Case 1:17-cv-00770-RGA-MPT Document 40-1 Filed 09/02/21 Page 1 of 85 PageID #: 9170
`Case 1:17-cv-00770-RGA-MPT Document 40-1 Filed 09/02/21 Page 1 of 85 PagelD #: 9170
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`EXHIBIT 33
`EXHIBIT 33
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`Case 1:17-cv-00770-RGA-MPT Document 40-1 Filed 09/02/21 Page 1 of 85 PagelD #: 9170
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`EXHIBIT 33
`EXHIBIT 33
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`Case 1:17-cv-00770-RGA-MPT Document 40-1 Filed 09/02/21 Page 2 of 85 PageID #: 9171
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`PUBLIC VERSION
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
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`In the Matter of
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`CERTAIN ROAD MILLING MACHINES
`AND COMPONENTS THEREOF
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`Investigation No. 337-TA-1067
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`COMMISSION OPINION
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`I. BACKGROUND AND PROCEDURAL HISTORY
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`The Commission instituted this investigation on August 25, 2017, based on a complaint
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`filed by Wirtgen America, Inc. of Antioch, Tennessee ("Wirtgen America," "Wirtgen," or
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`"Complainant"). 82 Fed. Reg. 40595-96 (Aug. 25, 2017). The complaint alleges a violation of
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`section 337 by reason of infringement of certain claims of U.S. Patent Nos. 7,530,641 ("the '641
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`patent"); 7,828,309 ("the '309 patent"); 9,624, 628 ("the '628 patent"); 9,644,340 ("the '340
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`patent"); and 9,656, 530 ("the '530 patent"). 1 The notice of investigation named Caterpillar
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`Bitelli SpA ofMinerbio BO, Italy; 2 Caterpillar Prodotti Stradali S.r.L. of Minerbio BO, Italy;
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`1 On March 14, 2018, Wirtgen filed an unopposed motion seeking to terminate the investigation
`as to the '628 Patent. The ALJ granted the motion in an ID (Order No. 30) issued on March 27,
`2018 (unreviewed on April 27, 2018).
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`2 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 ALJ
`granted the motion in an ID (Order No. 11 ), which issued on December 19, 2017 (unreviewed on
`January 18, 2018).
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`1
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`Case 1:17-cv-00770-RGA-MPT Document 40-1 Filed 09/02/21 Page 3 of 85 PageID #: 9172
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`PUBLIC VERSION
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`Caterpillar Americas CV of Geneva, Switzerland; Caterpillar Paving Products, Inc. of
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`Minneapolis, Minnesota; and Caterpillar Inc., of Peoria, Illinois (collectively, "Caterpillar," or
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`"Respondents"). The Commission's Office of Unfair Import Investigations ("OUII") was named
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`as a party, but later withdrew from the investigation. ID at 2. The evidentiary hearing on the
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`question of violation of section 337 was held from April 20 through April 24, 2018.
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`On October 1, 2018, the ALJ issued his final ID finding a violation of section 33 7. The
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`ALJ determined that a violation of section 337 occurred in the importation into the United States,
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`the sale for importation, or the sale within the United States after importation, of certain road
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`milling machines and components thereof with respect to the '309 and '530 patents, but that such
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`a violation did not occur with respect to the '641 and '340 patents. See ID, Cover.
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`On October 18, 2018, the ALJ issued his Recommended Determination ("RD") on remedy
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`and bonding, recommending that, if the Commission finds a violation of section 337 in the present
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`investigation, the Commission should: (1) issue a limited exclusion order ("LEO") covering
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`products that infringe the patent claims as to which a violation of section 337 has been found; (2)
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`issue a cease and desist order ("CDO"); and (3) require no bond during the Presidential review
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`period. RD at 23. The parties timely filed their respective public interest statements pursuant to
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`Commission rule 210.50(a)(4). Additionally, submissions on public interest (in the form of
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`letters) were filed in response to the Commission's notice, see 83 Fed. Reg. 53296-97 (Oct. 22,
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`2018), by Alban Tractor Co. Inc.; Foley Equipment Company; Gregory Poole Equipment
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`Company; HOLT CAT; MacAllister Machinery, Inc.; Quinn Company; and Wheeler CAT, who
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`2
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`PUBLIC VERSION
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`are all third party customers of respondents Caterpillar.
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`Both parties to the investigation filed timely petitions for review of various portions of the
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`ID, and timely responses thereto. On April 17, 2019, the Commission issued.a notice
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`("Commission Notice") in which it deteffi}ined to review-in-part the final ID. See 84 Fed. Reg. at
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`16882-84. In its'Notice, the Commission determined not to review any issues relating to the '340,
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`'641, and '530 patents and reversed the finding of no invalidity as to claim 36 of the '309 patent.
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`See id. at 1683. Accordingly, the Commission found a violation of section 337 as to the '309 and
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`'530 patents. Id. at 1683. The Commission requested written submissions on remedy, the public
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`interest, and bonding. Id. On May 8, 2019, Complainant filed "Complainant's Statement on
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`Remedy, the Public Interest, and Bonding" ("ComplOpenRemedy"). On the same day,
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`Respondents filed "Caterpillar's Submission on Remedy, Bond, and the Public Interest"
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`("RespOpenRemedy"). On May 15, 2019, Complainant filed "Wirtgen America's Reply to
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`Respondents' Statement on Remedy, the Public Interest, and Bonding" ("ComplRespRemedy").
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`Also on May 15, 2019, Respondents filed "Caterpillar's Reply Submission on Remedy, Bond, and
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`the Public Interest" ("RespRespRemedy"). No other submissions were received by the
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`Commission. 3
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`II. SUMMARY OF DETERMINATIONS
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`The Commission has determined that: (i) the appropriate remedy is (a) an LEO
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`3 The detailed procedural history prior to Commission review is contained in the final ID. See ID
`at 2-5.
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`3
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`PUBLIC VERSION
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`prohibiting the unlicensed entry of infringing road-milling machines and components thereof
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`covered by one or more of claim 29 of the '309 patent or claims 2, 5, 16, or 23 of the '530 patent
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`that are manufactured abroad for or on behalf of, or imported by or on behalf of, any of the
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`Respondents or any of their affiliated companies, parents, subsidiaries, or other related business
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`~
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`entities, or their successors or assigns; (b) a COO directed against Caterpillar Paving Products,
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`Inc. of Minneapolis, Minnesota, and Caterpillar Inc., of Peoria, Illinois, and their affiliated
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`companies, parents, subsidiaries, or other related business entities, or their successors or assigns;
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`(ii) the public interest will not be adversely affected by entry of the remedial orders; and (iii) the
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`bond during the Presidential review period is in the amount of [[
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`]] percent of the
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`entered value of the products covered by the remedial orders.
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`III. DISCUSSION
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`A. Remedy
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`In a Section 337 proceeding, the Commission has "broad discretion in selecting the form,
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`scope, and extent of the remedy." Viscofan, S.A. v. United States Int 'I Trade Comm 'ri, 787 F.2d
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`544, 548 (Fed. Cir. 1986).
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`1. LEO
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`a. The ALJ's Recommendation
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`The ALJ recommends that if the Commission finds a violation of section 337, and subject
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`to the Commission's public interest determination, the Commission should issue an LEO
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`covering all of the infringing articles imported, sold for importation, or sold after importation by
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`4
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`PUBLIC VERSION
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`respondents. The ALJ recommends that the LEO also should apply to respondents' affiliated
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`companies, parents, subsidiaries or other related business entities, or their successors or assigns.
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`The ALJ finds that the LEO would cover at least Caterpillar's PM620, PM622, PM820,
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`PM822, and PM825 machines (as currently configured), although the LEO should not be limited
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`to specific models. RD at 7 ( citing Certain Laser Bar Code Scanners and Scan Engines,
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`Components Thereof and Products Containing Same, Inv. No. 337~TA-551, Comm'n Op. at 23
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`(June 14, 2007) (declining to limit exclusion orders to specific models)).
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`The ALJ recommends that the Commission should not permit a limited service-and(cid:173)
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`repair exception. The ALJ notes that Caterpillar has not described what service and repair
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`activities it performs or explained why an exception to an exclusion order is necessary to
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`perform those activities. Id.
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`The ALJ further recommends that the Commission should not permit Caterpillar to
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`complete in-transit shipments that are "scheduled for delivery" because allowing such an
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`exception would circumvent the exclusion order and potentially weaken the value of U.S.
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`intellectual property rights. The ALJ states that the Commission should not permit the exception
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`at least because Caterpillar has not identified what the "in-transit shipments" entail or how many
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`shipments the exception would permit. RD at 8.
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`b. The Parties' Positions
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`i. Complainant's Position
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`Complainant argues that the Commission should issue an LEO against all infringing road-
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`5
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`PUBLIC VERSION
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`milling machines imported by or on behalf of Caterpillar. ComplOpenRemedy at 2. They
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`·
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`disagree with Caterpillar's argument that any remedy should be limited "to Caterpillar products
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`found to infringe a valid asserted claim" -
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`i.e., only the infringing products adjudicated in this
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`investigation, ComplOpenRemedy at 4 (citing "Caterpillar's Posthearing Brief'
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`("RespPostHearOpen") at 294-95) and point out that the RD correctly rejected Caterpillar's
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`attempt to narrow the scope of the LEO in this way, id. (citing RD at 7). Complainant submits
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`that Caterpillar's proposed limitations on the LEO contradict longstanding Commission
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`precedent and the mandate of Section 337 itself. Complainant argues that it is black-letter law
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`that an LEO should extend to "all products covered by the patent claims as to which a violation
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`'
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`has been found" and should not be "limit[ ed] ... to only those specific models selected for the
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`infringement analysis." Id. (citing'Hardware Logic Emulation Sys., 1998 WL 307240, at *9
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`("Hardware Logic")). Complainant points out that "[t]he central purpose ofremedial orders is to
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`ensure complete relief to the domestic industry," and an "exclusion order covering only specific
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`models of an accused device could· easily be circumvented, thereby denying complete relief." Id.
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`(citing Hardware Logic at *9); Certain Graphics Sys., Components Thereof, & Consumer Prods.
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`Containing The Same, Inv. No. 337-TA-1044, Comm'n Op. at 66 (Sept. 18, 2018) ("The LEO is
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`not limited to any particular GPU model ... but also extends to cover other GPU s of the named
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`respondents that infringe the asserted claims of the '506 patent.")); Certain Dental Implants, Inv.
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`No. 337-TA-934, Comm'n Op. at 47 (May 11, 2016) ("Commission exclusion orders are not
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`typically limited to the articles specifically adjudicated during an investigation.")).
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`6
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`PUBLIC VERSION
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`Co,mplainant contends that, accordingly, Commission exclusion orders generally cover all
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`products within the scope of the Notice oflnvestigation, id. (citing Certain Automated Mech.
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`Transmission Sys. For Medium-Duty & Heavy-Duty Trucks & Components Thereof, Inv. No.
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`337-TA-503, Comm'n Op., 2007 WL 4473082, at *10 (Aug. 2007)), except tho~e specific
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`products adjudicated as non-infringing, id. (citing Certain Marine Sonar Imaging Devices, Inv.
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`No. 337-TA-921, Comm'n Op. at 79-80)).
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`Complainant notes that the notice of investigation defines the scope of this investigation as
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`"road milling machines and components thereof," id. at 5 ( citing Institution of Investigation at 2
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`(Aug. 21, 2017)), and therefore the exclusion order should extend to all Caterpillar's road(cid:173)
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`milling machines that infringe the '309 or '530 patents, as well as associated components, id.
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`Complainant submits that Caterpillar's contention that the order should apply only to specific
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`models found to infringe is contrary to Commission precedent and should be rejected. Id. (citing
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`Certain Laser Bar Code Scanners & Scan Engines, Components Thereof & Prods. Containing
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`Same, Inv. No. 337-TA-551, Comm'n Op. at 23 (June 14, 2007) ("We reject Metrologic's
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`invitation to deviate from the long-standing Commission practice of declining to limit exclusion
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`orders to specific models.")). Complainant argues that purported "2018 Product Updates" should
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`not be carved out from the scope of any exclusion order, as Caterpillar has argued. Id. at 9
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`(citing Caterpillar Post-Hr'g Br. 295).
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`Complainant further argues that the Commission should reject Caterpillar's request for a
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`service-and-repair exception because "Caterpillar has not described what service and repair
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`7
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`PUBLIC VERSION
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`activities it performs or explained why an exception to an exclusion order is necessary to
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`perform those activities." Id. at 7 (citing RD at 7). Complainant contends that the Commission
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`should likewise "not permit Caterpillar to complete in-transit shipments that are 'scheduled for
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`delivery' because allowing such an exception would circumvent the exclusion order and
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`potentially weaken the value of U.S. intellectual property rights" and because "Caterpillar has
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`not identified what the 'in-transit shipments' entail or how many shipments the exception would
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`permit." Id. at 7 (citing RD at 7-8; Certain Mobile Devices, Associated Software, & Components
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`Thereof, Inv. No. 337-TA-744, Comm'n Op., 2012 WL 3715788, at *15 (June 5, 2012))
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`(rejecting respondent's argument for a "transition period" delaying enforcement of a limited
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`exclusion order because "neither [respondent] nor any third party provided any factual basis to
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`justify implementation of a transition period in this investigation")).
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`ii. Respondents' Position
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`Respondents argue that an LEO should be directed to only imported Caterpillar road
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`milling machines specifically found to infringe a valid asserted claim, which includes the
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`PM620, PM622, PM820, PM822, and PM825 machines manufactured in Italy, as they were
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`configured at the time. RespOpenRemedy at 4. Respondents contend that Wirtgen did not
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`establish that importation of components of road milling machines constitutes infringement of
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`the asserted patents, and that an LEO remedial order should also include (1) a certification
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`provision and (2) an exemption for service and repair activities and parts in order to avoid
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`adversely impacting the public interest. Id.
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`8
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`PUBLIC VERSION
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`Respondents argue that in response to Wirtgen's discovery requests, Caterpillar produced
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`documents related to a wide range of models and variations in the PMlO0, PM200, PM300,
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`PM465, PM565 series machines, and 2018 model year updates within the PM600 and PM800
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`product line. Id. at 5 (citing RX-0135 (PM-200 OMM), CX-0048C (PM312 Operation &
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`Maintenance Manual), RX-0027 (PM-465 OMM), and RX-0001 (PM-565 OMM)).
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`Respondents argue that Wirtgen accused only a fraction of those products of infringement. Id. at
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`5. Respondents _contend that Wirtgen's selective accusations of infringement do not entitle it to
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`relief against products on which it was provided discovery but chose not to accuse, and that "any
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`exclusion order should be limited to the importation of infringing products accused in this
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`investigation and should exclude products that Wirtgen has acknowledged are noninfringing by
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`demanding discovery, including through a motion to compel, seeing the evidence showing
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`noninfringement, and [] declining to accuse those products of infringement." Id. at 5.
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`Respondents cite no authority in support of their argument. Id.
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`Respondents assert that Wirtgen also only alleged infringement of assembled machines
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`for the '309 and '530 patents and did not allege, or prove, that importation of components of the
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`PM6XX or PM8XX series machines infringed any asserted patents. Id. at 5 ( citing RD at 7 n. 2).
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`Respondents further submit that the accused products are complex machines with parts manuals
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`listing thousands of individual parts over hundreds of pages, Id. at 5 (citing RX-0146 (PM620
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`Parts Manual)), and that third parties·, such as dealers of construction equipment and customers
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`purchasing Caterpillar PM6XX products depend on the availability of parts to support and repair
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`9
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`PUBLIC VERSION
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`existing machines, which support and repair is in the public interest, id. at 6 ( citing Section III of
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`RespOpenRemedy). Respondents argue that because Wirtgen alleged infringement only of the
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`assembled, whole machines, the "articles that infringe" are road milling machines, and thus such
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`machines is the only article the Commission is authorized to exclude. RespOpenRemedy ( citing
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`19 U.S.C. §1337(a)(l)B)(i)). Respondents contend that Wirtgen did not allege inducement or
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`contributory infringement by either the '309 or '530 patents, and thus there is no basis for the
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`Commission to assume that blocking importation of components has a reasonable relationship to
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`stopping unlawful trade acts. Id. at 7 (citing Cisco Systems, Inc. v. ITC, 873 F.3d 1354, 1362-63
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`(Fed. Cir. 2017) (finding the ITC properly barred the importation of components because
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`evidence established the specific components at issue induced infringement)), Respondents
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`argue that Wirtgen did not even allege that importation of components induced infringement of
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`either remaining patent, and thus there is no evidentiary record to support an exclusion order
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`extending to components. Id. at 7. Respondents cite no authority in support of their argument.
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`Id.
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`Respondents further argue that where practice of a patent is not easily determined by
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`visual inspection, the Commission's exclusion orders typically authorize U.S. Customs and
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`Border Protection (CBP) to accept a certification that the importer's products are not covered by
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`the order. Id. at 7 (citing Certain Mobile Devices, Inv. No. 337-TA-744, Comm'n Op. at 21
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`(June 5, 2012) ("it has been Commission practice for the past several years to include
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`certification provisions in its exclusion orders to aid CBP")).
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`PUBLIC VERSION
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`Respondents contend that the remedial orders in this investigation should also include an
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`exemption for service, repair, replacement parts, and customer support activities for machines
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`that were previously imported. Id. at 8. Respondents contend that this exemption is necessary to
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`avoid the impact on the interests of third parties and the public interest, referencing Section III
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`(B) of their opening remedy brief. Id.
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`Respondents further contend that the remedial orders should also be suspended regarding
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`all asserted claims that have become invalid as a result of the PTAB's final written decision on
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`the '530 patent. Id. (citing Section IV of their opening remedy brief).
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`c. Our Determination
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`For the reasons that follow, we determine to issue an LEO consistent with the
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`recommendations of the ALJ. Section 337(d)(l) provides that "[i]f the Commission determines,
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`as a result of an investigation under this section, that there is a violation of this section, it shall
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`direct that the articles concerned, imported by any person violating the provision of this section,
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`be excluded from entry into the United States .... " 19 U.S.C. § 1337 (d)(l). The ALJ found
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`that there is a violation in the importation, sale for importation, and sale after importation of the
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`products at issue, and we determined not to review this finding. Accordingly, we determine to
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`issue an LEO directed against Caterpillar's infringing products under 19 U.S.C. § 1337 (d)(l).
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`Consistent with Commission precedent,4 and the ALJ's recommendation, see RD at 7,
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`4 See Certain Laser Bar Code Scanners and Scan Engines, Components Thereof and Products
`Containing Same, Inv. No. 337-TA-551, Comm'n Op. at 23 (June 14, 2007); Certain Hardware
`Logic Emulation Sys., 1998 WL 307240, at *9; Certain Graphics Sys., Components Thereof, &
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`PUBLIC VERSION
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`we determine that the LEO should cover at least Caterpillar's PM620, PM622, PM820,
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`PM822, and PM825 machines, and should not be limited to specific models. See also
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`ComplOpenRemedy at 4-5. We agree with Complainant that the "2018 Product Updates"
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`should not be carved out from the scope of the LEO. See ComplOpenRemedy at 6; see also
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`RD at 7 ("The administrative law judge declines to make any explicit recommendations
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`concerning the 2018 Product Updates, which the administrative law judge previously
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`determined were not sufficiently finalized for adjudication."). Given that the 2018 Product
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`Updates were not adjudicated in this investigation, the Commission offers no opinion at this
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`time as to whether those unadjudicated products may be outside the scope of the LEO. See
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`Certain Robotic Vacuum Cleaning Devices and Components Thereof Such as Spare Parts,
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`Inv. No. 337-TA-1057, Com'n Op. at 57-58 (Feb. 1, 2019) "[T]he Commission cannot find
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`at this time that the aforementioned products are exempted from the limited exclusion order
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`because they have not been adjudicated in this investigation .... [T]here are procedures
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`available to the parties to determine whether these products are covered by the limited
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`exclusion order.")
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`We further determine that the scope of the LEO to be issued should include the
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`components of road-milling machines covered by the LEO. See Certain Network Devic,es,
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`Consumer Prods. Containing The Same, Inv. No. 337-TA-1044; Comm'n Op. at 66 (Sept. 18,
`2018); Certain Dental Implants, Inv. No. 337-TA-934, Comm'n Op. at 47 (May 11, 2016);
`Certain Automated Mech. Transmission Sys. For Medium-Duty & Heavy-Duty Trucks &
`Components Thereof, Inv. No. J37-TA-503, Comm'n Op., 2Q07 WL 4473082, at *10 (Aug.
`2007); Certain Marine Sonar Imaging Devices, Inv. No. 337.:.TA-921, Comm'n Op. at 79-80.
`12
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`PUBLIC VERSION
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`Related Software & Components Thereof(//), Inv. No. 337-TA-945, Comm'n Op. at 123
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`(June 1, 2017). Complainant persuasively disputes Caterpillar's contention that any LEO
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`should not apply to "components" of road-milling machines as explained below. See
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`RespOpenRemedy at 5-7. ComplRespRemedy at 2-3.
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`Complainant argues that Caterpillar's contention that "Wirtgen did not allege
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`inducement or contributory infringement by either the '309 or '530 patents,"
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`RespOpenRemedy at 7, is factually wrong and legally irrelevant. ComplRespRemedy at 2.
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`Complainant argues that it is factually wrong because Wirtgen alleged both induced and
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`contributory infringement of all of the asserted patents, ComplRespRemedy at 2 ( citing
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`Compl. ~~ 83, 86), and it is legally irrelevant because, regardless of the nature of a
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`complainant's infringement allegations, LEOs are intended to bar the respondent "from
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`importing components of its devices and then assembling those devices into infringing
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`products." ComplRespRemedy at 2 (citing Certain Network Devices, Related Software &
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`Components Thereof(//), Inv. No. 337-TA-945, Comm'n Op. at 123 (June 1, 2017)). As
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`Complainant correctly points out, any other rule would allow manufacturers of infringing
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`products to circumvent the order by simply importing the components instead of the finished
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`products and assembling the finished products once the components are already in the United
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`States. See id. ( citing Certain Network Devices, Related Software & Components Thereof
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`(II), Inv. No. 337-TA-945, Comm'n Op. at 123 (June 1, 2017)).
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`We also agree with Complainant's position that, in order to prevent evasion of the
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`PUBLIC VERSION
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`LEO, it should cover infringing respondent's affiliated companies, parents, subsidiaries,
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`contractors, joint ventures, agents, distributors, or other related business entities, or their
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`successor or assigns, without any narrowing of an exclusion order to carve out certain
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`Caterpillar entities, as Caterpillar has suggesJed. ComplOpenRemedy at 6 (citing Caterpillar
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`Post-Hr'g Br. 296); see Automated Mech. Transmission Sys., 2007 WL 4473082, at *4-5;
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`Certain Agricultural Vehicles & Components Thereof, Inv. No. 337-TA-487, Limited
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`Exclusion Order, 2004 WL 3119035, at * 1 (May 14, 2004); Certain Abrasive Products Made
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`Using A Process For Making Powder Preforms, & Prods. Containing Same, Inv. No. 337-
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`TA-449, Limited Exclusion Order, 2002 WL 31093615, at *l (May 9, 2002); Certain
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`Hardware Logic Emulations Sys. & Components Thereof, Inv. No. 337-TA-383, Limited
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`Exclusion Order, 1997 WL 906149, at *2 (Dec. 3, 1997)).
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`We further find, as discussed infra in section Bon public interest, that the LEO should
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`include an exception for service and repair. We determine, however, not to permit an
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`exception for shipments that are "~cheduled for delivery" because permitting Caterpillar to
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`complete in-transit shipments that are "scheduled for delivery" would potentially circumvent
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`the exclusion order, especially where "Caterpillar has not identified what the 'in-transit
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`shipments' entail or how many shipments the exception would permit," RD at 8; see also
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`ComplOpenRemedy at 7 ( citing Certain Mobile Devices, Associated Software, & Components
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`Thereof, Inv. No. 337-TA-744, Comm'n Op., 2012 WL 3715788, at *15 (June 5, 2012)
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`(rejecting respondent's argument for a "transition period" delaying enforcement of a limited
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`14
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`PUBLIC VERSION
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`exclusion order because "neither [respondent] nor any third party provided any factual basis to
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`justify implementation of a transition period in this investigation")).
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`Consistent with Respondents' position, we authorize U.S. Customs and Border
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`Protection (CBP) to accept a certification that the importer's products are not covered by the
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`order. See RespOpenRemedy at 7 (citing Certain Mobile Devices, Inv. No. 337-TA-744,
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`Comm'n Op. at 21 (June 5, 2012) ("it has been Commission practice for the past several years
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`to include certification provisions in its exclusion orders to aid CBP")), see also id. at 7-8
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`("Practice of the patents asserted in this Investigation is not readily determined by visual
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`inspection, and therefore any remedy should contain a certification provision. A certification
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`provision would also assist CBP in the administration of the exemption for repair and
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`replacement articles, discussed below.") (citing Certain Mobile Devices, Inv. No. 337-TA-
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`744, Comm'n Op. at 21). 5
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`Respondents contend that Wirtgen requests "an unconventional alteration of the
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`limited exclusion order language, asking for the explicit exclusion of road milling machines
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`and components thereof that infringe the remaining claims and 'that are manufactured or
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`repaired abroad for or on behalf of, or imported by or on behalf of the Respondents."
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`RespRespRemedy at 6 (emphasis added) (citing ComplOpenRemedy at 3, Al). Wirtgen,
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`5 The standard provision does not allow an importer to simply certify that it is not violating the
`exclusion order. Rather, CBP only accepts a certification that the goods have been previously
`determined by CBP or the Commission not to violate the exclusion order. Certain Network
`Devices, Related Software & Components Thereof (I), Inv. No. 337-TA-944, Comm' n Op. at 53
`n.19 (June 23, 2016).
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`15
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`Case 1:17-cv-00770-RGA-MPT Document 40-1 Filed 09/02/21 Page 17 of 85 PageID #: 9186
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`PUBLIC VERSION
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`however, points to no evidence in the record that any of the accused products are "repaired
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`abroad." See ComplOpenRemedy at 3. Further, we find that this "unconventional alteration"
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`is superfluous since the LEO already covers Respondents' importation of infringing road
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`milling machines. Accordingly, we find that the alteration should not be expressly
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`incorporated into the language of the LEO to be issued.
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`Finally, we determine that no suspension of enforcement of the LEO is warranted in
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`this investigation. Caterpillar argues that if the PT AB finds any of the infringed claims
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`invalid in the IPR proceedings, the Commission should not issue a remedial order as to those
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`claims. RespRemedyOpen at 22-23. The record shows, however, that the Patent Trial and
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`Appeal Board ("PTAB") found that "all challenged claims 1-7, 13- 24, and 26 of the '530
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`patent have not been proven unpatentable." See Wirtgen America's Notice of Supplemental
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`Authority (dated June 4, 2019) at 1 (citing Caterpillar Inc. v. Wirtgen America, Inc. et al., No.
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`IPR2017-2018, Final Written Decision (May 22, 2019) (attached as Exhibit A)). We agree
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`with Complainant that "[t]he PTAB's decision moots Caterpillar's argument that the
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`enforcement of any remedial order as to the '530 patent should be suspended." Id. (citing
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`Caterpillar Submission on Remedy, Bond, and the Public Interest at 21-28 (May 8, 2019)).
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`3. CDO
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`a. The ALJ's Recommendation
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`The ALJ recommends that the Commission issue a CDO if a violation is found, subject to
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`any public interest determination of the Commission. RD at 13. The ALJ notes that Caterpillar
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`16
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`Case 1:17-cv-00770-RGA-MPT Document 40-1 Filed 09/02/21 Page 18 of 85 PageID #: 9187
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`PUBLIC VERSION
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`has not provided any evidence or other submission showing that it has changed the
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`manufacturing location of its cold planer machines from overseas to the United States. RD at 13
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`(citing RX-1171 C (Clark RWS) at Q/A 18-23 (explaining that Caterpillar's cold planer
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`"manufacturing for the North American market will move to the United States in the future.")).
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`b. The Parties' Positions
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`i. Complainant's Position
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`Complainant argues that, in addition to the LEO, the Commission should also issue a
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`CDO directed to Caterpillar's infringing road-milling machines. Complainant contends that
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`. where, as here, there is "commercially significant" inventory of infringing imported products in
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`the United States that could be sold so as to undercut the remedial exclusion order, a CDO is
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`necessary to ensure that the complainant is "afforded complete relief." ComplOpenRemedy at 7
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`(citing Certain Crystalline Cefadroxil Monohydrate, Inv. No. 337-TA-293, Comm'n Op., 0091
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`WL 11732562, at *27 (Mar. 15, 1990) (noting that a cease-and-desist order is appropriate when
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`inventories are more than "de minimus"); Certain Automated Teller Machines, Inv. No. 337-TA-
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`972, Comm'n Op. at 28; Certain Optoelectronic Devices, Components Thereof, & Prods.
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`Containing The Same, Inv. No. 337-TA-669, Comm'n Op. at 5-6 (July 26, 2010)).
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`Complainant submits that respondents Caterpillar Paving Products, Inc. and Caterpillar
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`Inc. have a commercially significant inventory of infringing products at their U.S. storage
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`facility. ComplOpenRemedy at 8 (citing CX-0008C (Mulhern) Q/A 379- 401; CX-0552C
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`(Caterpillar PM600 Inventory); JX-0026C (Just Dep. 160-63); CX-0550C (Accused Product
`
`17
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`PUBLIC VERSION
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`Importation Summary); CX-0536C (Accused Products Sales Price Spreadsheet)). Complainant
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`points out that, as of January 2018, Caterpillar had domestic inventories of [[
`
`]] PM600-series
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`machines, valued at approximately [[
`
`]] and [[
`
`]] PM800-series machines, valued at
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`approximately [[
`
`]] for a total for [[
`
`]] in domestic inventory of infringing
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`products. ComplOpenRemedy at 8 (citing CX-0008C (Mulhern) Q/A 39; CX-0550C (Accused
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`Product Importation Summary); CX-0552C (Caterpillar PM600 Inventory)), see id. (citing CX-
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`0008C (Mulhern) Q/A 39, 385, 390); Hr'g Tr. 435:3- 17 (Reed).
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`Complainant disagrees with Caterpillar's contention that Caterpillar's inventory is not
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`"commercially significant" because: (1) the inventory includes [[
`
`]]; (2) Wirtgen
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`I
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`compared Caterpillar's inventory to past sales rather than future sales; and (3) Caterpillar might
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`change the manufacturing location of the PM600 and PM800 machines in the future.
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`ComplOpenRemedy at 8 (citing Caterpillar Post-Hr'g Br. 296-97). Rather, Complainant argues
`
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