— W200i, W200Hi, W210i, W220,
`W220i, W250i, W50, W50DCi, W50Ri, W60Ri, W60i, W100i,
`W100Ri, W120Ri, W100Fi, W120Fi, W100CFi, W120CFi,
`W130CFi, W150i, W150CFi; and 4) the `309 patent— W200i,
`W200Hi, W210i, W220, W220i, W250i, W150i, W150CFi.
`
`On January 29, the parties submitted a Stipulation Regarding
`products.
`JX-0019
`Industry
`Representative Domestic
`(Representative DI Products Stipulation). For the technical prong
`of the domestic industry requirement, the parties agreed that for each
`of the `340 and `309 patents: 1) the W150 CFi is representative of
`the W150i, and 2) the W210i is representative of the W200i, W220,
`W220i, and W250i. JX-0019.0002. The parties did not reach an
`agreement on representative machines for the purposes of the `530
`and `641 patents.
`
`Caterpillar Br. at 9-10.2 As discussed below, the administrative law judge has determined that:
`
`• For the `309 and `340 Patents, the W150CFi model is representative of the W150i
`and W150CFi models; and the W210i model is representative of the W200i,
`W220; W220i, and W250i models.
`
`For the `641 Patent, the W100Ri/W120Ri models are representative of the
`W50Ri, W60Ri, W100Fi, W120Fi, W100CFi, W120CFi, and W130CFi models;
`
`2 For the `530 and `641 Patents, Caterpillar fails to present any argument that the machines that
`Wirtgen identified are not representative.
`
`11
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 18 of 447 PageID #: 26359
`
`PUBLIC VERSION
`
`the W150CFi model is representative of the W150i and W150CFi models; and the
`W210i model is representative of the W200i, W220, W220i, and W250i models.
`
`,For the `530 Patent, the W120Ri model is representative of the W50Ri W60Ri,
`W100Fi, W120Fi, W100CFi, W120CFi, W130CFi, W100Ri, and W120Ri
`models; the W150CFi model is representative of the W150i and W150CFi
`models; and the W210i model is representative of the. W200i, W210i, W220,
`W220i, and W250i models.
`
`F.
`
`Technological Background
`
`The parties submitted a joint technology stipulation on January 23, 2019, which was
`
`received into the record as JX-0018. The technology stipulation provides the following images
`
`and explanation:
`
`The Asserted Patents relate to machines used in road construction,
`including road milling machines.
`
`•
`
`I
`
`Road milling machines are also referred to as cold planers. Road
`milling machines have a rotating milling drum (also referred to as a
`rotor) that removes or "mills" existing pavement.
`
`12
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 19 of 447 PageID #: 26360
`
`PUBLIC VERSION
`
`ssy
`
`p
`
`A ' —•—••• •
`-
`
`F.
`
`1
`
`As the drum rotates, spike-like cutting tools (also referred to as bits)
`on the drum grind the pavement into millings. The drum is enclosed
`in a housing (also referred to as a casing or chamber) that contains
`these millings.
`
`'AT lira.
`
`sap s •
`
`Plir NW
`
`•
`
`•
`w
`
`Within the housing, the millings are directed toward a conveyor that
`deposits the millings into a nearby truck.
`
`13
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 20 of 447 PageID #: 26361
`
`PUBLIC VERSION
`
`Height-adjustable legs elevate the milling machine's body above the
`ground surface. The legs are connected to propulsion units that
`move the machine forward and backwards.
`
`The `340 patent is directed to the scraper (also referred to as the rear
`door or drum flap) that forms the rear of the housing enclosing the
`milling drum. The `628 patent is directed to an auxiliary drive for
`rotating the milling drum. The `641 patent is directed to traveling
`backwards while the engine rotates the milling drum. And the `530
`and `309 patents are directed to the height-adjustable legs.
`
`JX-0018 at 2-3.
`
`II.
`
`Jurisdiction and Standing
`
`A.
`
`Personal and Subject Matter Jurisdiction
`
`No party has contested the Commission's personal or subject matter jurisdiction in this
`
`investigation. See Wirtgen Br. at 16; Caterpillar Br. at 10 ("Caterpillar does not contest the
`
`subject matter jurisdiction or personal jurisdiction of the Commission to adjudicate this
`
`Investigation.").
`
`Wirtgen has filed a complaint alleging a violation of section 337, and the Commission,
`
`therefore, has subject matter jurisdiction. See Amgen, Inc. v. United States Int'l Trade Comm'n,
`
`902 F.2d 1532, 1535-37 (Fed. Cir. 1990).
`
`In addition, Wirtgen and Caterpillar have appeared and participated in the investigation.
`
`The Commission, therefore, has personal jurisdiction over the parties. See, e.g.; Certain Liquid
`
`Crystal Display Modules, Products Containing Same, and Methods for Using the Same, Inv. No.
`
`337-TA-634, Final Initial and Recommended Determinations at 3 (June 12, 2009) (relevant part
`
`adopted by Commission Opinion issued July 22, 2011).3
`
`3 The Commission "adopt[ed] all of the ALF s findings and conclusions that are not inconsistent
`with [its] opinion." Comm'n Op. at 35.
`
`14
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 21 of 447 PageID #: 26362
`
`PUBLIC VERSION
`
`B.
`
`In Rem Jurisdiction
`
`The Commission has in rem jurisdiction when infringing articles are imported, sold for
`
`importation, or sold within the United States after importation by the owner, importer, or
`
`consignee. 19 U.S.C. § 1337(a)(1)(B). "All that is required for in rem jurisdiction to be
`
`established is the presence of the imported property in the United States." Certain Male
`
`Prophylactic Devices, Inv. No. 337-TA-546, Initial Determination (June 30, 2006) (citing
`
`Certain Steel Rod Treating Apparatus and Components Thereof, Inv. No. 337-TA-97, USITC
`
`Pub. No. 1210 (Jan. 1982), Commission Opinion at 4, 11 for the proposition that presence of res
`
`establishes in rem jurisdiction in Section 337 actions).
`
`As discussed below, there is no dispute that the accused products—excluding the 2018
`
`Product Updates—are manufactured abroad and imported into the United States. The
`
`Commission does not have jurisdiction over the 2018 Product Updates because Caterpillar has
`
`not imported machines including the updates into the United States. Accordingly, the
`
`administrative law judge has determined that the Commission has in rem jurisdiction over the
`
`accused products, but not machines that include the 2018 Product Updates.
`
`C.
`
`The Importation Requirement
`
`Section 337 of the Tariff Act makes unlawful, in certain circumstances, the "importation
`
`into the United States, the sale for importation, or the sale within the United States after
`
`importation by the owner, importer, or consignee, of articles" that infringe a U.S. patent. 19
`
`U.S.C. § 1337(a)(1)(B). Prior decisions have referred to subsection (a)(1)(B) of the statute as the
`
`"Importation Requirement." Accord Certain Products Containing Interactive Program Guide
`
`and Parental Control Technology, Inv. No. 337-TA-845, Comm'n Op. at 1 (Dec. 11, 2013);
`
`Certain Toner Cartridges & Components Thereof, Inv. No. 337-TA-918, Notice of
`
`15
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 22 of 447 PageID #: 26363
`
`PUBLIC VERSION
`
`Determination Not to Review Two Initial Determinations; One Regarding the Importation
`
`Requirement; and the Other Regarding the Economic Prong of the Domestic Industry
`
`Requirement (Feb. 18, 2015) (EDIS Doc. ID No. 551684, 2015 WL 13662634).
`
`1.
`
`PM312, PM620; PM622, PM820, PM822, and PM825
`
`a)
`
`Caterpillar Paving
`
`Order No. 23 (Initial Determination) determined that Caterpillar Paving has imported into
`
`the United States the following products:
`
`1)
`
`2)
`
`3)
`
`4)
`
`5)
`
`6)
`
`At least one PM312 cold planer;
`
`At least one PM620 cold planer;
`
`At least one PM622 cold planer;
`
`At least one PM820 cold planer;
`
`At least one PM822 cold planer; and
`
`At least one PM825 cold planer.
`
`See Order No. 23 at 14-15. Caterpillar did not seek review of Order No. 23, and the Commission
`
`did not review Order No. 23. Accordingly, Wirtgen has shown that Caterpillar Paving has met
`
`the importation requirement.
`
`b)
`
`Caterpillar Prodotti
`
`Order No. 23 determined that Caterpillar Prodotti has sold for importation into the United
`
`States:
`
`1)
`
`2)
`
`3)
`
`4)
`
`5)
`
`At least one PM312 cold planer;
`
`At least one PM620 cold planer;
`
`At least one PM622 cold planer;
`
`At least one PM820 cold.planer;
`
`At least one PM822 cold planer; and
`
`16
`
`

`

`Case 1:17-cv-00770-JDW Document 250-44 Filed 10/25/23 Page 23 of 447 PageID #: 26364
`
`PUBLIC VERSION
`
`6)
`
`At least one PM825 cold planer.
`
`Order No. 23 at 15. Order No. 23 further determined that Caterpillar Prodotti has offered to sell,
`
`for importation into the United States, the following:
`
`1)
`
`2)
`
`3)
`
`4)
`
`5)
`
`At least one PM620 cold planer;
`
`At least one PM622 cold planer;
`
`At least one PM820 cold planer;
`
`At least one PM822 cold planer; and
`
`At least one PM825 cold planer.
`
`Id. Caterpillar did not seek review of Order No. 23, and the Commission did not review Order
`
`No. 23. Accordingly, Wirtgen has shown that Caterpillar Prodotti has met the importation
`
`requirement.
`
`c)
`
`Caterpillar Inc.
`
`Order No. 23 determined that "that the importation requirement has been met with
`
`respect to Caterpillar Inc. in relation to the PM 620, PM 622, PM 820, PM 822 and PM825 cold
`
`planers." Order No. 23 at 18. Order No. 23 also determined that Wirtgen had not shown as a
`
`matter of law, that Caterpillar has sold these cold planers after importation. Id. Neither Wirtgen
`
`nor Caterpillar sought review of Order No. 23, and the Commission did not review Order No.
`
`23