Wirtgen Am., Inc. v. United States

• Citation: 447 F.Supp.3d 1359
• Decision Date: 18 May 2020
• Docket Number: Slip Op. 20-70,Court No. 20-00027
• Parties: WIRTGEN AMERICA, INC., Plaintiff, v. UNITED STATES, et al., Defendants.
• Court: U.S. Court of International Trade

447 F.Supp.3d 1359

WIRTGEN AMERICA, INC., Plaintiff,
v.
UNITED STATES, et al., Defendants.

Slip Op. 20-70
Court No. 20-00027

United States Court of International Trade.

May 18, 2020

Daniel E. Yonan, Dallin G. Glenn, Michael E. Joffre, Donald R. Banowit, and Kristina C. Kelly, Sterne, Kessler, Goldstein & Fox, PLLC, of Washington, D.C., and Ryan D. Levy, Patterson Intellectual Property Law, P.C., of Nashville, TN argued for Plaintiff Wirtgen America, Inc. Seth R. Ogden also appeared.

Guy R. Eddon, Trial Attorney, Edward F. Kenny and Marcella Powell, Senior Trial Counsel, Commercial Litigation Branch, Civil Division, U.S. Department of Justice, of New York, N.Y., argued for Defendants United States; U.S. Department of Homeland Security and Acting Secretary Chad F. Wolf; and U.S. Customs and Border Protection, Acting Commissioner Mark A. Morgan, Director of Machinery Center of Excellence and Expertise Juan J. Porras, and Chief of the Intellectual Property Rights and Restricted Merchandise Branch of the Office of Trade Charles R. Steuart. With them on the brief were Joseph H. Hunt, Assistant Attorney General, Jeanne E. Davidson, Director, Patricia M. McCarthy and Justin R. Miller, Assistant Directors, and Jason Kenner, Senior Trial Counsel. Aimee Lee also appeared.

OPINION

Choe-Groves, Judge:

This action concerns road-milling machines that were redesigned to avoid infringing upon a registered patent. Plaintiff Wirtgen America, Inc. ("Plaintiff" or "Wirtgen") commenced this action to obtain judicial review of a decision by U.S.

447 F.Supp.3d 1362

Customs and Border Protection ("Customs") excluding the entry of six redesigned 1810 Series road-milling machines ("Redesigned RMM(s)") pursuant to a Limited Exclusion Order issued by the International Trade Commission ("Commission" or "ITC"). Plaintiff challenges Customs’ denial of Wirtgen's protest regarding the exclusion of the Redesigned RMMs sought to be entered into the United States. Compl. ¶¶ 1-2, ECF No. 7. Plaintiff seeks a declaratory judgment and a court order directing Customs to grant entry of the Redesigned RMMs. Id. ¶¶ 3-4.

Before the court are Plaintiff's Motion for [Partial] Summary Judgment, ECF No. 40 ("Pl.’s Mot. Summ. J")¹ , Plaintiff's Renewed Motion for Preliminary Relief and Bond, ECF No. 59 ("Pl.’s PI Mot."), and Defendants’ Renewed Motion to Dismiss or, in the Alternative, Cross-Motion for Summary Judgment, ECF No. 80 ("Defs.’ Mot. Dism."). The court takes notice that Defendants no longer contest Wirtgen's allegation of non-infringement. Defs.’ Mot. Dism. 17, 25. For the following reasons, the court grants Plaintiff's Motion for [Partial] Summary Judgment, denies Plaintiff's Renewed Motion for Preliminary Relief and Bond as moot, denies Defendants’ Renewed Motion to Dismiss, or, in the Alternative, Cross-Motion for Summary Judgment, and dismisses Count II of the Complaint as moot.

I. BACKGROUND

Wirtgen is the exclusive U.S. importer of Wirtgen Group's heavy machinery under the Wirtgen, Vögele, Hamm, and Kleemann brands used primarily in road construction and maintenance. Compl. ¶¶ 9-10; Prelim. Inj. Hr'g Tr. 18:9-13, Apr. 2, 2020, ECF No. 76 ("PI Tr."). Wirtgen delivers the subject merchandise to a network of domestic dealers who sell to end-use customers. PI Tr. 17:21-18:6. This case involves Wirtgen-brand road-milling machines (used interchangeably with roto millers, and cold-milling and cold-planer machines), which remove surface layers in the first stage of pavement resurfacing or maintenance. Compl. ¶ 12; Mem. P. & A. Supp. Wirtgen's Mot. Prelim. Relief & Bond 1, 5, ECF No. 60 ("Pl.’s PI Br."); PI Tr. 65:13-17.

The ITC initiated Investigation 337-TA-1088 ("1088 Investigation") under Section 337 of the Tariff Act of 1930 ("Section 337"), 19 U.S.C. § 1337, upon a patent infringement complaint filed by Caterpillar, Inc. and Caterpillar Paving Products, Inc. (collectively, "Caterpillar").² Certain Road Construction Machines and Components Thereof, 82 Fed. Reg. 56,625, 56,625 (Int'l Trade Comm'n Nov. 29, 2017) (institution of investigation by Commission into Section 337 violations). Caterpillar³ alleged that Wirtgen infringed U.S. Patent No. 7,140,693 B2 ("'693 Patent"). See id.

447 F.Supp.3d 1363

The '693 Patent claims, in relevant part, the invention of an extendable and retractable swing leg: "one wheel or track [ ] connected to a [ ] lifting column connected to [the frame of a work machine] ..." where rotating the "wheel or track ... includes rotating [the] lifting column." Compl. Ex. A, at 13, ECF No. 7-1 (" '693 Patent").⁴ The '693 Patent includes the following illustration:

'693 Patent, at 4.

In the ITC proceeding, the experts disagreed on whether the yoke, a bracket that fits over the wheel track, is part of the lifting column. Pl.’s PI Br. Ex 2, at 34-35, ECF No. 60-2 (Final Initial Determination, "FID"); see '693 Patent, at 13. Caterpillar's expert opined that in the Bitelli SF 102 C⁵ ("Bitelli Prior Art"), a Bitelli cold planer machine sold in the 1990s-2000s, the yoke was distinct from the lifting column because the lifting column did not rotate when the yoke rotated the rear wheel tracks, unlike the '693 Patent. FID 29, 34-35. The Administrative Law Judge agreed, concluding in the Final Initial Determination that Claim 19 is not anticipated because "[u]nlike the coaxial sleeve and bracket claimed as part of the lifting column in the '693 patent, the yoke in the [Bitelli Prior Art] is a distinct structure that rotates the tracks on a separate axis from the lifting column ...." Id. at 35–36.

The ITC adopted the Administrative Law Judge's Final Initial Determination that the Wirtgen W 100 CFi, W 120 CFi, and W 130 CFi Series 1810 road-milling machines (collectively, "Original RMMs") infringed Claim 19 of the '693 Patent. Certain Road Construction Machines and Components Thereof, 84 Fed. Reg. 31,910, 31,911 (Int'l Trade Comm'n July 3, 2019) (notice of Commission final determination); Pl.’s PI Br. 6; FID 84-85.

447 F.Supp.3d 1364

Contemporaneous with the ITC proceeding, Wirtgen redesigned the swing leg of the Original RMMs based on the Bitelli Prior Art to avoid infringing Claim 19 of the '693 Patent and presented the swing leg redesign as evidence during the trial before the Administrative Law Judge. Statement of Undisputed Material Facts Supp. of Wirtgen's Mot. For Summ. J. ¶ 13, ECF No. 44 ("SUMF"); Compl. ¶¶ 36-41; FID 24-25. The Administrative Law Judge declined to consider the redesigned swing leg because the "design[ ] [had] not been implemented in any imported articles, however, and [was] thus outside the scope of [the] investigation. Th[is] alternate swing-leg design[ ] [was] not ripe for a determination of infringement or non-infringement in this investigation." Compl. ¶¶ 42-43; FID 25. The ITC issued a Limited Exclusion Order ("LEO") barring importation by Wirtgen of products infringing Claim 19 of the '693 Patent and issued a cease-and-desist order against Wirtgen. Limited Exclusion Order, USITC Inv. No. 337-TA-1088 (June 27, 2019), ECF No. 7-5, Ex. 4 ("LEO"); 84 Fed. Reg. at 31,911. Paragraph 1 of the LEO states: "Road construction machines and components thereof that infringe claim 19 of the '693 patent ... are excluded from entry for consumption into the United States [or] entry for consumption from a foreign-trade zone ...." LEO ¶ 1. Wirtgen's appeal of the ITC's determination remains under review at the U.S. Court of Appeals for the Federal Circuit. Compl. ¶ 34; SUMF ¶ 12.

Wirtgen incorporated the redesigned swing leg into 1810 Series machines that bear the new branding of W 100 XFi, W 100 XTi, W 120 XFi, W 120 XTi, W 130 XFi, and W 130 XTi. Id. ¶¶ 46-54. The "X" indicates that the machines have a new swing-leg redesign.⁶ Compl. ¶¶ 55–56; SUMF ¶¶ 21–26.

Wirtgen's counsel met with Customs officials to explain the structure, operation, and new branding of the Redesigned RMMs on August 13, 2019. Compl. ¶¶ 65–66; Pl.’s PI Br. 7; SUMF ¶ 29. In a September 5, 2019 memorandum ("Wirtgen Memorandum") to Customs, Wirtgen's counsel submitted six photographs and nine videos of a W 120 XFi Redesigned RMM, serial number 18101069, which depict the distinction between the Redesigned RMMs and the Original RMMs, demonstrating to Customs officials that the Redesigned RMMs do not infringe Claim 19 of the '693 Patent. See SUMF ¶¶ 31-34; Compl. ¶¶ 68-82. The Wirtgen Memorandum depicts the "rotational coupling" of the Original RMM swing leg that the Administrative Law Judge found infringed Claim 19, compared to the "rotational decoupling" of the Redesigned RMM swing leg designed to avoid Claim 19 by incorporating the swing leg design of the Bitelli Prior Art. Compl. Ex. 6, at 7–10 ("Wirtgen's Mem."). The Wirtgen Memorandum also includes photographs identifying a "keyway" or visible vertical groove down the length of the lifting column. Id. at 10–13. The series of photographs of the wheel track and yoke in straight, steering left, and steering right positions shows that the lifting column keyway remains stationary regardless of the rotation of the wheel track and yoke. See id.; SUMF ¶¶ 83-85. The Wirtgen...