Case 1:17-cv-00770-JDW Document 409-6 Filed 06/11/24 Page 1 of 32 PageID #: 38190
`Case 1:17-cv-00770-JDW Document 409-6 Filed 06/11/24 Page 1 of 32 PagelD #: 38190
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`EXHIBIT 6
`EXHIBIT 6
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`

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`Case 1:17-cv-00770-JDW Document 409-6 Filed 06/11/24 Page 2 of 32 PageID #: 38191
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`U.S. Department of Homeland Security
`Washington, DC 20229
`
`U.S. Customs and Border Protection
`
`
`
`HQ H314355
`
`May 19, 2021
`
`
`
`
`OT:RR:BSTC:EOE H314355 JW
`
`CATEGORY: 19 U.S.C. § 1337; Unfair Competition
`
`Mr. James R. Barney
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, D.C. 20001- 4413
`
`VIA EMAIL: cat-wirtgen-177-customs@finnegan.com
`
`RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order;
`Investigation No. 337-TA-1067; Certain Road Milling Machines and Components
`Thereof.
`
`
`Dear Mr. Barney:
`
`
`Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”),
`Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter.
`We find that Caterpillar Prodotti Stradali S.r.l., Caterpillar Americas CV, Caterpillar Paving
`Products Inc. and Caterpillar Inc. (collectively, “Caterpillar”) has met its burden to show that
`Caterpillar’s updated PM600 and PM800 cold planar machines (“Updated Machines” or “articles
`at issue”) do not infringe claim 29 of U.S. Patent No. 7,828,309 (“the ‘309 patent”) or claims 2, 6,
`16, and 23 of U.S. Patent No. 9,656,530 (“the ‘530 patent”).1 Thus, CBP’s position is that the
`Updated Machines are not subject to the limited exclusion order issued by the U.S. International
`Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1067 (“the underlying
`investigation” or “the 1067 investigation”), pursuant to section 337 of the Tariff Act of 1930, as
`
`1 We note that on March 15, 2021, the Court of Appeals for the Federal Circuit (“Federal Circuit”)
`issued a decision in the appeal and cross-appeal from the Commission’s Final Determination in
`the 1067 investigation. Specifically, the Federal Circuit affirmed the Commission’s determination
`as to the ‘530 patent and the ‘309 patent, but reversed in part, vacated in part, and remanded for
`further proceedings as to the ‘641 patent. Caterpillar Prodotti Stradali S.R.L. v. ITC, Nos. 2019-
`2445, 2019-1911, 2021 U.S. App. LEXIS 7457 (Fed. Cir. Mar. 15, 2021). However, as of the date
`of this ruling letter, the Commission has not included any claims of the ‘641 patent in an exclusion
`order or directed CBP to refuse entry on this basis pursuant to 19 U.S.C. § 1337.
`1
`
`
`
`

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`amended, 19 U.S.C. § 1337 (“section 337”). We further note that determinations of the
`Commission resulting from the underlying investigation and a related proceeding under 19 C.F.R.
`Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify
`or revoke any contrary CBP ruling or decision pertaining to section 337 exclusion orders.
`
`
`This ruling letter is the result of a request for an administrative ruling from CBP under 19
`C.F.R. Part 177, which was conducted on an inter partes basis, upon consent of the parties. See,
`e.g., EOE Branch email to Parties dated January 26, 2021. The process involved the two parties
`with a direct and demonstrable interest in the question presented by the ruling request: (1) your
`client, Caterpillar, the ruling requester and respondent in the 1067 investigation; and (2) Wirtgen
`America, Inc. (“Wirtgen”), complainant in the 1067 investigation. See, e.g., 19 C.F.R. § 177.1(c).
`
`The parties were asked to clearly identify confidential information, including information
`subject to the administrative protective order in the underlying investigation, with [[red brackets]]
`in all of their submissions to the CBP. See, e.g., EOE Branch email to Parties dated January 26,
`2021; see also 19 C.F.R. §§ 177.2 and 177.8. If there is additional information in this ruling letter
`not currently bracketed in red [[ ]] that either party believes constitutes confidential information,
`and should be redacted from the published ruling, then the parties are asked to contact CBP within
`ten (10) working days of the date of this ruling letter. See, e.g., 19 C.F.R. § 177.8(a)(3).
`
`Please note that disclosure of information related to administrative rulings under 19 C.F.R.
`Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and
`19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws
`relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as
`amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974,
`as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in
`connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor
`of disclosure. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome
`that presumption with a request that is appropriately tailored and supported by evidence
`establishing that: the information in question is customarily kept private or closely-held and either
`that the government provided an express or implied assurance of confidentiality when the
`information was shared with the government or there were no express or implied indications at the
`time the information was submitted that the government would publicly disclose the information.
`See, e.g., U.S. Department of Justice, Office of Information Policy: Step-by-Step Guide for
`Determining if Commercial or Financial Information Obtained from a Person is Confidential
`Under Exemption 4 of the FOIA (updated 10/7/2019).
`
`I.
`
`
`BACKGROUND
`
`A. ITC Investigation No. 337-TA-1067
`
`1. Procedural History at the ITC
`
`
`
`
`
`The Commission instituted Investigation No. 337-TA-1067 on August 25, 2017, based on
`a complaint filed by Wirtgen America, Inc. of Antioch, Tennessee. Certain Road Milling
`Machines and Components Thereof, Inv. No. 337-TA-1067, EDIS Doc. ID 684600, Public
`
`
`
`2
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`

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`Commission Opinion (Aug. 7, 2019) (“Comm’n Op.”) at 1 (citing 82 Fed. Reg. 40595-96 (Aug.
`25, 2017)). The complaint alleged a violation of section 337 by reason of infringement of certain
`claims of U.S. Patent Nos. 7,530,641 (“the ‘641 patent”); 7,828,309 (“the ‘309 patent”); 9,624,628
`(“the ‘628 patent”);2 9,644,340 (“the ‘340 patent”); and 9,656,530 (“the ‘530 patent”). Comm’n
`Op. at 1. The notice of investigation named Caterpillar Bitelli SpA of Minerbio BO, Italy;3
`Caterpillar Prodotti Stradali S.r.L. of Minerbio BO, Italy; Caterpillar Americas CV of Geneva,
`Switzerland; Caterpillar Paving Products, Inc. of Minneapolis, Minnesota; and Caterpillar Inc., of
`Peoria, Illinois. Id. at 1-2. The Commission’s Office of Unfair Import Investigations (“OUII”)
`was named as a party, but later withdrew from the investigation. Id. at 2 (citation omitted).
`
`On October 1, 2018, the Administrative Law Judge (“ALJ”) issued his final initial
`determination (“FID”) finding a violation of section 337. Id. Specifically, the ALJ determined
`that a violation of section 337 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 the ‘309 and ‘530 patents, but that such violation did not
`occur with respect to the ‘641 and ‘340 patents. Id.
`
`On October 18, 2018, the ALJ issued his Recommended Determination on remedy and
`bonding, recommending that, if the Commission finds a violation of section 337 in the
`investigation, the Commission should: (1) issue a limited exclusion order (“LEO”) covering
`products that infringe the patent claims as to which a violation of section 337 has been found; (2)
`issue a cease and desist order; and (3) require no bond during the Presidential review period. Id.
`(citation omitted).
`
`On April 17, 2019, the Commission issued a notice in which it determined to review in part
`the FID. Comm’n Op. at 3 (citation omitted). In the notice, the Commission determined not to
`review any issues relating to the ‘340, ‘641, and ‘530 patents and reversed the finding of no
`invalidity as to claim 36 of the ‘309 patent. Id. (citation omitted). Thus, the Commission found a
`violation of section 337 as to the ‘309 and ‘530 patents, and requested written submissions on
`remedy, the public interest, and bonding. Id. (citation omitted).
`
`The Commission determined that the appropriate remedy was: “(a) an LEO prohibiting
`the unlicensed entry of infringing road-milling machines and components thereof covered by one
`or more of claim 29 of the ‘309 patent or claims 2, 5, 16, or 23 of the ‘530 patent that are
`manufactured abroad for or on behalf of, or imported by or on behalf of, any of the Respondents
`or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their
`successors or assigns; and (b) CDOs directed against Caterpillar Paving Products, Inc. of
`Minneapolis, Minnesota, and Caterpillar Inc., of Peoria, Illinois, and their affiliated companies,
`
`2 Wirtgen filed an unopposed motion on March 14, 2018 seeking to terminate the investigation as
`to the ‘628 patent. Id. at 1, fn. 1. The motion was granted by the Administrative Law Judge in an
`ID (Order No. 30) issued on March 27, 2018 (unreviewed on April 27, 2018). Id.
`
` 3
`
`
`
` Wirtgen filed an opposed motion on December 4, 2017 seeking to terminate respondent
`Caterpillar Bitelli SpA based on the withdrawal of the complaint as to that respondent. Id. at 1,
`fn. 2. The Administrative Law Judge granted the motion in an ID (Order No. 11) that issued on
`December 19, 2017 (unreviewed on January 18, 2018). Id.
`3
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`

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`parents, subsidiaries, or other related business entities, or their successors or assigns.” Id. at 40.
`The Commission further found “consideration of the public interest factors does not warrant denial
`of the remedial relief [and] set [a] bond during the period of Presidential review.” Id.; see also
`Certain Road Milling Machines and Components Thereof, Investigation No. 337-TA-1067, EDIS
`Doc. ID 682174, Limited Exclusion Order (July 18, 2019) (“1067 LEO”).
`
`
`2. The Legacy Products in the Underlying Investigation
`
`The legacy products in the underlying investigation were cold planers. Certain Road
`Milling Machines and Components Thereof, Inv. No. 337-TA-1067, EDIS Doc. ID 684600, Public
`Final Initial Determination (Oct. 31, 2018) (“FID”) at 7. In particular, Wirtgen accused
`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 of the
`asserted patents. Id. at 8 (citation omitted). Wirtgen further accused 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. The ALJ determined that the PM620 model was representative of
`the PM600 Series and PM800 Series products, and that the PM312 model was representative of
`the PM300 Series products. Id.
`
`
`3. The Patents and Claims in the 1067 LEO
`
`
`
`The 1067 LEO prohibits the unlicensed entry for consumption of road-milling machines
`and components thereof that infringe claim 29 of the ‘309 patent or claims 2, 5, 16, or 23 of the
`‘530 patent manufactured for or on behalf of, or imported by or on behalf of, Caterpillar, or any of
`their affiliated companies, parents, subsidiaries, contractors, joint venture, agents, distributors, or
`other related business entities, or their successor or assigns. See ¶ 1 of 1067 LEO.
`
`
`a. Claim 29 of the ‘309 patent
`
`
`The ‘309 patent is titled “Road-building machine” and “directed to a four-way floating-
`axle that aims to improve the stability of road-building machines.” FID at 41 (citations omitted).
`Claim 29 of the ‘309 patent depends from independent claim 26. FID at 55. Both claims 26 and
`29 of the ‘309 patent are reproduced below:
`
`
`26. A road-building machine, comprising: a chassis having a forward direction; a
`left front wheel or caterpillar; a right front wheel or caterpillar; a left rear wheel or
`caterpillar; a right rear wheel or caterpillar; a first working cylinder rigidly
`connected to the chassis and connected to the left front wheel or caterpillar for
`adjusting a height of the left front wheel or caterpillar relative to the chassis; a
`second working cylinder rigidly connected to the chassis and connected to the right
`front wheel or caterpillar for adjusting a height of the right front wheel or caterpillar
`relative to the chassis; a third working cylinder rigidly connected to the chassis and
`connected to the left rear wheel or caterpillar for adjusting a height of the left rear
`wheel or caterpillar relative to the chassis; a fourth working cylinder rigidly
`connected to the chassis and connected to the right rear wheel or caterpillar for
`adjusting a height of the right rear wheel or caterpillar relative to the chassis; a
`
`
`
`4
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`

`

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`rotating working roller or rotor supported from the chassis between the front wheels
`or caterpillars and the rear wheels or caterpillars and extending transversely to the
`forward direction; each of the working cylinders including at least one working
`chamber filled with a pressure medium; and coupling lines connecting the working
`cylinders to one another and providing a positive hydraulic coupling between the
`working cylinders in such a way that the left front wheel or caterpillar and the right
`rear wheel or caterpillar are adjusted in height in the same direction and in the
`opposite direction to the right front wheel or caterpillar and the left rear wheel or
`caterpillar.
`
`
`See FID at 43; ‘309 patent.
`
`
`29. The road-building machine of claim 26, wherein the machine has a four sided
`stability pattern having a widest transverse dimension, transverse to the forward
`direction of the chassis, which widest transverse dimension falls within a footprint
`of the working roller or rotor.
`
`
`Id. In the underlying investigation, the parties agreed that the term “positive hydraulic coupling,”
`in claim 26 means “hydraulically connected in such a way that movement of one actuating member
`causes another actuating member to move.” FID at 44 (citation omitted). However, the parties
`disputed the construction of, inter alia, the phrase in claim 26, “are adjusted in height in the same
`direction and in the opposite direction.” Id. The ALJ construed this phrase to mean “adjusted in
`height similarly and inversely.” FID at 48; see also 84 Fed. Reg. at 16882-84.4
`
`
`b. Claims 2, 5, 16, or 23 of the ‘530 Patent
`
`
`
`The ‘530 patent is titled “Automotive construction machine, as well as lifting column for
`a construction machine” and in general concerns “the lifting columns, or legs, that are used to raise
`or lower a construction machine.” FID at 343-4. “The columns are equipped with sensors that
`relay position information to a controller that uses the information to regulate the lifting position
`of the columns and the vertical depth (e.g., the height) of the drum.” Id. at 344 (citation omitted).
`
`In the ‘530 patent, claim 2 depends from claim 1, and claims 5 and 16 depend from claim
`
`2; while claim 23 depends from claim 22, which in turn depends from claim 1. Claims 1, 2, 5, 16,
`and 22, 23 of the ‘530 patent are reproduced below:
`
`
`1. A road construction machine, comprising:
`
` a
`
` a
`
` machine frame;
`
` working drum supported from the machine frame for working a ground surface
`or traffic surface;
`
`
`4 The Commission reversed the ALJ’s finding that claim 36 of the ‘309 patent is not invalid, but
`did not disturb the remainder of the ALJ’s findings with respect to the ‘309 and ‘530 patents. See
`e.g., Comm’n Op. at 3 (citing 84 Fed. Reg. at 16882-84).
`5
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`
`
`

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` a
`
` plurality of ground engaging supports for supporting the construction machine on
`the ground surface or traffic surface;
`
` a
`
` plurality of lifting columns, each one of the lifting columns being connected
`between the machine frame and one of the ground engaging supports,
`
`each one of the lifting columns including two telescoping hollow column members
`and at least one piston cylinder unit located within the telescoping hollow column
`members for adjusting a height of the lifting column so that each one of the lifting
`columns is adjustable in height relative to the machine frame,
`
`each lifting column having a lifting position corresponding to a position of one of
`the two telescoping hollow column members relative to the other of the two
`telescoping hollow column members; and
`
` a
`
` plurality of lifting position sensors, each lifting position sensor being coupled
`with elements of one of the lifting columns, which elements are capable of being
`displaced relative to one another in accordance with the lifting position of the lifting
`column in such a manner that a signal including information on a current lifting
`position of the lifting column is produced by the lifting position sensor,
`
`wherein each of the lifting position sensors is connected to the at least one piston
`cylinder unit located within its associated lifting column.
`
`
`*
`
`*
`
`*
`
`2. The road construction machine of claim 1, further comprising:
`
` a
`
` controller configured to receive the signals from the lifting position sensors, and
`to regulate the lifting positions of the lifting columns in response at least in part to
`the signals from the lifting position sensors.
`
`
`*
`
`*
`
`*
`
`
`
`
`
`
`
`5. The road construction machine of claim 2, wherein:
`
`the controller is configured to provide at least one limiting value for the height
`adjustment of each of the lifting columns.
`
`
`
`16. The road construction machine of claim 2, wherein:
`
`the controller is configured to raise the lifting columns synchronously to one
`another.
`
`*
`
`*
`
`*
`
`6
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`
`
`*
`
`*
`
`*
`
`22. The road construction machine of claim 1, further comprising:
`
`an indicator device operable to display the lifting positions of each of the lifting
`columns corresponding to the signals produced by the lifting position sensors.
`
`
`*
`
`*
`
`*
`
`
`
`
`
`23. The road construction machine of claim 22, wherein:
`
`the plurality of lifting columns includes two front lifting columns and two rear
`lifting columns; and
`
`the indicator device is operable to display the lifting positions of the two front
`lifting columns and two rear lifting columns.
`
`
`See ‘530 patent; see also FID at 344-5 (citing JX-0003 at 7:51-9:55).
`
`In the underlying investigation, the parties agreed that the phrase in claim 1 of the ‘530
`
`patent “each lifting position sensor being coupled with elements of one of the lifting columns,
`which elements are capable of being displaced relative to one another in accordance with the lifting
`position of the lifting column in such a manner that a signal including information on a current
`lifting position of the lifting column is produced by the lifting position sensor” should be afforded
`its plain and ordinary meaning, which is “each lifting position sensor is coupled to two or more
`components within its respective lifting column, these components are capable of being displaced
`relative to one another such that their displacement reflects the lifting position of the lifting
`column, the lifting position sensor generates a signal that contains information about the lifting
`position of the column based on the displacement of the components.” FID at 347.
`
`The parties disputed the construction of the “controller” term, which appears in claims 2,
`
`4, 5, 8-10, 13-19, 24, and 25 of the ‘530 patent. FID at 347. The ALJ construed the term
`“controller” as used in the ‘530 patent to mean “a standard electronic controller” such as a single-
`board controller or a programmable-logic controller available at the time of the patent, and found
`that the term “controller” is not functionally claimed. Id. at 350-1.
`
`
`B. Caterpillar Prodotti Stradali S.R.L. v. ITC, Nos. 2019-2445, 2019-1911, 2021 U.S.
`App. LEXIS 7457 (Fed. Cir. Mar. 15, 2021)
`
`
`As noted above, Caterpillar appealed the Commission’s determination with respect to the
`‘530 and ‘309 patents to the Federal Circuit, and Wirtgen cross-appealed as to the ‘641 patent. On
`March 15, 2021, the Federal Circuit affirmed the Commission’s decision as to the ‘530 and ‘309
`patents, but reversed in part, vacated in part, and remanded as to the ‘641 patent. On May 6, 2021,
`the Federal Circuit’s mandate issued to the Commission. See Fed. R. App. P. 41(b).
`
`
`
`
`7
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`As of the time of this ruling letter, the Commission has not issued an order requesting views
`of the parties regarding the action to take in light of the Federal Circuit’s judgment or included any
`claims of the ‘641 patent in an exclusion order that directs CBP to refuse entry to articles on this
`basis.
`
`
`C. 19 C.F.R. Part 177 Ruling Request
`
`
`
`1. Procedural History
`
`On October 14, 2020, Caterpillar submitted a letter to CBP requesting an administrative
`ruling pursuant to 19 C.F.R. Part 177, which included Exhibits 1 to 11 (collectively, “Ruling
`Request”).5 Caterpillar is “requesting a ruling that: (1) Caterpillar’s 2020 PM600 and PM800
`Updated Machines do not infringe claims 2, 5, 16, and 23 of the ‘530 patent . . . or claim 29 of the
`‘309 patent. . .; and (2) prospective imports of these new machines would, therefore not violate the
`LEO.” Ruling Request at 2. In an email dated January 21, 2021, Caterpillar confirmed that they
`finalized and executed a non-disclosure agreement with Wirtgen and provided a copy of the Ruling
`Request to Wirtgen. See Caterpillar Email to EOE Branch dated January 21, 2021.6
`
`On January 26, 2021, the EOE Branch had an initial conference call with Caterpillar and
`Wirtgen where both parties agreed to conduct the ruling request process on an inter partes basis
`administered by the EOE Branch. See EOE Branch email to Parties dated January 26, 2021. On
`February 4, 2021, the EOE Branch had a call with the parties to discuss their views with respect
`to a schedule for the inter partes ruling request process. See EOE Branch email to Parties dated
`February 3, 2021. On February 8, 2021, the parties provided the EOE Branch with a joint,
`proposed schedule for the inter partes ruling request process. See Caterpillar email to EOE Branch
`dated February 8, 2021. On February 9, 2021, the EOE Branch agreed to the joint, proposed
`schedule, adding only one additional date, a “Potential extension of Anticipated Date for EOE
`Branch Ruling.” See EOE Branch email to Parties dated February 9, 2021. On February 26, 2021,
`the parties provided to the EOE Branch a joint, proposed modified schedule. See Caterpillar email
`to EOE Branch dated February 26, 2021. On March 1, 2021, the EOE Branch agreed to this joint,
`proposed schedule setting May 19, 2021 as the estimated date for issuance of the ruling letter with
`the potential to extend to June 9, 2021. See EOE Branch email to Parties dated March 1, 2021.
`
`On March 18, 2021, the EOE Branch had a subsequent call with the parties to discuss their
`views regarding what effect the Federal Circuit’s decision in the appeal and cross-appeal noted
`above would have on the ongoing ruling request process and what the parties propose in light of
`those views. See EOE Branch email to Parties dated March 18, 2021. Following this call, the
`EOE Branch extended Wirtgen’s time to file their response to the Ruling Request by 2 calendar
`days, and noted that in this case, it was the EOE Branch’s position that unless, and until, the
`Commission includes the claims of the ’641 patent in an exclusion order issued under 19 U.S.C. §
`
`5 A version of the Ruling Request with [[red double brackets]] to indicate confidential information
`was submitted to the EOE Branch on January 21, 2021 as well.
`
` 6
`
` A copy of the executed Non-Disclosure Agreement between Caterpillar Inc. and Wirtgen
`America, Inc. was provided to the EOE Branch on January 29, 2021.
`
`
`
`
`8
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`1337, CBP would not have authority to exclude articles from entry on this basis or address whether
`any articles infringe the claims of the ’641 patent in response to a request for an administrative
`ruling submitted under 19 C.F.R. Part 177. See EOE Branch Email to Parties dated March 18,
`2021.
`
`
`
`On March 22, 2021, Wirtgen provided its response to the Ruling Request, which included
`Exhibits 12 to 29 (collectively, “Wirtgen Response”). On April 2, 2021, Caterpillar provided its
`reply to Wirtgen’s Response, which included Exhibits 30 to 54 (collectively, “Caterpillar Reply”).
`On April 14, 2021, Wirtgen provided its sur-reply (“Wirtgen Sur Reply”) to Caterpillar’s Reply.
`
`On April 21, 2021, in line with the schedule, an oral discussion was held with the EOE
`Branch. See e.g., EOE Branch email to Parties dated April 7, 2021. Due to the national emergency
`over the coronavirus pandemic, the oral discussion was held remotely by video conference, and
`the parties provided their respective presentation materials to the EOE Branch on April 21, 2021
`(hereinafter, “Caterpillar PowerPoint” and “Wirtgen PowerPoint”). On April 28, 2021, both
`Caterpillar and Wirtgen provided their post oral discussion submissions: Caterpillar’s post oral
`discussion submission further included Exhibits 55 to 60 (respectively, “Caterpillar Post
`Discussion Submission” and “Wirtgen Post Discussion Submission”).
`
`
`2. The Articles at Issue
`
`
`
`The articles at issue in the Ruling Request are Caterpillar’s 2020 PM600 and PM800
`Updated Machines (“Updated Machines” or the “articles at issue”). Ruling Request at 2. The
`articles at issue are road-milling machines, specifically “updated” PM600 series and PM800 series
`machines, which will have “a serial number [[higher than 300 on [the name plate of the machine].
`. . .”]] Ruling Request at 2, 11; Caterpillar Post Discussion Submission, Exhibit 55 at 27:21-22;
`28:18-22.
`
`Similar to the legacy PM600 and PM800 machines, these Updated Machines “include a
`machine frame supported at four corners by crawler tracks connected to the frame via height
`adjustable leg columns.” Ruling Request at 11. There is “[a] milling drum positioned between
`the front and rear tracks and oriented transverse to a forward-rearward travel direction of the cold
`planar” and “equipped with cutting tools that cut into the ground surface when brought in contact
`with the ground surface.” Id. The height adjustable columns are made of upper cylindrical leg
`tubes, which are fixed to the machine frame at each corner of the machine, and lower cylindrical
`leg tubes, which are each fixed to a track. Id. A hydraulic cylinder runs through the cylindrical
`leg tubes, and the upper and lower cylindrical leg tubes telescope into and out of each other when
`the hydraulic cylinder extends and retracts. Id. As the upper cylindrical leg tube is fixed to the
`machine frame, the machine frame, and consequently, the milling drum fixed to the machine frame
`is positioned by the extension and retraction of the hydraulic cylinders inside each of the four legs.
`Id.
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`
`However, in contrast to the legacy PM600 and PM800 machines, Caterpillar explains that,
`in the Updated Machines, it has [[removed the sensor, i.e., the sensor transducer and position
`magnet, on the hydraulic cylinders within the lifting columns]]. Id.; see also Caterpillar Post
`Discussion Submission, Exhibit 55 at 40:7-23 ([[“Caterpillar is using different hydraulic cylinders.
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`9
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`Case 1:17-cv-00770-JDW Document 409-6 Filed 06/11/24 Page 11 of 32 PageID #: 38200
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`. . they’re not smart cylinders. They’re different cylinders now. They have nothing in there at
`all.”]]). The photograph below is of the hydraulic cylinders used in the Updated Machines and
`reveal the absence of the [[sensor transducer]] that appeared in the legacy product. Ruling Request,
`Exhibit 10.
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`[[
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`Id. The photographs below of an Updated Machine, i.e., the photographs on the right hand side
`(the photographs on the left hand side are of a legacy machine),7 further show that [[the sensor on
`the hydraulic cylinder inside each of the lifting columns has been removed.]]8 See e.g., Caterpillar
`Reply at 5; Ruling Request, Exhibit 10.
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`[[
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`7 See also Caterpillar Reply, Exhibit 40 at 40:22 to 41:1-5 ([[“These photographs are from two
`different machines manufactured in North Little Rock. The photos on the left are from an 02A
`build serial number, and the photographs on the right are from an 02B build serial number.”]]).
`
` 8
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` [[“Sensor removed” does not mean that the sensor was previously on the machine and taken off
`that particular machine, rather “[t]hat means that the picture on the right shows a machine . . . with
`no sensor present.”]] Caterpillar Reply, Exhibit 40 at 41:6-18.
`10
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`Case 1:17-cv-00770-JDW Document 409-6 Filed 06/11/24 Page 12 of 32 PageID #: 38201
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`-down view with hydraulic cylinder inside machine
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`[[
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`11
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`Case 1:17-cv-00770-JDW Document 409-6 Filed 06/11/24 Page 13 of 32 PageID #: 38202
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`Ruling Request, Exhibit 10.
`
`Instead, each of the two rear lifting columns of the Updated Machines have two “proximity
`
`switches” mounted on them; specifically, the two proximity switches on each lifting column are
`both mounted on the upper cylindrical leg tube of the lifting column. Ruling Request at 11. The
`front two lifting columns of the Updated Machines do not have any proximity sensors. Id. at 12,
`fn. 4. These proximity switches in the Updated Machines are [[used for a service height feature
`and an auto stop feature]]. Id. at 12. In particular, the [[proximity switches are used for three
`functions: scratch auto stop, pre-service auto stop, and service height]]. Caterpillar Reply, Exhibit
`40 at 76:18–77:9. [[“The bottom proximity switches on the rear two legs are used to determine
`when the machine is in its highest elevated position (i.e., the pre service and service height
`positions)[,]”]] while the [[“top proximity switches on the rear two legs are used to determine when
`the machine is in a lower position (i.e., the scratch auto stop position).”]] Caterpillar Post
`Discussion Submission at 3. [[“Each proximity switch emits a lateral, dome shaped field into the
`upper cylindrical leg tube to which it is attached.”]] Ruling Request at 12.9 [[As the lower
`cylindrical leg tube telescopes within the upper cylindrical leg tube, it may enter and exit the switch
`fields, and thus, the switches identify whether the lower cylindrical leg tube is somewhere within
`or outside the switch field]]. Id. The photograph below of the two rear lifting columns of an
`Updated Machine, i.e., the photograph on the right hand side (the photograph on the left hand side
`are of a legacy machine) show that each of the two rear lifting columns have two proximity
`switches mounted on mounted on the upper cylindrical leg tube of the lifting column. Id. at 11;
`Ruling Request, Exhibit 10.
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`]]
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`[[
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`The Parts Manual for the PM620 Updated Machine, October 2020 (Caterpillar Reply,
`Exhibit 31), and the Parts Manual for the PM820 Updated Machine, October 2020 (Caterpillar
`Reply, Exhibit 32) further include figures and references to proximity sensors. See e.g., Caterpillar
`Reply at 10-11. For example, as shown below, the Parts Manual for the PM620 Updated Machine,
`
`9 The [[proximity sensors are not magnetoresistive sensors]]. See Caterpillar Reply, Exhibit 40 at
`36:1-5 ([[“Q. Have all machines with the 02B build – do any of them contain magnetoresistive