Wirtgen Am., Inc. v. United States

• Decision Date: 04 March 2020
• Docket Number: Court No. 20-00027,Slip Op. 20-29
• Parties: WIRTGEN AMERICA, INC., Plaintiff, v. UNITED STATES, et al., Defendants.
• Court: U.S. Court of International Trade

437 F.Supp.3d 1302

WIRTGEN AMERICA, INC., Plaintiff,

v.UNITED STATES, et al., Defendants.

Slip Op. 20-29

Court No. 20-00027

United States Court of International Trade.

March 4, 2020

Daniel E. Yonan, Sterne, Kessler, Goldstein & Fox, PLLC, New York, New York, for plaintiff. With him on the brief were Dallin Glenn, Donald R. Banowit, and Kristina Caggiano Kelly.

Guy R. Eddon, Trial Attorney and Patricia M. McCarthy, Assistant Director, U.S. Department of Justice, Commercial Litigation Branch, Civil Division, New York, New York, for the United States. With them on the brief were Joseph H. Hunt, Assistant Attorney General, Jeanne E. Davidson, Director, Justin R. Miller, Assistant Director, and Marcella Powell, Jason M. Kenner, and Edward F. Kenny, Senior Trial Counsel.

OPINION AND ORDER

Stanceu, Chief Judge:

Plaintiff Wirtgen America, Inc. ("Wirtgen") brought this action on January 30, 2020 to contest the exclusion from entry of its merchandise, which consists of six road-milling machines that were imported on three recent entries. U.S. Customs and Border Protection ("Customs" or "CBP"), relying upon an exclusion order of the United States International Trade Commission (the "ITC" or the "Commission"), has excluded the six machines from entry for potential patent infringement. Compl. ¶¶ 93, 95, 99 (Jan. 30, 2020), ECF No. 7.

Before the court are two motions. Defendants move to dismiss this action for lack of subject matter jurisdiction. Defs.’ Mot. to Dismiss (Feb. 12, 2020), ECF No. 27 ("Defs.’ Mot."). The ITC moves for defendant-intervenor status. Mot. of the U.S. Int'l Trade Comm'n for Leave to Intervene as a Party Def. (Feb. 5, 2020), ECF No. 19 ("ITC's Mot."). For the reasons set forth below, the court denies both motions.

I. BACKGROUND

The facts pertinent to the issue of subject matter jurisdiction, summarized below, are as set forth in the complaint and attachments thereto and have not been contested by defendants.

A. The Excluded Merchandise at Issue in this Litigation

Wirtgen is the importer and exclusive U.S. distributor for products manufactured by the Wirtgen Group companies of Germany. Among the products Wirtgen imports and distributes are Wirtgen-branded road-milling machines. Compl. ¶ 9. The six road-milling machines now being held by Customs following detention and exclusion from entry are the subject of this litigation. Five of the machines were imported at the port of Brunswick, Georgia on entries made on November 18 and 21, 2019. Summons (Jan. 30, 2020), ECF No. 1. A sixth machine was entered at the port of Baltimore, Maryland on December 3, 2019. Summons (Jan. 30, 2020), ECF No. 2. After detentions, Customs excluded the five machines entered at Brunswick on December 18, 2019 and excluded the machine entered at Baltimore on December 27, 2019. Compl. 105, 117.

B. The Section 337 Investigation

Three models of Wirtgen's road-milling machines (Model Nos. W 100 CFi, W 120 CFi and W 130 CFi; collectively, the "1810 Series" machines) were subject to an investigation conducted by the ITC under section 337 of the Tariff Act of 1930 ("section 337"), 19 U.S.C. § 1337, into alleged patent infringement. The investigation, initiated in November 2017 upon a complaint filed by Caterpillar, Inc. and Caterpillar Paving Products, Inc. (collectively, "Caterpillar"), culminated in the ITC's finding of a violation of section 337 and resulted in the issuance of a Limited Exclusion Order ("LEO") and certain cease and desist orders barring Wirtgen from importing the 1810 Series machines into the United States. See Certain Road Construction Machines and Components Thereof; Notice of Commission Final Determination Finding a Section 337 Violation; Issuance of a Limited Exclusion Order and a Cease and Desist Order; Termination of the Investigation, USITC Inv. No. 337-TA-1088 (June 27, 2019), available at 2019 WL 2724105 ("ITC Final Determination "). Wirtgen has appealed the ITC's final determination to the Court of Appeals for the Federal Circuit. Compl. ¶ 34.

In its section 337 investigation, the ITC determined that the 1810 Series machines infringed claim 19 of U.S. Patent No. 7,140,693 (the "’693 patent"). Id. ¶¶ 30-33.

C. The Redesigned 1810 Series Machines

On February 14, 2019, the administrative law judge ("ALJ") conducting the section 337 investigation issued a Final Initial Determination that found all asserted claims of the ’693 patent, other than claim 19, to be invalid and found a violation of section 337 based on a finding that the 1810 Series machines infringed claim 19 of that patent. Id. ¶¶ 29-30. "The Commission affirmed the administrative law judge's determination in relevant part and issued the recommended remedies against Wirtgen's 1810 Series machines." Id. ¶ 33.

In the Final Initial Determination, the administrative law judge "found that the swing leg on these machines rotates by an actuator rotating a portion of the lifting column on which the swing leg is mounted, as recited in claim 19." Id. ¶ 31. During the pendency of proceedings before the ITC, Wirtgen redesigned the "swing leg" mechanism of 1810 Series machines with the objective of avoiding infringement of claim 19 of the ’693 patent. Id. ¶¶ 36-40, 45-58. The administrative law judge declined to determine whether or not Wirtgen's redesigned road-milling machines (the "Redesigned 1810 Series" machines) infringed the ’693 patent, concluding that these machines "are outside the scope of [the] investigation" and "not ripe." Id. ¶¶ 42-43. "The Commission adopted this portion of the ALJ's determination, making it final." Id. ¶ 44.

Without mentioning the Redesigned 1810 Series machines, the Limited Exclusion Order excluded from entry "[r]oad construction machines ... that infringe claim 19 of the ’693 patent...." Limited Exclusion Order ¶ 1, USITC Inv. No. 337-TA-1088 (June 27, 2019) ("LEO"), Statement of Undisputed Material Facts in Support of Wirtgen's Mot. for Summ. J. Ex. 6 (Feb. 24, 2020), ECF No. 44.

Wirtgen imported several Redesigned 1810 Series machines between September 9, 2019 and December 13, 2019 that Customs permitted to enter the United States. Compl. ¶¶ 88, 91. Nevertheless, on November 18 and 21, 2019, Customs detained five Redesigned 1810 Series machines at the port of Brunswick, id. ¶ 95, and on December 3, 2019, detained one Redesigned 1810 Series machine at the port of Baltimore, Maryland. Id. ¶ 99. The exclusions from entry of all six Redesigned 1810 Series machines followed these detentions. Id. ¶¶ 105, 117.

D. Protests, Protest Denials, and Summonses

On December 24, 2019, Wirtgen filed with Customs a protest of the exclusions of the machines entered at Brunswick, Georgia (Entry Nos. SCS-73730948 and SCS-75549544). Id. ¶ 119. Customs denied this protest on January 21, 2020. Id. ¶ 128. On December 31, 2019, Wirtgen filed a protest of the exclusion of the machine entered at Baltimore (Entry No. SCS-77482413). Id. ¶ 125. Customs denied this protest on January 27, 2020. Id. ¶ 129.

On a summons filed in this Court on January 30, 2020, Wirtgen contested the denial of the first protest. Summons (Jan. 30, 2020), ECF No. 1. A second summons, filed on the same day, contested the denial of the second protest. Summons (Jan. 30, 2020), ECF No. 2.

E. Related Litigation

On July 19, 2017, prior to the filing of Caterpillar's complaint under section 337, Wirtgen filed a complaint with the Commission alleging violations of section 337 caused by the importation of certain of Caterpillar's road construction machines. Defs.’ Mot. 5. The ITC initiated a section 337 investigation against Caterpillar, Inv. No. 337-TA-1067, that also resulted in a limited exclusion order. Id. Both limited exclusion orders are before the Court of Appeals for the Federal Circuit in a consolidated appeal, Case No. 19-2306. Id.

On December 13,2019, the Patent Trial and Appeal Board ("PTAB"), in response to a petition by Wirtgen, issued a Final Written Decision determining that all challenged claims, including claim 19, of the ’693 patent are unpatentable as obvious. Compl. ¶ 35.

Before commencing this case with the filing of two summonses on January 30, 2020, Wirtgen sought dialogue with Customs to establish that the Redesigned 1810 Series machines did not violate claim 19 of the ’693 patent. Wirtgen's Opp'n to Defs.’ Mot. to Dismiss 6-8 (Feb. 18, 2020), ECF No. 37. On January 16, 2020, the Commission initiated a "modification proceeding." ITC Inv. No. 337-TA-1088M ; see 85 Fed. Reg. 3944 (Int'l Trade Comm. Jan. 23, 2020). The proceeding is ongoing. Defs.’ Mot. 8.

Wirtgen commenced an action in the District Court for the District of Columbia, Wirtgen Am., Inc. v. United States , Case No. 20-cv-00195, alleging that the exclusions of the Redesigned 1810 Series machines by Customs violated the Administrative Procedure Act, the Appointments Clause of the U.S. Constitution, and the right to procedural due process. Compl. ¶ 7.

II. DISCUSSION

A. Subject Matter Jurisdiction

Plaintiff asserts jurisdiction according to 28 U.S.C. § 1581(a) and (i). Id. ¶ 6. Jurisdiction does not exist under subsection (i) when jurisdiction according to another subsection of § 1581 is available unless the remedy provided by that other subsection would be "manifestly inadequate." Int'l Custom Prods., Inc. v. United States, 791 F.3d 1329, 1332 (Fed. Cir. 2015) (quoting Miller & Co. v. United States, 824 F.2d 961, 963 (Fed. Cir. 1987) ). The court, therefore, considers whether jurisdiction exists according to 28 U.S.C. § 1581(a), under which the Court of International Trade has exclusive jurisdiction of an action to contest the denial of a protest under section 515 of the Tariff Act, 19 U.S.C. § 1515. If the court determines jurisdiction exists according to 28 U.S.C. § 1581(a), that determination also resolves the issue of the Commission's proposed intervention. As provided in the Customs Courts Act, 28 U.S.C. § 2631(j)(1)(A), "no person may intervene in a civil action under section 515 ... of the Tariff Act of 1930."

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