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`EXHIBIT 29
`EXHIBIT 29
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`

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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`CATERPILLAR PRODOTTI STRADALI S.R.L.,
`CATERPILLAR AMERICAS C.V., CATERPILLAR
`PAVING PRODUCTS, INC., CATERPILLAR INC.,
`Appellants
`
`v.
`
`INTERNATIONAL TRADE COMMISSION,
`Appellee
`
`WIRTGEN AMERICA, INC.,
`Intervenor
`
`-------------------------------------------------
`
`WIRTGEN AMERICA, INC.,
`Appellant
`
`v.
`
`INTERNATIONAL TRADE COMMISSION,
`Appellee
`
`CATERPILLAR PRODOTTI STRADALI S.R.L.,
`CATERPILLAR AMERICAS C.V., CATERPILLAR
`PAVING PRODUCTS, INC., CATERPILLAR INC.,
`Intervenors
`______________________
`
`2019-2445, 2019-1911
`
`

`

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`2
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`CATERPILLAR PRODOTTI STRADALI v. ITC
`
`______________________
`
`Appeals from the United States International Trade
`Commission in Investigation No. 337-TA-1067.
`______________________
`
`Decided: March 15, 2021
`______________________
`
`JAMES R. BARNEY, Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP, Washington, DC, argued for Cat-
`erpillar Prodotti Stradali S.R.L., Caterpillar Americas
`C.V., Caterpillar Paving Products, Inc., Caterpillar Inc.
`Also represented by DAVID MROZ.
`
` MICHAEL LIBERMAN, Office of the General Counsel,
`United States International Trade Commission, Washing-
`ton, DC, argued for appellee. Also represented by DOMINIC
`L. BIANCHI, WAYNE W. HERRINGTON.
`
` MICHAEL E. JOFFRE, Sterne Kessler Goldstein & Fox,
`PLLC, Washington, DC, argued for Wirtgen America, Inc.
`Also represented by PAUL ASHLEY AINSWORTH, DONALD
`BANOWIT, WILLIAM MILLIKEN, RALPH WILSON POWERS, III,
`DANIEL YONAN; MARK ANDREW KILGORE, RYAN D. LEVY,
`SETH R. OGDEN, WILLIAM E. SEKYI, JOHN FRANCIS TRIGGS,
`Patterson Intellectual Property Law, PC, Nashville, TN.
` ______________________
`
`Before O’MALLEY, MAYER, and TARANTO, Circuit Judges.
`
`Opinion for the court filed by Circuit Judge TARANTO.
`
`Opinion concurring in the judgment filed by Circuit Judge
`O’MALLEY.
`
`
`
`

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`CATERPILLAR PRODOTTI STRADALI v. ITC
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`3
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`TARANTO, Circuit Judge.
`
`
`Wirtgen America, Inc. filed a complaint against Cater-
`pillar Products Stradali S.R.L., Caterpillar Americas C.V.,
`Caterpillar Paving Products, Inc., and Caterpillar, Inc.
`(collectively, Caterpillar) with the International Trade
`Commission, alleging that Caterpillar’s importation and
`sale of certain road-milling machines violated 19 U.S.C.
`§ 1337 (section 337 of the Tariff Act of 1930). Specifically,
`invoking section 337’s bar on importation and sale “of arti-
`cles that . . . (i) infringe a valid and enforceable United
`States patent,” 19 U.S.C. § 1337(a)(1)(B), Wirtgen alleged
`that Caterpillar infringed several of its patents, including
`U.S. Patent Nos. 9,656,530, 7,828,309, and 7,530,641. The
`Administrative Law Judge (ALJ) determined that Cater-
`pillar violated section 337 with respect to the ’530 and ’309
`patents. But the ALJ found no violation with respect to the
`’641 patent, concluding that Wirtgen had not shown the in-
`fringement alleged, i.e., inducement by Caterpillar of direct
`infringement of method claims 11 and 17. Both determi-
`nations became those of the Commission when it declined
`to review them.
`Caterpillar appeals as to the ’530 and ’309 patents, and
`Wirtgen cross-appeals as to the ’641 patent. We affirm the
`Commission’s decision as to the ’530 and ’309 patents. We
`reverse in part, vacate in part, and remand as to the ’641
`patent.
`
`I
`Based on Wirtgen’s July 2017 complaint, the Commis-
`sion instituted an investigation to decide whether Caterpil-
`lar was violating section 337 through infringement of five
`Wirtgen-owned patents: the ’530 patent, the ’309 patent,
`and the ’641 patent, as well as U.S. Patent Nos. 9,624,628
`and 9,644,340. Certain Road Milling Machines and Com-
`ponents Thereof; Institution of Investigation, 82 Fed. Reg.
`40,595, 40,596 (Aug. 25, 2017) (notice). Only the ’530, ’309,
`
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`CATERPILLAR PRODOTTI STRADALI v. ITC
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`and ’641 patents are now at issue.1 All three of those pa-
`tents relate to road-milling machines, which are construc-
`tion machines used to remove an existing road surface
`before installing a new one. J.A. 20006–08. They typically
`consist of a frame, four wheels or crawler tracks, and a mill-
`ing drum, which scrapes off old pavement and clears the
`scraped material by means of a conveyor. Id.
`The ’530 patent describes a “road construction ma-
`chine” with wheels (or tracks) connected to the machine’s
`frame “via lifting column[s],” each column being “vertically
`adjustable relative to the engine frame.” ’530 patent, Ab-
`stract. Wirtgen asserted that Caterpillar was infringing
`claims 2, 5, 16, and 23 of the ’530 patent. Caterpillar chal-
`lenged all four claims as invalid for obviousness, see 35
`U.S.C. § 103, and claims 2, 5, and 16 as invalid for indefi-
`niteness, see 35 U.S.C. § 112.
`The ’309 patent describes a road-milling machine that
`allows for all four wheels (or tracks) to be “adjustable in
`height by means of an actuating member.” ’309 patent, col.
`1, lines 10–15. Wirtgen asserted that Caterpillar was in-
`fringing claim 29. Caterpillar alleged that claim 29 is in-
`valid for obviousness.
`The ’641 patent describes an “automotive construction
`machine” with a milling drum, as well as a method for us-
`ing the machine to mill ground surfaces. ’641 patent, col.
`1, lines 7–8. As relevant here, Wirtgen alleged that Cater-
`pillar was inducing users of certain of its machines to use
`them in a way that constituted direct infringement of
`method claims 11 and 17 of the ’641 patent. See J.A. 3399–
`400.
` Caterpillar responded that no act of direct
`
`
`1 Wirtgen voluntarily dismissed its allegations as to
`the ’628 patent, and the ALJ found no violation with re-
`spect to the ’340 patent, a finding adopted by the Commis-
`sion and not challenged on appeal.
`
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`infringement of those claims had occurred, so there could
`be no inducement liability. See J.A. 2572, 2884.
`The ’641 patent states that, in prior-art milling ma-
`chines, it was “necessary that the milling drum [be] idle”
`when the machine was “traveling backwards.” ’641 patent,
`col. 1, lines 31–32. The drum spun in the opposite direction
`from the machine’s forward-motion direction and rotated
`faster than the machine’s wheels (or rotational devices for
`tracks); as a result, when the machine was moving in re-
`verse (with the drum’s rotation aligned with rather than
`opposing the direction of the machine’s movement), “the
`construction machine may be accelerated suddenly and un-
`controllably in case of an inadvertent engagement of the
`milling drum with the ground surface.” Id., col. 1, lines 33–
`36. The ’641 patent asserts that the necessary process of
`turning off the combustion engine while traveling in re-
`verse and then waiting for it to return to speed before re-
`suming milling was “very time-consuming and very
`annoying for the machine operator.” Id., col. 1, lines 55–
`59. The ’641 patent claims to improve on previous milling
`machines by providing that, when the drum’s rotation and
`machine’s motion are in the same direction, the drum is
`raised above the ground and continues to spin, but if sen-
`sors detect that it is too close to the ground, the drive en-
`gine is decoupled from the drum, or the wheels (or tracks)
`or the frame is raised, or an alarm goes off. Id. col. 1, line
`64 through col. 2, line 11; see also id., col. 3, lines 20–44;
`id., col. 5, lines 32–46.
`Claims 11 and 17 of the ’641 patent, the only claims
`now at issue, are method claims. Claim 11 recites:
`11. Method for working ground surfaces (2) with a
`construction machine (1) that is automotive by
`means of traveling devices (8) and in which a mill-
`ing drum (12) supported in a machine frame (4) is
`driven by a drive engine (6),
`
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`CATERPILLAR PRODOTTI STRADALI v. ITC
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`where the milling drum (12) is moved into a
`raised position when it is not in milling mode,
`characterized in that,
`the milling drum (12) remains coupled with the
`drive engine (6) when in raised position and
`with a direction of travel in which the rotating
`direction of the milling drum (12) corresponds
`to the rotating direction of the traveling devices
`(8),
`in that a distance is monitored between the ro-
`tating, raised milling drum (12) and the ground
`surface (2) or an obstacle located in front of the
`milling (12) when seen in the direction of
`travel, and
`in that the milling drum (12) is uncoupled from
`the drive engine (6), and/or the traveling de-
`vices (8) are uncoupled from the drive engine
`(6) and/or the machine frame (4) is raised
`and/or an alarm signal is generated when de-
`tecting that the deviation falls below a prede-
`termined distance between the milling drum
`(12) and the ground surface (2).
`Id., col. 8, lines 4–27. Claim 17 depends on claim 11 and
`adds that the machine’s “scraper blade” be “arranged be-
`hind the milling drum” and be used as the sensing device.
`Id., col. 8, lines 64–67.
`In its pre-hearing brief, Wirtgen asserted direct in-
`fringement of claims 11 and 17 by Caterpillar customers’
`use of Caterpillar’s PM600, PM800, and PM300 Series ma-
`chines—i.e., all three Series. J.A. 20153. It then asserted:
`“Caterpillar also indirectly infringes these claims by en-
`couraging and facilitating others to perform actions using
`those machines that Caterpillar knows will infringe and
`with the intent that performance of the actions will in-
`fringe.” J.A. 20153 (emphasis added). “For example,”
`
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`Wirtgen continued, “Caterpillar provides explicit instruc-
`tions to its customers regarding the use of ‘[a]n automatic
`rotor disengagement feature,’ which infringes at least the
`method claims—claims 11 and 17—of the ’641 patent. CX-
`0006C Q416 (Meyer Opening [Witness Statement]).” J.A.
`20153 (citing J.A. 15520 (alteration in original)). Finally,
`Wirtgen said (with respect to two of the Series), “Caterpil-
`lar also distributes documentation in the United States
`outlining how to use the PM600 Series and PM800 Series
`machines in a manner that infringes the ’641 patent.” J.A.
`20153 (citing evidence); see also J.A. 3399–400 (alleging the
`same in Wirtgen’s post-hearing brief).
`On the knowledge element of inducement, Wirtgen had
`obtained concessions by Caterpillar that Caterpillar knew
`about the ’641 patent since at least June 15, 2017. See J.A.
`17887–88 (Request for Admissions 1047, 1049). But Wirt-
`gen did not cite those admissions in its pre- or post-hearing
`briefs in asserting Caterpillar’s knowledge. Instead, as
`quoted just above, when directly asserting Caterpillar’s
`knowledge of the patent and knowledge that the actions it
`was encouraging were infringing, Wirtgen simply cited a
`question and answer (Q416) in the written statement of its
`expert, Dr. John Meyer, submitted as part of Wirtgen’s di-
`rect evidence. See J.A. 20153 (pre-hearing brief), 3400
`(post-hearing brief). Notably, in responding to Wirtgen’s
`induced-infringement allegations, Caterpillar never dis-
`puted Wirtgen’s assertions that Caterpillar knew of the
`’641 patent and knew that its customers’ use of its ma-
`chines infringed claims 11 and 17. See J.A. 2572, 2884. In-
`stead, it argued simply that there had been no act of direct
`infringement of the ’641 patent by Caterpillar’s customers
`in the United States and that there could be no induced
`infringement without such direct infringement. Id.
`Wirtgen contended that Caterpillar’s customers had
`committed acts of direct infringement of claims 11 and 17
`in the United States—acts induced by Caterpillar—regard-
`ing all three Series. It is not disputed before us that
`
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`CATERPILLAR PRODOTTI STRADALI v. ITC
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`operation of the accused machines, when driven in reverse,
`comes within the claims and that at least one PM300 Series
`machine was imported into the United States. J.A. 96–100
`(finding importation); J.A. 254–56 (finding coverage by
`claims when operated in particular way). The only direct-
`infringement issue before us is whether Wirtgen proved
`such use of the PM300 Series in the United States. On that
`issue, Wirtgen cited the testimony of Mr. Engelmann, a
`Caterpillar employee, J.A. 10733–35 (quoted in J.A. 253–
`54), and Dr. Alleyne, an expert for Caterpillar, J.A. 10862–
`66. See J.A. 3399–413 (post-hearing Wirtgen brief).
`In October 2018, the ALJ issued his Final Initial De-
`termination, which became the Commission’s decision in
`the respects relevant on appeal. J.A. 76–521. The ALJ de-
`termined that Caterpillar violated section 337 with respect
`to the ’530 and ’309 patents. Specifically, the ALJ found
`that Caterpillar infringed claims 2, 5, 16, and 23 of the ’530
`patent and claim 29 of the ’309 patent, and he rejected Cat-
`erpillar’s invalidity assertions. J.A. 516, 518; see also J.A.
`135–216 (’309 patent); J.A. 426–504 (’530 patent).
`As to the ’641 patent’s claims 11 and 17, the ALJ found
`no infringement—that is, no induced infringement by Cat-
`erpillar—while rejecting Caterpillar’s invalidity conten-
`tions. J.A. 516–17. The ALJ made two findings of
`significance. The first fully defeated Wirtgen’s ’641 patent
`infringement case, which was limited to inducement.
`Thus, the ALJ determined that Wirtgen “ha[d] not shown
`that Caterpillar knew of the ’641 [p]atent and that Cater-
`pillar knew that the actions it allegedly induced were in-
`fringing.” J.A. 256. When making that determination of a
`failure of proof of Caterpillar’s knowledge, the ALJ listed,
`as Wirtgen’s evidence, the citations that Wirtgen had set
`forth in its post-hearing brief, with one notable exception:
`The ALJ made no mention of Wirtgen’s citation to Dr.
`Meyer’s testimony (J.A. 15520). J.A. 256 n.47 (quoting
`Wirtgen’s string citations at J.A. 3400 following a sentence
`about PM600 and PM800 Series documentation, but
`
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`omitting Wirtgen’s citation to “CX-00006C Q416 (Meyer
`Opening [Witness Statement])” following the preceding
`sentence at J.A. 20153).
`The ALJ’s second inducement-related finding adverse
`to Wirtgen was limited to one portion of the asserted direct
`infringement by customers underlying the inducement as-
`sertion. The ALJ found, favorably to Wirtgen, in reliance
`on Mr. Engelmann’s testimony, that Caterpillar’s custom-
`ers had infringed claims 11 and 17 by operating the PM600
`and PM800 Series machines in the United States. J.A.
`254.2 But the ALJ found, upon reviewing the relied-on tes-
`timony of Mr. Engelmann and Dr. Alleyne, that Wirtgen
`had not shown that Caterpillar’s customers similarly used
`the PM300 Series in the United States. J.A. 254 & n.46.
`The Commission declined to review the ALJ’s determi-
`nations on these three patents, see Certain Road Milling
`Machines and Components Thereof Commission Determi-
`nation to Review in Part a Final Initial Determination;
`Schedule for Filing Written Submissions on Remedy, the
`Public Interest, and Bonding, 84 Fed. Reg. 16,882, 16,883
`(Apr. 23, 2019) (notice), and they became the final opinion
`of the Commission, see J.A. 1–42. Caterpillar timely ap-
`pealed as to the ’530 and the ’309 patents, and Wirtgen
`timely cross-appealed as to the ’641 patent. We have juris-
`diction under 19 U.S.C. § 1337(c) and 28 U.S.C.
`§ 1295(a)(6).
`
`II
`“We review the Commission’s final determinations un-
`der the standards of the Administrative Procedure Act.”
`
`It is undisputed here that Caterpillar’s PM620 ma-
`2
`chine was representative of both the PM600 and PM800
`Series products. See J.A. 234. The ALJ thus did not make
`separate factual findings with respect to the PM600 and
`PM800 Series.
`
`

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`Guangdong Alison Hi-Tech Co. v. Int’l Trade Comm’n, 936
`F.3d 1353, 1359 (Fed. Cir. 2019); see also 19 U.S.C.
`§ 1337(c); 5 U.S.C. § 706. The Commission’s factual find-
`ings are reviewed for substantial evidence and its legal de-
`terminations are reviewed de novo. Guangdong, 936 F.3d
`at 1359. Infringement is a question of fact reviewed for
`substantial evidence. ATEN Int’l Co. v. Uniclass Tech. Co.,
`932 F.3d 1364, 1367 (Fed. Cir. 2019). “A finding is sup-
`ported by substantial evidence if a reasonable mind might
`accept the evidence as adequate to support the finding.”
`Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330
`(Fed. Cir. 2019).
`We see no reversible error in the ALJ’s decision
`(adopted by the Commission) with respect to the ’530 and
`’309 patents. The ALJ’s comprehensive and detailed find-
`ings as to those patents rest on substantial evidence, and
`we discern no prejudicial error of law in the rulings chal-
`lenged in this court. We therefore discuss only Wirtgen’s
`challenge to the two rulings regarding indirect infringe-
`ment of claims 11 and 17 of the ’641 patent.
`A
`Wirtgen first argues that the ALJ lacked substantial
`evidence to support his finding that Wirtgen had not shown
`that Caterpillar knew of the ’641 patent and that Caterpil-
`lar knew and intended that its customers’ use of the
`PM300, PM600, and PM800 Series machines infringed
`claims 11 and 17. Wirtgen Opening Br. at 55–63. We
`agree.
`Induced infringement requires proof of two types of
`knowledge by the alleged inducer: knowledge of the patent
`in question and knowledge that the induced acts infringe
`the patent. Commil USA, LLC v. Cisco Systems, Inc., 135
`S. Ct. 1920, 1926 (2015); see also Global-Tech Appliances,
`Inc. v. SEB S.A., 563 U.S. 754, 766 (2011). Here, the ALJ
`found that Wirtgen did not present evidence of the two
`types of relevant knowledge for induced infringement. J.A.
`
`

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`256. That determination, we conclude, is not supported by
`substantial evidence.
`Wirtgen expressly alleged knowledge sufficient for in-
`duced infringement in its pre and post-hearing briefs, see
`J.A. 3400, 20153, and Caterpillar never disputed those al-
`legations, see J.A. 2572, 2884. Indeed, Caterpillar had ad-
`mitted that it knew about the ’641 patent. See J.A. 17887–
`88 (Request for Admissions 1047, 1049). And Caterpillar
`did not dispute Wirtgen’s assertions that it knew that its
`customers infringed the ’641 patent. Nor did Caterpillar
`even assert that Wirtgen, while asserting such knowledge,
`had failed to cite evidence to prove it.
`The ALJ nevertheless, sua sponte, found that Wirtgen
`had not proved its assertion of knowledge. Given the rec-
`ord cited to the ALJ by Wirtgen, and the absence of any
`contest on the point by Caterpillar, that was not a reason-
`able finding to make.
`In its briefs before the ALJ, Wirtgen cited Q416 of Dr.
`Meyer’s witness statement. See J.A. 3400, 20153 (both cit-
`ing Q416 at J.A. 15520). The citation refers to the following
`colloquy with Dr. Meyer:
`416. Q: Do you have any examples of such actions
`on behalf of Caterpillar?
`A: Yes. For example, Caterpillar provides explicit
`instructions to its customers regarding the use of
`“[a]n automatic rotor disengagement feature,”
`which infringes at least the method claims—claims
`11 and 17—of the ’641 patent.
`J.A. 15520 (Q416 (alteration in original)). The language
`“such actions” by its plain meaning is a reference back to
`the actions identified in the immediately preceding ques-
`tion and answer, Q415. See, e.g., United States v. Vogel
`Fertilizer Co., 455 U.S. 16, 25 n.8 (1982) (noting that “such”
`refers back). And the Q415 characterization is explicit that
`the “actions” (to which Q416 is referring) were undertaken
`
`

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`CATERPILLAR PRODOTTI STRADALI v. ITC
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`by Caterpillar’s customers with knowledge by Caterpillar
`that they would infringe the ’641 patent:
`415. Q: What is your opinion as to whether Cater-
`pillar indirectly infringes claims 1, 7, 11, and 17 of
`the ’641 patent?
`A: Caterpillar has also indirectly infringed and con-
`tinues to indirectly infringe claims 1, 7, 11, and 17
`of at least the ’641 patent by way of both induced
`infringement and contributory infringement. In-
`deed, Caterpillar induced and continues to induce
`others to infringe claims 1, 7, 11, and 17 of the ’641
`patent by selling for importation into the United
`States, importing, and selling after importation the
`PM300 Series, PM600 Series, and PM800 Series
`machines and encouraging and facilitating others
`to perform actions using those machines that Cat-
`erpillar knows will infringe and with the intent that
`performance of the actions will infringe. I have also
`been informed that Caterpillar’s importation, sale
`for importation, and sale in the United States after
`importation of the PM300 Series, PM600 Series,
`and PM800 Series machines and components
`thereof, are continuing.
`J.A. 15520 (Q415 (emphasis added)).
`The only reasonable understanding of Q416, given its
`express “such actions” reference back to Q415, is that the
`examples given in Q416 are examples of customer actions
`that Caterpillar knew would infringe claims 11 and 17 of
`the ’641 patent. Caterpillar’s failure to contest the point
`strongly confirms that this is the only reasonable meaning.
`And the ALJ provided no basis for finding otherwise when
`he sua sponte found a failure of proof. Indeed, as we have
`noted, the ALJ wholly overlooked this evidence.
`We therefore must reverse the ALJ’s finding, adopted
`by the Commission, that Wirtgen failed to prove the
`
`

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`13
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`knowledge required for inducement. Caterpillar has not
`suggested an alternative basis for affirming the finding of
`no inducement. Accordingly, we vacate the finding of no
`induced infringement.
`
`B
`The ALJ found a second failure of proof as to induce-
`ment, but this finding does not undermine the rejection of
`inducement altogether. It affects only inducement of in-
`fringing use of Caterpillar’s PM300 Series machines, not
`inducement of infringing use of Caterpillar’s PM600 and
`PM800 Series machines. The ALJ found that Wirtgen had
`not shown use in the United States of any imported PM300
`Series machine in a way that would infringe. J.A. 254.
`Wirtgen challenges that finding as unsupported by sub-
`stantial evidence. See Wirtgen Opening Br. at 67–75.
`We reject this challenge. In support of its assertion as
`to the PM300 Series, Wirtgen pointed the ALJ at most to
`certain testimony by Mr. Engelmann, J.A. 10733–35, and
`Dr. Alleyne, J.A. 10862–66. The ALJ found, however, that
`while Mr. Engelmann testified about use of the PM600 ma-
`chines, “Mr. Engelmann’s testimony . . . does not concern
`the PM300 products,” that Dr. Alleyne “testified about the
`PM600 and PM300 series products’ capabilities, not their
`use in the United States,” and that “Wirtgen [did] not cite
`to any additional testimony showing that a customer in the
`United States used a PM300 machine.” J.A. 253–54 &
`n.46. Wirtgen has not shown that the ALJ was unreason-
`able in reading the testimony simply not to show the in-
`fringing use of the PM300 machine in the United States.
`At oral argument, Wirtgen agreed that Mr. Engelmann
`was never specifically asked about the PM300 Series dur-
`ing the cited exchange, Oral Arg. at 7:03–7:15, and that it
`had not pointed the ALJ to other evidence showing that a
`direct act of infringement had occurred for the PM300 Se-
`ries, id. at 25:06–25:25. We therefore affirm the ALJ’s
`
`

`

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`14
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`CATERPILLAR PRODOTTI STRADALI v. ITC
`
`finding, adopted by the Commission, regarding the PM300
`Series.
`
`III
`For the foregoing reasons, the decision of the Interna-
`tional Trade Commission is affirmed in part, reversed in
`part, and vacated in part, and the matter is remanded for
`further proceedings consistent with this opinion.
`AFFIRMED IN PART, REVERSED IN PART,
`VACATED IN PART, AND REMANDED
`COSTS
`The parties shall bear their own costs.
`
`
`

`

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`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`CATERPILLAR PRODOTTI STRADALI S.R.L.,
`CATERPILLAR AMERICAS C.V., CATERPILLAR
`PAVING PRODUCTS, INC., CATERPILLAR INC.,
`Appellants
`
`v.
`
`INTERNATIONAL TRADE COMMISSION,
`Appellee
`
`WIRTGEN AMERICA, INC.,
`Intervenor
`
`-------------------------------------------------
`
`WIRTGEN AMERICA, INC.,
`Appellant
`
`v.
`
`INTERNATIONAL TRADE COMMISSION,
`Appellee
`
`CATERPILLAR PRODOTTI STRADALI S.R.L.,
`CATERPILLAR AMERICAS C.V., CATERPILLAR
`PAVING PRODUCTS, INC., CATERPILLAR INC.,
`Intervenors
`______________________
`
`2019-2445, 2019-1911
`
`

`

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`2
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`CATERPILLAR PRODOTTI STRADALI v. ITC
`
`______________________
`
`Appeals from the United States International Trade
`Commission in Investigation No. 337-TA-1067.
`______________________
`
`O’MALLEY, Circuit Judge, concurring in the judgment.
`
`
`I agree with the majority’s well-reasoned analysis af-
`firming the International Trade Commission’s (“Commis-
`sion”) decision as to the ’530 and ’309 patents. I also agree
`in principle with the majority that substantial evidence
`does not support the Commission’s finding of no induced
`infringement of the claimed methods of the ’641 patent. I
`write separately because, as I said in Suprema, I believe
`the Commission has no authority to bar products that are
`non-infringing at the date of importation and that will only
`become infringing if and when some future parties are in-
`duced to use the products in a way that infringes a method
`of use claim. Suprema, Inc. v. Int’l Trade Comm’n, 796
`F.3d 1338, 1354 (Fed. Cir. 2015) (en banc) (O’Malley, J.,
`dissenting).
`The Commission’s authority to issue exclusion orders
`must be rooted in its enabling statute. See Kyocera Wire-
`less Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1355 (Fed.
`Cir. 2008). The plain language of 19 U.S.C. § 1337 ties the
`Commission’s authority to the importation, sale for impor-
`tation, or sale within the United States after importation
`of “articles that—infringe” a valid United States patent.
`See 19 U.S.C. § 1337(a)(1)(B)(i). Thus, as I said in Su-
`prema, the statute’s focus is on whether the article in ques-
`tion directly infringes a valid United States patent at the
`time of importation. Suprema, 796 F.3d at 1356–57
`(O’Malley, J., dissenting).
`The statute straightforwardly applies, for example, in
`the context of composition of matter claims, where direct
`infringement occurs upon importation of the article. The
`
`

`

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`CATERPILLAR PRODOTTI STRADALI v. ITC
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`3
`
`statute does not apply as straightforwardly, however, in
`the context of method of use claims because direct infringe-
`ment of such claims typically occurs post-importation only
`if and when a customer uses the article to perform the steps
`of the claimed method. Unlike the Suprema majority, I do
`not believe Section 1337 grants the Commission authority
`under an inducement theory of infringement to issue exclu-
`sionary orders for “articles that—infringe” method of use
`patents. See id. at 1357 (“When the Commission attempts
`to enforce an exclusion order under § 1337(a)(1)(B)(i) on
`grounds that an importer or customer may later complete
`steps of a method claim post-importation, a necessary pred-
`icate of § 1337(a)(1)(B)(i) is missing—there are no ‘articles
`that—infringe’ because there is no infringement.”) (O’Mal-
`ley, J., dissenting).
`As the majority discusses, Wirtgen’s only theory of di-
`rect infringement of method claims 11 and 17 of the ’641
`patent involves a choice by Caterpillar’s customers to oper-
`ate the road milling machines in an infringing manner far
`from the point of importation. See Maj. Op. at 7–9. As we
`are bound by Suprema, I concur with the majority, but con-
`tinue to believe that the Commission lacks the authority
`under Section 1337 to issue an exclusion order in these cir-
`cumstances.
`
`