UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`
`
`
`
`
`In the Matter of
`
`
`
`CERTAIN ROAD CONSTRUCTION
`MACHINES AND COMPONENTS
`THEREOF
`
`
`Inv. No. 337-TA-1088
`(Rescission)
`
`COMMISSION ORDER
`
`The Commission instituted this investigation on November 29, 2017, based on a
`
`
`
`
`
`
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`complaint, as supplemented, filed by Caterpillar Inc. of Peoria, Illinois and Caterpillar Paving
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`Products, Inc. of Minneapolis, Minnesota (collectively, “Caterpillar”). See 82 Fed. Reg. 56625-
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`26 (Nov. 29, 2017). The complaint, as supplemented, alleges violations of section 337 of the
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`Tariff Act of 1930, as amended (19 U.S.C. 1337) (“section 337”), based upon the importation
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`into the United States, the sale for importation, and the sale within the United States after
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`importation of certain road construction machines and components thereof by reason of
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`infringement of certain claims of U.S. Patent Nos. 7,140,693 (“the ’693 patent”); 9,045,871; and
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`7,641,419. See id. The notice of investigation identifies the following respondents: Wirtgen
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`GmbH of Windhagen, Germany; Joseph Vögele AG of Ludwigshafen, Germany; Wirtgen Group
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`Holding GmbH of Windhagen, Germany; and Wirtgen America, Inc. of Antioch, Tennessee
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`(collectively, “Wirtgen”). See id. The Office of Unfair Import Investigations is not a party to
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`this investigation. See id.
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`On June 27, 2019, the Commission found a violation of section 337 in the above-
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`identified investigation based on the infringement of claim 19 of the ’693 patent, and issued a
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`limited exclusion order against the infringing articles and a cease and desist order against
`
`Wirtgen America (collectively, “the remedial orders”). The United States Customs and Border
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`1
`
`
`Washington, D.C.
`
`
`
`
`
`
`In the Matter of
`
`
`
`CERTAIN ROAD CONSTRUCTION
`MACHINES AND COMPONENTS
`THEREOF
`
`
`Inv. No. 337-TA-1088
`(Rescission)
`
`COMMISSION ORDER
`
`The Commission instituted this investigation on November 29, 2017, based on a
`
`
`
`
`
`
`
`complaint, as supplemented, filed by Caterpillar Inc. of Peoria, Illinois and Caterpillar Paving
`
`Products, Inc. of Minneapolis, Minnesota (collectively, “Caterpillar”). See 82 Fed. Reg. 56625-
`
`26 (Nov. 29, 2017). The complaint, as supplemented, alleges violations of section 337 of the
`
`Tariff Act of 1930, as amended (19 U.S.C. 1337) (“section 337”), based upon the importation
`
`into the United States, the sale for importation, and the sale within the United States after
`
`importation of certain road construction machines and components thereof by reason of
`
`infringement of certain claims of U.S. Patent Nos. 7,140,693 (“the ’693 patent”); 9,045,871; and
`
`7,641,419. See id. The notice of investigation identifies the following respondents: Wirtgen
`
`GmbH of Windhagen, Germany; Joseph Vögele AG of Ludwigshafen, Germany; Wirtgen Group
`
`Holding GmbH of Windhagen, Germany; and Wirtgen America, Inc. of Antioch, Tennessee
`
`(collectively, “Wirtgen”). See id. The Office of Unfair Import Investigations is not a party to
`
`this investigation. See id.
`
`On June 27, 2019, the Commission found a violation of section 337 in the above-
`
`identified investigation based on the infringement of claim 19 of the ’693 patent, and issued a
`
`limited exclusion order against the infringing articles and a cease and desist order against
`
`Wirtgen America (collectively, “the remedial orders”). The United States Customs and Border
`
`1
`
`
`
`Protection (“Customs”) subsequently excluded six Wirtgen redesigned series 1810 machines in
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`December 2019. Based on such exclusion, the Commission issued a seizure and forfeiture order
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`(“SFO”) on January 14, 2020 (corrected January 23, 2020) against Wirtgen America. On March
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`13, 2020, Wirtgen filed an appeal from the SFO (“the SFO appeal”) to the U.S. Court of Appeals
`
`for the Federal Circuit (“Federal Circuit”).
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`On January 30, 2020, Wirtgen filed a civil action against Customs and related U.S.
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`government parties (collectively, “the U.S. government”) in the U.S. Court of International
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`Trade (“CIT”) under 28 U.S.C. 1581(a) and (i). The Commission moved to intervene to contest
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`the CIT’s exercise of jurisdiction, and the CIT denied the Commission’s motion. The CIT
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`exercised jurisdiction under section 1581(a) over the U.S. government’s objections and granted
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`summary judgment for Wirtgen as to the excluded entries of the redesigned machines at issue.
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`The CIT also ordered Customs to release the machines for entry into the United States no later
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`than Thursday, May 21, 2020. On July 14, 2020, the U.S. government appealed the CIT’s
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`decision to the Federal Circuit (“the CIT appeal”).
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`On May 21, 2020, arguing that the predicate for the SFO had been invalidated by the
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`CIT, Wirtgen filed an emergency motion to stay or to temporarily rescind the SFO pending
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`appeal of the CIT’s decision. On June 10, 2020, the Commission determined to deny Wirtgen’s
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`motion to stay, but granted Wirtgen’s motion for temporary rescission of the SFO, thus
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`temporarily suspending the SFO until such time as the CIT’s decision is modified, stayed, or
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`overturned. On June 15, 2020, the Commission filed a motion to stay the SFO appeal pending
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`reinstatement of the SFO by the Commission or resolution of any CIT appeal by the Federal
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`Circuit. On July 29, 2020, the Federal Circuit granted the Commission’s motion to stay the SFO
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`appeal until the suspension of the SFO is lifted or until final disposition of the CIT appeal.
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`2
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`
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`Concurrently, on January 16, 2020, the Commission instituted a modification proceeding
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`to determine whether Wirtgen’s redesigned series 1810 machines infringe claim 19 of the ’693
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`patent. On August 31, 2020, the Commission determined that Wirtgen’s redesigned machines
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`do not infringe and issued modified remedial orders exempting the redesigned machines from the
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`scope of the orders. Caterpillar did not appeal the Commission’s non-infringement
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`determination to the Federal Circuit, and therefore, the Commission’s non-infringement
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`determination is now final. Consequently, on November 5, 2020, the U.S. government moved
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`to dismiss the CIT appeal. On December 4, 2020, the Federal Circuit dismissed the CIT appeal.
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`In view of the Federal Circuit’s dismissal of the CIT appeal, it is hereby ORDERED that:
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`(1) The SFO is permanently RESCINDED;
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`(2) The Secretary shall serve a copy of this Order on the Secretary of the Treasury
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`and all parties of record and shall publish notice thereof in the Federal Register.
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` By order of the Commission.
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`
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`Issued: December 7, 2020
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`
`
`Lisa R. Barton
`Secretary to the Commission
`
`3
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`
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`CERTAIN ROAD CONSTRUCTION MACHINES AND
`COMPONENTS THEREOF
`
`Inv. No. 337-TA-1088
`(Modification)
`
`PUBLIC CERTIFICATE OF SERVICE
`
`I, Lisa R. Barton, hereby certify that the attached COMMISSION ORDER
`has been served to the following parties as indicated, on December 7, 2020.
`
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`On Behalf of Requester Wirtgen Gmbh, Joseph Vogele AG,
`Wirtgen Group Holding GmbH, and Wirtgen America, Inc.:
`Daniel E. Yonan, Esq.
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1100 New York Avenue
`Washington, DC 20005
`Email: dyonan@sternekessler.com
`
`On Behalf of Respondents Caterpillar Inc. and Caterpillar
`Paving Products, Inc :
`Luke McCammon, Esq.
`FINNEGAN, HENDERSON, FARABOW, GARRETT,
`GARRETT & DUNNER, LLP
`901 New York Avenue NW
`Washington, DC 20001
`Email: luke.mccammon@finnegan.com
`
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`
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