Certain Road Construction Machines and Components Thereof; Commission Decision to Institute a Rescission Proceeding; Permanent Rescission of a Seizure and Forfeiture Order; Termination of the Rescission Proceeding

Lisa Barton
International Trade Commission
11 December 2020

[Federal Register Volume 85, Number 239 (Friday, December 11, 2020)]
[Notices]
[Pages 80150-80151]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-27195]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1088 (Rescission)]


Certain Road Construction Machines and Components Thereof; 
Commission Decision to Institute a Rescission Proceeding; Permanent 
Rescission of a Seizure and Forfeiture Order; Termination of the 
Rescission Proceeding

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 proceeding to determine 
whether to permanently rescind the Commission's seizure and forfeiture 
order (``SFO'') of January 14, 2020 (corrected January 23, 2020) issued 
against Wirtgen America, Inc. (``Wirtgen America''). The SFO is 
permanently rescinded. The rescission proceeding is terminated.

FOR FURTHER INFORMATION CONTACT: Houda Morad, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 708-4716. Copies of non-
confidential documents filed in connection with this investigation may 
be viewed on the Commission's electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email 
EDIS3Help@usitc.gov. 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, ``Caterpillar''). See 
82FR 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 V[ouml]gele AG 
of Ludwigshafen, Germany; Wirtgen Group Holding GmbH of Windhagen, 
Germany; and Wirtgen America 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 
(collectively, ``the remedial orders'') against Wirtgen America. The 
United States Customs and Border Protection (``Customs'') subsequently 
excluded six Wirtgen redesigned series 1810 machines in December 2019. 
Based on such exclusion, the Commission issued the subject SFO on 
January 14, 2020 (corrected January 23, 2020). On March 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'').
    On January 30, 2020, Wirtgen filed a civil action against Customs 
and related U.S. government parties (collectively, ``the U.S. 
government'') in the U.S. Court of International Trade (``CIT'') under 
28 U.S.C. 1581(a) and (i). The Commission moved to intervene to contest 
the CIT's exercise of jurisdiction, and the CIT denied the Commission's 
motion. The CIT exercised jurisdiction under section 1581(a) over the 
U.S. government's objections and granted summary judgment for Wirtgen 
as to the excluded entries of the redesigned machines at issue. The CIT 
also ordered Customs to release the machines for entry into the United 
States no later than Thursday, May 21, 2020. On July 14, 2020, the U.S. 
government appealed the CIT's decision to the Federal Circuit (``the 
CIT appeal'').
    On May 21, 2020, arguing that the predicate for the SFO had been 
invalidated by the CIT, Wirtgen filed an emergency motion to stay or 
temporarily rescind the SFO pending resolution of any CIT appeal. On 
June 10, 2020, the Commission determined to deny Wirtgen's motion to 
stay, but granted Wirtgen's motion for temporary rescission of the SFO, 
thus temporarily suspending the SFO until such time as the CIT's 
decision is modified, stayed, or overturned. On June 15, 2020, the

[[Page 80151]]

Commission filed a motion to stay the SFO appeal pending reinstatement 
of the SFO by the Commission or resolution of any CIT appeal by the 
Federal Circuit. On July 29, 2020, the Federal Circuit granted the 
Commission's motion to stay the SFO appeal until the suspension of the 
SFO is lifted or until final disposition of the CIT appeal.
    Concurrently, on January 16, 2020, the Commission instituted a 
modification proceeding to determine whether Wirtgen's redesigned 
series 1810 machines infringe claim 19 of the '693 patent. On August 
31, 2020, the Commission determined that Wirtgen's redesigned machines 
do not infringe and issued modified remedial orders exempting the 
redesigned machines from the scope of the orders. Caterpillar did not 
appeal the Commission's non-infringement determination to the Federal 
Circuit, and therefore, the Commission's non-infringement determination 
is now final. Consequently, on November 5, 2020, the U.S. government 
moved to dismiss the CIT appeal. On December 4, 2020, the Federal 
Circuit dismissed the CIT appeal.
    In view of the Federal Circuit's dismissal of the CIT appeal, the 
Commission has determined to institute a rescission proceeding and to 
permanently rescind the SFO. The rescission proceeding is hereby 
terminated.
    The Commission's vote for this determination took place on December 
7, 2020.
    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).

    By order of the Commission.

    Issued: December 7, 2020.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2020-27195 Filed 12-10-20; 8:45 am]
BILLING CODE 7020-02-P