Certain Road Construction Machines and Components Thereof Notice of Commission Determination To Institute a Modification Proceeding; Request for Written Submissions

Lisa Barton
International Trade Commission
23 January 2020

[Federal Register Volume 85, Number 15 (Thursday, January 23, 2020)]
[Notices]
[Pages 3944-3945]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-01022]



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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1088]


Certain Road Construction Machines and Components Thereof Notice 
of Commission Determination To Institute a Modification Proceeding; 
Request for Written Submissions

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to institute a modification proceeding in the 
above-captioned investigation and is requesting written submissions 
from the parties on the issues discussed herein.

FOR FURTHER INFORMATION CONTACT: Megan Valentine, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone 202-708-2301. Copies of non-
confidential documents filed in connection with this investigation are 
or will be available for inspection during official business hours 
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. 
International Trade Commission, 500 E Street SW, Washington, DC 20436, 
telephone (202) 205-2000. General information concerning the Commission 
may also be obtained by accessing its internet server at https://www.usitc.gov. The public record for this investigation may be viewed 
on the Commission's electronic docket (EDIS) at https://edis.usitc.gov. 
Hearing-impaired persons are advised that information on this matter 
can be obtained by contacting the Commission's TDD terminal on (202) 
205-1810.

SUPPLEMENTARY INFORMATION: 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, ``Complainants''). See 82 
FR 56625-26 (Nov. 29, 2017). The complaint, as supplemented, alleged 
violations of section 337 of the Tariff Act of 1930, as amended (19 
U.S.C. 1337), 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 identified the following respondents: Wirtgen 
GmbH of Windhagen, Germany; Joseph V[ouml]gele AG of Ludwigshafen, 
Germany; Wirtgen Group Holding GmbH (``Wirtgen Group'') of Windhagen, 
Germany; and Wirtgen America, Inc. (``Wirtgen America'') of Antioch, 
Tennessee. See id. The Office of Unfair Import Investigations was not a 
party to this investigation. See id.
    On February 14, 2019, the Administrative Law Judge (``ALJ'') issued 
a final initial determination (``FID'') finding a violation of section 
337 with respect to claim 19 of the '693 patent. On June 27, 2019, the 
Commission affirmed with modification the FID's findings. See 84 FR 
31910 (July 3, 2019). The Commission issued a limited exclusion order 
(``LEO'') against the infringing products of respondents Wirtgen GmbH, 
Wirtgen Group, and Wirtgen America (collectively, ``Wirtgen''), and a 
cease and desist order against Wirtgen America. See id. In particular, 
the LEO covers certain of Wirtgen's series 1810 road-milling machines 
which were found to infringe claim 19 of the '693 patent but explicitly 
does not cover Wirtgen's series 1310 road-milling machines, which were 
found not to infringe that claim. See Comm'n Op. at 46, 50; LEO at ] 2 
(including an explicit exemption for Wirtgen's series 1310 machines).
    On August 9 and 27, 2019, respectively, Wirtgen filed a first 
motion before the Commission and before the Federal Circuit requesting 
a stay of the remedial orders pending appeal. See ECF No. 2 (Appeal No. 
19-2320). On September 12, 2019, the Commission denied Wirtgen's 
motion. EDIS Doc. No. 688119. On October 10, 2019, the Federal Circuit 
denied Wirtgen's motion.
    On December 6, 2019, the Commission received a letter from United 
States Customs and Border Protection (``CBP'') requesting clarification 
as to whether the Commission adjudicated any redesigned versions of 
Wirtgen's series 1810 milling machines. See EDIS Doc. No. 699429. On 
December 12, 2019, the Commission responded to CBP's letter and 
confirmed that it did not adjudicate Wirtgen's redesigned series 1810 
machines. See EDIS Doc. No. 699436.
    On December 18, 2019, CBP excluded certain Wirtgen cold milling 
machines (Models W 120 XFi and W 120 XTi) from entry into the United 
States.
    On December 31, 2019, Wirtgen filed a renewed motion (``Renewed 
Motion'') to stay the Commission's remedial orders. Should the 
Commission deny its Renewed Motion, Wirtgen requests that the 
Commission ``clarify that the current remedial order does not exclude 
Wirtgen's Redesigned 1810 Series machines.'' See Renewed Motion at 12; 
see also id. at 3, 7 (discussing ``changed circumstances'' warranting a 
stay).
    The Commission has determined to institute a modification 
proceeding pursuant to Commission authority under 19 U.S.C. 1337(k) and 
Commission Rule 210.76, 19 CFR 210.76. The modification proceeding is 
addressed to whether Wirtgen's redesigned Models XFi and XTi machines 
infringe claim 19 of the '693 patent and therefore fall within the 
scope of the LEO, or whether the LEO should be modified to include an 
explicit exemption for Wirtgen's Model XFi and XTi redesigned machines.
    The Commission finds such institution to be warranted in the 
present investigation in view of the following facts. First, Wirtgen's 
Renewed Motion requests the Commission to clarify the scope of the 
Commission's remedial orders. Second, as noted above, the Commission 
did not adjudicate whether any redesigned products infringe the 
asserted patent claims. Wirtgen alleges that it requested the ALJ to 
make findings as to those products in the underlying violation 
investigation. See Renewed Motion at 13. When the ALJ declined to do 
so, Wirtgen did not petition the Commission for review of that 
decision, and those issues were ``deemed to have been abandoned'' 
pursuant to Commission Rule 210.43(b)(2). Third, when CBP sought to 
adjudicate, pursuant to CBP's authority under 19 CFR part 177, whether 
the redesigned products infringe, Wirtgen declined to consent to an 
inter partes proceeding in which Caterpillar would be able to be heard, 
and thus declined CBP's invitation for CBP to issue a ruling under 19 
CFR part 177.
    Pursuant to the pilot program to test expedited procedures for 
modification proceedings (see https://www.usitc.gov/press_room/featured_news/pilot_program_will_test_expedited_procedures_usitc.htm, 
the parties shall provide their positions as to whether the 
modification proceeding requires extensive or limited fact-finding and 
whether delegation to an ALJ for issuance of a recommended 
determination is warranted. As part of their arguments concerning the 
appropriate procedure, the parties may also identify any evidence from 
the record establishing whether or not Wirtgen's redesigned Models XFi 
and XTi machines infringe claim 19 of the '693 patent and whether or 
not the LEO should be modified to include an explicit exemption for 
Wirtgen's Model

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XFi and XTi machines. The parties shall also propose a schedule for 
issuing the ALJ's recommended determination, if any, and the final 
Commission determination in the modification proceeding.
    Written Submissions: Parties to the investigation are requested to 
file written submissions on the issues discussed herein.
    Written submissions must be filed no later than close of business 
on January 31, 2020, and may not exceed 30 pages in length, exclusive 
of any exhibits. Reply submissions must be filed no later than the 
close of business on February 7, 2020, and may not exceed 15 pages in 
length, exclusive of any exhibits. No further submissions on any of 
these issues will be permitted unless otherwise ordered by the 
Commission.
    Persons filing written submissions must file the original document 
electronically on or before the deadlines stated above and submit eight 
(8) true paper copies to the Office of the Secretary by noon the next 
day pursuant to section 210.4(f) of the Commission's Rules of Practice 
and Procedure (19 CFR 210.4(f)). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-1088'') in a prominent place on 
the cover page and/or the first page. (See Handbook for Electronic 
Filing Procedures, https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions regarding 
filing should contact the Secretary (202-205-2000).
    Any person desiring to submit a document to the Commission in 
confidence must request confidential treatment. All such requests 
should be directed to the Secretary to the Commission and must include 
a full statement of the reasons why the Commission should grant such 
treatment. See 19 CFR 201.6. Documents for which confidential treatment 
by the Commission is properly sought will be treated accordingly. All 
information, including confidential business information and documents 
for which confidential treatment is properly sought, submitted to the 
Commission for purposes of this Investigation may be disclosed to and 
used: (i) By the Commission, its employees and Offices, and contract 
personnel (a) for developing or maintaining the records of this or a 
related proceeding, or (b) in internal investigations, audits, reviews, 
and evaluations relating to the programs, personnel, and operations of 
the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S. 
government employees and contract personnel,\1\ solely for 
cybersecurity purposes. All non-confidential written submissions will 
be available for public inspection at the Office of the Secretary and 
on EDIS.
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    \1\ All contract personnel will sign appropriate nondisclosure 
agreements.
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    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in part 210 of the Commission's Rules of Practice and Procedure (19 CFR 
part 210). To the extent that Commission Rule 210.76, 19 CFR 210.76, 
contemplates, as is ordinarily the case, the existence of a petition 
for a modification proceeding, the Commission has determined that 
Wirtgen's renewed motion for stay is tantamount to such a petition. 
Alternatively, the Commission has determined that institution of a 
modification proceeding is also warranted based on the Commission's 
authority, sua sponte, to institute a modification proceeding. 
Commission Rule 210.76(a)(1), 19 CFR 210.76(a)(1) (``The Commission may 
also in its own initiative consider such action'' to modify its 
remedial orders.). The Commission also finds that good cause exists, 
for the reasons set forth above--including Wirtgen's previous failures 
to exhaust administrative processes--to waive or suspend Rule 210.76's 
contemplation of a petition. Commission Rule 201.4(b), 19 CFR 201.4.

    By order of the Commission.

    Issued: January 16, 2020.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2020-01022 Filed 1-22-20; 8:45 am]
BILLING CODE 7020-02-P