By John Presper
On February 12, 2014, ALJ David P. Shaw issued Order No. 17 and No. 18 in Certain Crawler Cranes and Components Thereof (Inv. No. 337-TA-887).

According to Order No. 17, Complainant Manitowoc Cranes, LLC (“Manitowoc”) moved for summary determination that it satisfies the economic prong of the domestic industry requirement and that it satisfies the domestic industry requirement for trade secret misappropriation.  Respondents Sany Heavy Industry Co., Ltd. and Sany America, Inc. (collectively, “Sany”) stipulated to and did not oppose the motion.  Sany’s response, however, indicated that although it stipulated to the motion with respect to the economic prong, Manitowoc had dedicated a significant portion of the motion to the technical prong, straying from the scope of Sany’s consent.  Regardless, ALJ Shaw determined that the “central question” – whether the economic prong of the domestic industry requirement is satisfied – could still be determined.

Manitowoc asserted that it met the economic prong by operating two manufacturing facilities in the U.S. related to the production of the Manitowoc 31000 crane and spending undisclosed amounts on rental, depreciation and taxes for these facilities as well as factory overhead and costs.  As to labor and capital, Manitowoc asserted that from 2009-2012 it spent undisclosed amounts in labor expenses for its employees related to development and contract engineering for the Manitowoc 31000 crane, and on materials and supplies for the development and manufacturing of that product.  Manitowoc also argued that these plant, equipment, labor and capital investments constituted substantial investments in the exploitation of the asserted patents.  Further, Manitowoc argued that Sany had incorporated Manitowoc trade secrets into the Sany SCC8500 crane and that Sany’s lease of this crane injured Manitowoc’s ability to sell or lease Manitowoc’s cranes.

ALJ Shaw noted that the crawler crane market is relatively small in the U.S. and that, in this context, the investments cited by Manitowoc and unopposed by Sany satisfied the economic prong.  The ALJ made no determination, however, with respect to the technical prong.  ALJ Shaw also agreed with Manitowoc that, given the small number of sales made annually in the crawler crane market, Manitowoc had demonstrated that the lease of the Sany SCC8500 had injured or threated to injury the domestic industry for 400-600 ton crawler cranes.  Sany did not oppose these facts.  Accordingly, ALJ Shaw granted the motion, finding that Manitowoc had satisfied the economic prong of the domestic industry requirement and the domestic industry requirement for trade secret misappropriation.

According to Order No. 18, Sany moved for summary determination that the asserted claims of U.S. Patent Nos. 7,546,928 and 7,967,158 are invalid for lack of enablement because the written descriptions “fail[ed] to enable the full scope” of the asserted claims.  Specifically, Sany argued that a different Manitowoc publication – “the ‘202 publication” – “enabled” the asserted claims, but in comparison the specifications of the asserted patents lacked the requisite detail for enablement and, based on the description of the asserted patents, undue experimentation would be required to make and use the claims.  ALJ Shaw determined that Sany’s comparison of the ‘202 publication with the asserted patent claims was legally irrelevant and that Sany’s evidence of undue experimentation was insufficient.  Accordingly, the motion was denied.