Customs Ruling HQ H314355 - Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1067; Certain Road Milling Machines and Components Thereof.

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HQ H314355
May 19, 2021

Type : 19 U.S.C. § 1337; Unfair Competition Mr. James R. Barney • HTSUS :

HQ H314355 May 19, 2021

OT:RR:BSTC:EOE H314355 JW

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW
Washington, D.C. 20001- 4413

VIA EMAIL: [email protected]

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. 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).

BACKGROUND

ITC Investigation No. 337-TA-1067

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 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. 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”).

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.

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.

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 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

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:

A road construction machine, comprising:

a machine frame;

a 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). 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.

* * *

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. * * *

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.

* * *

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.

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). 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.

19 C.F.R. Part 177 Ruling Request

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. 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”).

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 [[ ]] 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.

However, in contrast to the legacy PM600 and PM800 machines, Caterpillar explains that, in the Updated Machines, it has [[ ]]. Id.; see also Caterpillar Post Discussion Submission, Exhibit 55 at 40:7-23 ([[ ]]). The photograph below is of the hydraulic cylinders used in the Updated Machines and reveal the absence of the [[ ]] that appeared in the legacy product. Ruling Request, Exhibit 10.

[[ ]]

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 [[ ]]8 See e.g., Caterpillar Reply at 5; Ruling Request, Exhibit 10.

[[ ]]

7 See also Caterpillar Reply, Exhibit 40 at 40:22 to 41:1-5 ([[

]]).

8 [[

]] Caterpillar Reply, Exhibit 40 at 41:6-18.

[[ ]]

[[ ]]

[[ ]] 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 [[ ]]. Id. at 12. In particular, the [[ 40 at 76:18–77:9. [[

]] while the [[ Discussion Submission at 3. [[ ]]. Caterpillar Reply, Exhibit

]] Caterpillar Post

]] Ruling Request at 12.9 [[

]]. 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.

[[ ]]

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 [[ ]]. See Caterpillar Reply, Exhibit 40 at 36:1-5 ([[ ]]); see also Caterpillar Post Discussion Submission, Exhibit 55 at 28:9-10 ([[ ]]). October 2020 identifies items 43 and 43A as “SENSOR GP-POSITION (PROXIMITY) (LEFT REAR SCRATCH HEIGHT)” and “SENSOR GP-POSITION (PROXIMITY) (LEFT REAR SERVICE HEIGHT)” with part number “593-1549.” Caterpillar Reply, Exhibit 31 at CTRPLR00000540.

Id. The corresponding figure in this Parts Manual showing items 43 and 43A is also reproduced below.

Caterpillar Reply, Exhibit 31 at CTRPLR00000543. The Parts Manual for the PM820 Updated Machine, October 2020 includes similar figures and references to proximity sensors. See e.g., Caterpillar Reply, Exhibit 32 at CTRPLR00001691; CTRPLR00001694; CTRPLR00001698; and CTRPLR00001702.

In further contrast to the legacy PM600 and PM800 machines, the Updated Machines also have a “track-inclination sensor”10 on each of the two rear tracks, which is [[ ]], which can change while travelling across varying elevations as the track is pivotally connected to the machine. Ruling Request at 12; Caterpillar

10 [[ ]]. Caterpillar Reply at 17 (citing Exhibit 40 at 76:16-78:2); see also Caterpillar Post Discussion Submission at 7 ([[

]]). Reply at 6. There are no track-inclination sensors on the two front tracks. Ruling Request at 12. The track-inclination sensor is [[ ]]. Id. On one end, the track-inclination sensor attaches to the bracket connecting the lower cylindrical leg tube to the crawler track, and on the other end, the track-inclination sensor attaches to the crawler track. Id. at 12-13. The track-inclination sensor [[ ]].11 Id. at 13. The photographs below of the two rear tracks 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) show that each of the two rear tracks have an added track-inclination sensor attached to the bracket and crawler track. Id. at 11; Ruling Request, Exhibit 10.

[[ ]]

[[ ]]

Ruling Request, Exhibit 10.

11 See also Caterpillar Reply, Exhibit 40 at 75:6-7 ([[ ]]). Finally, another difference between the legacy PM600 and PM800 machines is that, in the Updated Machines, [[ ]].12 See e.g., Ruling Request at 14. In particular, in the Updated Machines the coupling lines, e.g., tubes and hoses, running between the front and rear right legs, and the front and rear left legs, have been removed. Id. Further, the valves in the legacy PM600 and PM800 machines that were used to perform the cross-coupling function between the front and rear legs on both sides of the machine, and the wires that provided current to the cross-coupling valves to allow the valves the operate by opening and closing, have been removed. Id. In addition, [[ ]] Id. at 14-5. 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)13 show that the coupling lines between the front and rear right legs, and the front and rear left legs, have been removed. Caterpillar Reply at 8; Ruling Request, Exhibit 11.

[[ ]]

12 While [[

]]. 13 See also Caterpillar Reply, Exhibit 40 at 43:4-15 ([[

]]).

[[ ]]

Id.; see also Caterpillar Reply, Exhibit 43 at CTRPLR00003607 and Caterpillar Reply, Exhibit 30 (Engelmann Decl.) at ¶ 12 ([[

]]).

ISSUE

Whether Caterpillar has met its burden to show that Updated Machines do not infringe any of claims 2, 5, 16, and 23 of the ‘530 patent and claim 29 of the ‘309 patent, and thus are not subject to the limited exclusion order issued in the 1067 investigation. See, e.g., Ruling Request at 2.

LEGAL FRAMEWORK

Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of section 337 to determine, with respect to each investigation conducted by it under this section, whether there is a violation of this section. See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry. See 19 U.S.C. § 1337(d)(1).

When the Commission determines there is a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. ITC, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id., at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”) (emphasis added).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate section 337 of the Tariff Act of 1930 without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. v. ITC, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n. 6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)–(D) and 19 U.S.C. § 1337(d)(1).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission's jurisdiction extends to all models of [violative] products that are imported at the time of the Commission’s determination and to all such products that will be imported during the life of the remedial orders.” See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56–57, USITC Pub. 3935, Doc ID 287263 (July 2007).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee [or plaintiff],” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337- TA-879, Advisory Opinion at 6–11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patent to prove, by a preponderance of the evidence, that a given article does infringe. . . .” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. ITC, 645 F.2d 976, 988–89 (C.C.P.A. 1981)).

This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. ITC, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, vis-a-vis at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted).

Patent Infringement

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function- way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016). As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015).14

“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public sources such as “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.

“To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). The context in which a claim term is used also includes the full chain of dependence as well as the remaining suite of claims and the written description. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of claim differentiation.”).

The second step to establish infringement involves a comparison of the claims, as properly construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

LAW AND ANALYSIS

Caterpillar argues that the Updated Machines do not infringe the patent claims in the 1067 LEO as it has updated its PM600 and PM800 machines such that they no longer have the features the Commission found to infringe. Ruling Request at 2. Specifically, Caterpillar explains that the Updated Machines now use non-infringing [[ ]] and [[ ]], and no longer have the [[ ]], and thus no longer practice the asserted claims of the ‘530 and ‘309 patents. See e.g., Ruling Request at 2, 12. In response, Wirtgen does not focus its argument on whether the Updated Machines infringe those claims; rather Wirtgen primarily argues that Updated Machines are hypothetical and Caterpillar’s Ruling Request does not meet the requirements of 19 C.F.R. Part 177. See e.g., Wirtgen Response at 16-18. Wirtgen further argues that Caterpillar has failed to provide sufficient information to meet its burden to

14 Although claim construction is a question of law, the consideration of extrinsic evidence may constitute a subsidiary finding of fact. Teva, 135 S. Ct. at 841, 190 L. Ed. 2d at 733. show noninfringement of the Updated Machines. See e.g., Wirtgen Sur Reply at 7. We will address these in turn below.

Wirtgen incorrectly characterizes Caterpillar’s Ruling Request as essentially hypothetical and not in conformity with 19 C.F.R. Part 177.

As a preliminary matter, Wirtgen argues that the EOE Branch should not issue a ruling letter because Caterpillar’s request concerns a hypothetical transaction and, therefore, the request does not conform to the requirements in 19 C.F.R. Part 177, particularly 19 C.F.R. §§ 177.2(b)(1), 177.2(b)(3), 177.2(b)(4), and 177.7(a). See e.g., Wirtgen Response at 16; Wirtgen PowerPoint at We disagree and will address each in turn below.

Specifically, with respect to 19 C.F.R. § 177.2(b)(1), Wirtgen claims that Caterpillar did not provide a complete statement of all relevant facts relating to the prospective transaction including, “ports of entries, customers, serial numbers, or build numbers of the ‘Updated’ Machines.” See e.g., Wirtgen Response at 7, 14, and 19. However, we note that 19 C.F.R. § 177.2(b)(1) only explicitly includes the following as examples of facts to provide, “names, addresses, and other identifying information of all interested parties (if known); the name of the port or place at which any article involved in the transaction will arrive or be entered, or which will otherwise have jurisdiction with respect to the act or activity described in the transaction; and a description of the transaction itself, appropriate in detail to the type of ruling requested.” Thus, under the regulations as drafted, an interested party only needs to be provided if known, and the regulation does not explicitly specify that “serial numbers, or build numbers” are required. Nevertheless, Caterpillar has provided this information, as identified below, such that its ruling request complies with the relevant provisions in 19 C.F.R. Part 177. For example,

Caterpillar stated that [[ ]] and [[

]] Caterpillar Reply at 21.15

15 Wirtgen cites Best Key Textiles Co. Ltd. v. United States (Best Key I), 2013 Ct. Intl. Trade LEXIS 155, at *3, FN 3 (Ct. Int'l Trade Dec. 13, 2013) as support for the proposition that Caterpillar is not entitled to a ruling because its request is hypothetical and fails to identify the ports of arrival. See e.g., Wirtgen Response at 17. However, Wirtgen fails to note that, on appeal, the Federal Circuit vacated the decision of the U.S. Court of International Trade and remanded with instructions to dismiss for lack of jurisdiction. See Best Key Textiles Co., Ltd. v. United States, 777 F.3d 1356 (Fed. Cir. 2015). Accordingly, the Federal Circuit has set aside the precedent upon which Wirtgen relies. Second, irrespective of the vacatur, as Caterpillar notes, in Best Key I “the CIT concluded that the 177 Petitioner needed only to include the ‘name of the port or place at which any article involved in the transaction will or arrive or be entered’ ‘if known.’” Caterpillar Reply at 21. Caterpillar noted that “the machines to be imported are the PM600 and PM800 Series machines with the new features described in the [Ruling Request].” See e.g., Caterpillar Reply at fn.2 (citing Ruling Request at 2).

Caterpillar further identified that these “updated” PM600 and PM800 machines as ones that will have [[ ]] and [[ ]] Ruling Request at 2, 11; Caterpillar Post Discussion Submission, Exhibit 55 at 27:21-22; 28:9-11;18-22.

Accordingly, we find that Caterpillar has met the requirements in 19 C.F.R. § 177.2(b)(1).

Additionally, 19 C.F.R. § 177.2(b)(3) states in relevant part, “[e]ach request for a ruling regarding the status of an article under any Customs or related law affecting the importation or arrival of that article should be accompanied by photographs, drawings, or other pictorial representations of the article and, whenever possible,16 by a sample article, unless a precise description of the article is not essential to the ruling requested.” (emphasis added). We find that Caterpillar has complied with this provision as Caterpillar has at least provided a pictorial representation of the articles at issue. See e.g., Exhibit 31 of Caterpillar Reply at CTPLR0000691; see also Caterpillar Post Discussion Submission, Exhibit 55 at 47:16-23 (“Exhibit 31, CTPLR 0000691 . . that picture applies to the [[ ]]); see also Exhibit 30 of Caterpillar Reply (Engelmann Decl.) at ¶ 12 ([[

]]). Thus, even if as Wirtgen argues there were “[n]o photographs of machines allegedly being manufactured in Italy”, there are still pictorial representations of the articles at issue that Caterpillar intends to import into the United States.

Wirtgen further argues that “Part 177 also requires that if there are relevant facts and documents, that those documents should be submitted as part of that ruling request, particularly if they have a bearing on the issues presented[,]” and “Caterpillar presented no documents.” Caterpillar Post Discussion Submission, Exhibit 55 at 101:2-8; see also Wirtgen PowerPoint at 2. On this point, 19 C.F.R. §177.2(b)(4) states in relevant part, “[i]f the question or questions

16 Caterpillar did not provide a sample of an Updated Machine to CBP, but as Wirtgen stated, “these components weigh [[ ]]” see Wirtgen Post Discussion Submission at 5; thus, it would not have been possible to provide a sample to CBP. However, Caterpillar provided, and Wirtgen took advantage of, an opportunity to conduct an inspection in Minnesota of a PM622 machine manufactured in Arkansas. See e.g., Wirtgen PowerPoint at 4; see also Caterpillar Reply at 16. The PM622 machine at issue in this inspection included the modifications related to both the ‘530 patent and the ‘309 patent. See e.g., Caterpillar Reply at 16 (“[T]he inspected machine was [[ ]]. The new designs on the inspected machine are representative of the designs that will be on the Updated Machines moving forward.”). presented in the ruling request directly relate to matters set forth in any invoice, contract, agreement, or other document, a copy of the document must be submitted with the request.” The question presented by Caterpillar’s Ruling Request directly relates to the Updated Machines themselves, and not any particular document. See, e.g., Ruling Request at 2. Moreover, Caterpillar actually presented documents, such as parts manuals, system operating testing and adjusting manuals, source code excerpts, software specifications, and electrical and hydraulic schematics. See e.g., generally, Exhibits to Caterpillar Reply and Caterpillar Reply (explaining the relevance of these documents).

Finally, Wirtgen’s primary argument focuses on 19 C.F.R. § 177.7(a), which states in relevant part, “no ruling letter will be issued with regard to transactions or questions which are essentially hypothetical in nature. . . .” Wirtgen asserts that the EOE Branch should not issue a ruling because Caterpillar’s Ruling Request “presents a hypothetical transaction” and “contemplates a hypothetical product, not one ready for importation.” See e.g., Wirtgen Sur Reply at 4.17 However, Caterpillar made an Updated Machine available for Wirtgen to inspect at Caterpillar’s facility in Maple Grove, Minnesota, and Wirtgen inspected the machine. See e.g., Caterpillar Reply at 16. Yet, instead of addressing the Updated Machine Caterpillar made available for inspection in Minnesota, Wirtgen tries to equate the articles at issue to the “2018 Product Updates” from the underlying investigation. which the ALJ determined were “not sufficiently final for adjudication and that machines including the 2018 Product Updates do not satisfy the importation requirement.” See e.g., Wirtgen Sur Reply at 3; FID 24. However, in contrast to the 2018 Product Updates, which were presented to the Commission for adjudication during the violation phase of the underlying investigation, and before the issuance of an exclusion order, here, Caterpillar is asking for a ruling letter from CBP following the issuance of an exclusion order. Wirtgen’s position that Caterpillar is foreclosed from submitting a ruling request under 19 C.F.R. Part 177 is tantamount to a rule for section 337 administration that new or modified products not previously adjudicated during an underlying investigation may be subject to exclusion from entry but are not properly within the scope of a ruling letter to address admissibility. Such a rule is incompatible with both the prospective nature of the remedial orders issued under 19 U.S.C. § 1337(d) and administrative rulings under 19 C.F.R. Part 177. Moreover, we note that “[i]t is in the interest of the sound administration of the Customs and related laws that persons engaging in any transaction affected by those laws fully understand the consequences of that transaction prior to its consummation.” 19 C.F.R. § 177.1(a)(1) (emphasis added). Thus, pursuant to 19 C.F.R. Part 177, an importer or other interested party may obtain a ruling from CBP with respect to

17 Wirtgen also cites Best Key I to support its argument that the question presented in Caterpillar’s Ruling Request is hypothetical. See Wirtgen Post Discussion Submission at 11. As noted supra, this case was subsequently vacated, but even assuming arguendo that it is still applicable, we note that the present scenario is distinguishable. In Best Key I, the court noted there was no representation that the yarn would actually be imported. 2013 Ct. Intl. Trade LEXIS 155, at *3, FN 3 (Ct. Int'l Trade Dec. 13, 2013). In contrast here, Caterpillar has actually made such a representation. See e.g., Caterpillar Reply at 3, FN 2 (“As Caterpillar’s Petition described, the machines to be imported are the PM600 and PM800 Series machines with the new features described in the Petition.”) (emphasis added). prospective transactions.18 Id. “Prospective” Customs transaction is defined to include “one that is contemplated or is currently being undertaken and has not resulted in any arrival or the filing of any entry or other document, or in any other act to bring the transaction, or any part of it, under the jurisdiction of any Customs Service office.” 19 C.F.R. § 177.1(d)(3). Thus, for purposes of 19 C.F.R. Part 177, an import transaction may be “contemplated” to receive a ruling letter.

Furthermore, with respect to the 2018 Product Updates, the ALJ noted in the underlying investigation that “Caterpillar does not cite to any documents showing that the 2018 Product Updates have been sufficiently fixed (or finalized) in Caterpillar’s product offerings.” FID at 23. In contrast, with respect to the Updated Machines, Caterpillar provided documents such as updated parts manuals, and [[

]] Caterpillar Post Discussion Submission at 12, fn. 2; Caterpillar Post Discussion Submission, Exhibit 60; and Caterpillar Reply, Exhibits 31 and 32.

Moreover, while the 2018 Product Updates were [[ ]] during the underlying investigation, the Updated Machines [[ ]]. See e.g., Caterpillar Post Discussion Submission at 11; see also Exhibit 40 of Caterpillar Reply at 25:12-20 (Q. [[ ]] A. [[ ]]); see also Caterpillar Post Discussion Submission, Exhibit 55 at 74:25-76:25 ([[

]]). Thus, we find that the Updated Machines are not hypothetical and the question presented by the Ruling Request is not “essentially hypothetical in nature.”

Accordingly, we find that Caterpillar has met the requirements of 19 C.F.R. Part 177 and a ruling letter is appropriate.

Moreover, when CBP issues a ruling letter finding that a requester has met its burden of proof to show that the articles at issue do not infringe the asserted claims in an exclusion order subsequent imports by the requester or of its products are nevertheless “subject to the verification of the facts incorporated in the ruling letter, a comparison of the transaction described therein to the actual transaction, and the satisfaction of any conditions on which the ruling was based.” See 19 C.F.R. § 177.9(b)(1) (“The application of a ruling letter by a Customs Service field office to the transaction to which it is purported to relate is subject to the verification of the facts incorporated in the ruling letter, a comparison of the transaction described therein to the actual transaction, and the satisfaction of any conditions on which the ruling was based.”). Thus, if the

18 “Customs transaction” is defined as “an act or activity to which the Customs and related laws apply[,]” which includes, inter alia, “any provision of the Tariff Act of 1930, as amended. . . .” 19 C.F.R. § 177.1(d)(3) and (5). machines that Caterpillar imports do not satisfy the conditions on which this ruling was based, then this ruling letter would not be binding on CBP as to those machines.

Caterpillar has met its burden to show that the Updated Machines do not infringe claims 2, 5, 16, and 23 of the ‘530 patent and claim 29 of the ‘309 patent.

The claims at issue are the claims in the 1067 LEO, i.e., claims 2, 5, 16, and 23 of the ‘530 patent and claim 29 of the ‘309 patent. See 1067 LEO. Claims 2, 5, 16, and 23 of the ‘530 patent all depend on claim 1; and claim 29 of the ‘309 patent depends from claim 26. See e.g., Caterpillar PowerPoint at 12; FID at 55; Exhibits 1 and 2 of Ruling Request. Further, the question presented by the Ruling Request centers on claim 1 of the ‘530 patent and claim 26 of the ‘309 patent. See e.g., Caterpillar PowerPoint at 41 and 56.

As discussed in detail below, our position is Caterpillar has met its burden to show that at least one claim limitation in both claim 1 of the ‘503 patent and claim 26 of the ‘309 patent is not met by the Updated Machines. Thus, we find Caterpillar has met its burden to show the Updated Machines do not infringe the claims in the 1067 LEO. See, e.g., Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991) (“[T]he failure to meet a single limitation is sufficient to negate infringement of the claim ”); Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.”).

Claim 1 of the ‘503 Patent

Caterpillar alleges that the following limitation in claim 1 of the ‘530 patent19 is not met by the Updated Machines:

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. . . .

See Ruling Request, Exhibit 1 (the ‘530 patent) (emphasis added); Caterpillar PowerPoint at 41.

In the underlying investigation, Caterpillar and Wirtgen agreed that the above underlined phrase in claim 1 of the ‘530 patent 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

19 Caterpillar additionally alleges that another limitation in claim 1 of the ‘530 patent is not met, i.e., “wherein each of the lifting position sensors is connected to the at least one piston cylinder unit located within its associated lifting column.” See Caterpillar PowerPoint at 41. However, as the failure to meet a single limitation is sufficient to negate infringement of the claim, we do not address this additional limitation in this ruling letter. 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 (emphasis added).

Further, in the underlying investigation, the ALJ found that the [[ ]] constitute the lifting position sensors recited in limitation 1[g]20 of claim 1 of the ‘530 patent. FID at 358. Specifically, the ALJ found that “[[

]] PM620’s cylinder.” FID at 359. The ALJ further found that “[t]he [[ ]]” Id.

With respect to the Updated Machines, there is no dispute that at least the [[ ]] has been removed in the Updated Machines. See e.g., Ruling Request, Exhibit 10; Wirtgen Post Discussion Submission at 5; Caterpillar Post Discussion Submission, Exhibit 55 at 154:15-24 ([[

]]); see also id. at 156:18-157:1 ([[

]]). Instead, Caterpillar added “proximity switches” and “track inclination sensors” to the Updated Machines.21 See e.g., Ruling Request, Exhibit 10.

Turning first to the “track inclination sensors” of the Updated Machines, we find that Caterpillar has at least shown that these sensors are not “coupled to two or more components within

20 In the underlying investigation, for its infringement analysis, Wirtgen divided claim 1 of the ‘530 patent into nine limitations, and each was addressed by the Commission. See e.g., FID 351- Limitation 1[g] was:

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. . . .

FID at 357. 21 As noted supra, in I.C.2, other changes were made to the Updated Machines. Those changes are related to the removal of the [[ ]] in the Updated Machines, which is discussed further in the context of the ‘309 patent in relation to “a four-way floating axle hydraulic system”, see e.g., Wirtgen Response at 11-12. “The ‘530 patent . . . discloses an intelligent leg control design in which lifting position sensors are associated with the hydraulic cylinders in the lifting columns.” Wirtgen Response at 9. its respective lifting column” and thus, not “coupled with elements of one of the lifting columns. . .” as required by claim 1 of the ‘530 patent. The photographs provided by Caterpillar show that the track inclination sensors of the Updated Machines are on each of the two rear tracks and attached to the bracket and crawler track. See e.g., Ruling Request, Exhibit 10. These sensors are not attached to the lifting columns, much less two or more components.22 Indeed, the legacy PM620 machine also had brackets and crawler tracks like the Updated Machines, but in the underlying investigation, the ALJ found that “each of the PM620’s lifting columns includes two telescoping, hollow columns that house a piston cylinder.” See e.g., FID at 355. The ALJ did not find that the lifting columns included brackets and crawler tracks. Hence, as the track inclination sensors are attached to the bracket and crawler track, and neither attached to the telescoping hollow columns nor the piston cylinders, we find that these sensors are not “coupled with elements of one of the lifting columns ”23

Next, we address the “proximity switches” of the Updated Machines. Caterpillar provided photographs showing the “proximity switches” mounted on the upper cylindrical leg tube of the lifting column of each of the two rear lifting columns. See Ruling Request, Exhibit 10. While these photographs show where the proximity switches are mounted on the cylindrical leg tubes of the lifting columns, in the underlying investigation, the [[ ]] that the ALJ found, along with the [[ ]], to constitute the lifting position sensor24 was inside the hydraulic cylinder. FID at 358-359. As such, that information with respect to the [[ ]] of the Updated Machines is also required for Caterpillar to meet its burden. As detailed below, Caterpillar provided this additional information, and we find that Caterpillar

22 We further find that Caterpillar has also shown that the [[ ]] do not interface with the [[ ]]. As Caterpillar points out, [[

]] Caterpillar Post Discussion Submission at 7; see also Caterpillar Post Discussion Submission at 5-6 and Caterpillar Reply, Exhibit 48 (software specification showing how the signals from the [[ ]] are processed, and no reference to [[ ]]).

23 While we need not reach this point, as Caterpillar has already shown that track inclination sensors are not “coupled to two or more components within its respective lifting column[,]” we further note that Caterpillar has shown that the track inclination sensors do not “generate[] a signal that contains information about the lifting position of the column based on the displacement of the components.” For example, Mr. Engelmann gave some examples of machine maneuvers that could be performed by the Updated Machines to show that the track inclination sensors could not be used to measure the position of a lifting column. See e.g., Caterpillar Reply, Exhibit 40 at 75:6- 76:1 ([[ ]]). 24 These were [[ ]] sensors. See e.g., FID at 357-8. In addition, it appears that the words, [[ ]] and [[ ]] have been used interchangeably throughout this process. See e.g., Caterpillar Post Discussion Submission, Exhibit 55 at 125:6-8 (“In the 1067 Investigation, [Caterpillar’s] cylinders then used a [[ ]] sensor.”). has met its burden to show at least that the proximity switches in the articles at issue are not “coupled to two or more components within its respective lifting column [that] are capable of being displaced relative to one another.”

For example, Caterpillar permitted Wirtgen to question Mr. Engelmann, the engineering manager in charge of the designs implemented on the Updated Machines. See e.g., Caterpillar Reply, Exhibit 40 at 6:10-16; see also Exhibit 49 of Caterpillar Reply (February 17, 2021 Email from Caterpillar’s counsel to Wirtgen’s counsel noting that Wirtgen could question Caterpillar’s witness and inspect the Updated Machine). During that questioning, Caterpillar’s witness testified that none of the machines with the [[ ]] in the lifting columns. See Caterpillar Reply, Exhibit 40 at 36:1-5 ([[ ]]).25 It was further confirmed by Caterpillar’s counsel during oral discussion that in the Updated Machines [[ ]] See Caterpillar Post Discussion Submission, Exhibit 55 at 40:7-23. Moreover, Caterpillar provided 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).26 These

25 During oral discussion, Wirtgen stated that they questioned whether Mr. Engelmann’s confirmation (in combination with the photographs showing the proximity switches on the upper leg cylinder) was enough to show noninfringement because they do not know what “the proximity sensor is sensing.” Caterpillar Post Discussion Submission, Exhibit 55 at 126:15–127:6. However, we note that during Wirtgen’s questioning of Mr. Engelmann, there were no follow up questions by Wirtgen on this point when Mr. Engelmann confirmed that none of the machines with the [[ ]] in the lifting columns. See generally, Caterpillar Reply, Exhibit 40. Moreover, Mr. Engelmann stated in his declaration that [[

at ¶ 5; see also id. at ¶ 7 ([[ that [[ ]] Caterpillar Reply, Exhibit 30

]]). Caterpillar also explained in their Ruling Request ]] Ruling Request at 12.

26 Wirtgen states that Caterpillar refused to produce its CAD models in this matter and that the ALJ relied on CAD models in determining infringement in the underlying investigation. See Wirtgen Post Discussion Submission at 6 (citing FID at 73-74). However, significantly, the portion of the FID Wirtgen cites involves claims of the ‘309 patent and not the ‘530 patent. Rather, when the ALJ was determining whether the legacy PM620 machine met the claim limitation at issue here (referred to as “1[g]” in the FID) in claim 1 of the ‘530 patent, the ALJ focused heavily on the Lumkes witness statement and the PM620 Parts Manual. See generally FID at 357-9. manuals include figures and references to proximity sensors. See e.g., Caterpillar Reply, Exhibit 31 at CTRPLR00000540 and CTRPLR00000543. The manuals also include a reference to the hydraulic cylinders used in the Updated Machines identified with [[ ]]. See e.g., Caterpillar Reply, Exhibit 31 at CTRPLR00000691 ([[ ]]); cf. id. at CTRPLR00000685 (figure of legacy machine, i.e., [[ ]], referring to [[ ]]).

In contrast to the hydraulic cylinders used in the legacy PM620 machines, which [[

]], see e.g., id. at CTRPLR00000697,27 there is no similar indication from the Parts Manual for the PM620 Updated Machine, October 2020 that the hydraulic cylinders used in the Updated Machines have additional parts inside them; even though there are illustrations and part numbers for the proximity switches mounted on the upper leg cylinders of the two rear lifting columns. See e.g., id. at CTRPLR00000540; see also Caterpillar Post Discussion Submission at 10 ([[

]]) (emphasis in the original). Thus, as the photographs show the “proximity switches” are mounted to the same component of the respective lifting columns, and hence, not capable of being displaced relative to one another, and the additional evidence shows that there is nothing in the lifting columns of the Updated Machines that could be considered part of the “proximity switches”, we find that Caterpillar has shown that these sensors are not “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 ”28

27 See also Caterpillar Post Discussion Submission at 9-10 ([[

]]). 28 Again, while we do not need to reach this point, we further find that Caterpillar has shown that the proximity switches also do not generate a “signal including information on a current lifting position of the lifting column.” See e.g., Caterpillar Reply, Exhibit 40 at 74:6-20 ([[

]]). Caterpillar has shown that the [[

]] Caterpillar Post Discussion Submission at 2 (citing Caterpillar Reply, Exhibit 40 at 76:15-77:13). The lifting position of each lifting column in the Updated Machines is not continuously detectable by the proximity switches. As Caterpillar further explains, and shown in Caterpillar’s Operation and Maintenance Manuals (see Caterpillar Reply, Exhibits 33 and 34), these [[ ]]. Caterpillar Post Discussion Submission at 2. Moreover, Caterpillar explains that the software specifications (see Caterpillar Reply, Exhibits 44, 45, and 47) further show, these [[ ]]. Caterpillar Post Discussion Submission at 3-5. Accordingly, we find Caterpillar has met its burden to show that the Updated Machines do not infringe claim 1 of the ‘530 patent. The Updated Machines do not have “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. . . ” as required by claim 1 of the ‘530 patent.

2. Claim 26 of the ‘309 Patent

Caterpillar alleges that the following claim limitation in claim 26 of the ‘309 patent is not met by the Updated Machines:

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 left rear wheel or caterpillar.

Caterpillar PowerPoint at 56.

We agree and find that Caterpillar has met its burden to show that the Updated Machines do not meet this claim limitation. The photographs of the Updated Machines provided by Caterpillar (and confirmed by the photographs Wirtgen provided of the machine they inspected, see e.g., Wirtgen PowerPoint at 12) show that the coupling lines between the front and rear right legs, and the front and rear left legs, have been removed. Caterpillar Reply at 8; Exhibit 11 of Ruling Request; see also Exhibit 30 of Caterpillar Reply (Engelmann Decl.) at ¶ 12 ([[

]]). Indeed, even Wirtgen agrees that the Updated Machines as shown in the pictures without the coupling lines between the front and rear right legs, and the front and rear left legs do not infringe. See e.g., Caterpillar Post Discussion Submission, Exhibit 55 at 110:6-19 (Q: “[P]utting aside whether they can reattach the coupling lines later on, as the machine currently stands in the pictures [see Wirtgen PowerPoint at 12] without - - or, as Caterpillar says, without the coupling lines connecting the front and back of the machine, would that then not meet the limitation which requires coupling lines connecting the working cylinders to one another and providing a positive hydraulic coupling?” A: “I think the answer to that question is without those lines, it does not meet that limitation.”).

Instead, Wirtgen argues there could be “post-importation modification that would result in infringement.” See e.g., Wirtgen Post Discussion Submission at 9. However, “a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim.” High Tech Medical Instrumentation v. New Image Industries, 49 F.3d 1551, 1555- 6 (Fed. Cir. 1995).29 Similar to the claim at issue in High Tech Medical, claim 26 of the ‘309 patent does not recite capability. See Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (citing Intel Corp. v. United States International Trade Commission, 946 F.2d 821, 832 (Fed. Cir. 1991) (“[T]o infringe a claim that recites capability and not actual operation, an accused device ‘need only be capable of operating’ in the described mode.”). Rather, claim 26 of the ‘309 patent requires “coupling lines connecting the working cylinders to one another and providing a positive hydraulic coupling between the working cylinders. . . .” See Intel Corp. v. United States International Trade Commission, 946 F.2d 821 (Fed. Cir. 1991) (the claim at issue only required a memory chip to be “programmable” to operate in a certain manner); see also Finjan, 626 F.3d at 1205 (the claim language at issue included “a logical engine for preventing execution.”). There is no dispute that, without modification the Updated Machines, do not meet this limitation. Accordingly, we find that Caterpillar has met its burden to show that the Updated Machines do not infringe claim 26 of the ‘309 patent. See also Nazomi Commc'ns, Inc. v. Nokia Corp.,739 F.3d 1339, 1346 (Fed. Cir. 2014) (finding no infringement where the accused “products . . .do not infringe without modification”).

In addition, we note that in High Tech Medical, the Federal Circuit further stated, “[t]o be sure, if a device is designed to be altered or assembled before operation, the manufacturer may be held liable for infringement if the device, as altered or assembled, infringes a valid patent.” High Tech Medical, 49 F.3d at 1555-56. However, there is no indication that the Updated Machines would be subject to further alteration or assembly before operation. Caterpillar confirmed that the Updated Machines that would be imported are fully assembled machines. See e.g., Caterpillar Post Discussion Submission, Exhibit 55 at 87:8-25. As such, while Wirtgen points out that the 1067 LEO is not limited to “assembled machines” and applies to “components thereof” that infringe, it does not explain why the Updated Machines should be considered “components thereof” instead of road milling machines.

29 Wirtgen attempts to distinguish this case by stating that the 177 process “is procedurally different than one where a party seeks to establish contributory infringement based on whether a device could be modified to infringe” and that “[h]ere, Wirtgen has no ability to compel discovery, and Caterpillar bears the burden of proof.” Wirtgen Post Discussion Submission at 11, fn. 3. While we agree that the 177 process is “procedurally different” we fail to see why that means that the Court’s holding that “a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim” is not applicable here. See also Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318 (Fed. Cir. 2013) (appeal from grant of summary judgment of noninfringement, which also cited High Tech Medical, 49 F.3d at 1555-56, and further noted that accepting Accent’s argument, i.e., but for the stop on the accused product, the mount would be permitted to pivot the required 90°, would render the ninety degree limitation meaningless). Moreover, as noted supra, Wirtgen does not dispute that the Updated Machines as shown in the pictures without the coupling lines between the front and rear right legs, and the front and rear left legs do not infringe, the dispute is with respect to possible modification post importation. HOLDING

We find that Caterpillar has met its burden to establish that Updated Machines do not infringe any of claims 2, 5, 16, and 23 of the ‘530 patent and claim 29 of the ‘309 patent. Accordingly, we find that the articles at issue are not subject to the LEO issued as result of Investigation No. 337-TA-1067.

The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).

Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Mr. Daniel Yonan
Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, NW Washington, D.C. 20005
[email protected]