By John Presper
On March 15, 2021, the U.S. Court of Appeals for the Federal Circuit issued its opinion affirming-in-part the ITC’s finding of a violation of section 337 in Certain Road Milling Machines and Components Thereof (Inv. No. 337-TA-1067).

By way of background, the 337-TA-1067 investigation was based on a July 19, 2017 complaint filed by Wirtgen America, Inc. of Antioch, Tennessee (“Wirtgen”) alleging violation of section 337 by Caterpillar BiteIli SpA of Italy; Caterpillar Prodotti Stradali S.r.L. of Italy; Caterpillar Americas CV of Switzerland; Caterpillar Paving Products, Inc. of Minneapolis, Minnesota; and Caterpillar Inc., of Peoria, Illinois (collectively, “Caterpillar” or “Respondents”) in the unlawful importation and/or sale of certain road milling machines and components thereof that infringe one or more claims of U.S. Patent Nos. 9,644,340 (“the 340 patent”); 9,624,628 (“the ’628 patent”); 9,656,530 (“the ’530 patent”); 7,530,641 (“the ’641 patent”); and 7,828,309 (“the ’309 patent”). Wirtgen voluntarily dismissed its allegations against Caterpillar Bitelli SpA, as well as its allegations against all Respondents as to the ’628 patent.

On October 1, 2018, ALJ David P. Shaw issued his final initial determination finding a violation of section 337 with respect to the ’309 and ’530 patents, and finding no violation with respect to the ’641 and ’340 patents. Regarding the ’641 patent, ALJ Shaw determined that Wirtgen had not shown that Caterpillar induced its customers to operate the accused road milling machines in a manner that infringed method claims 11 and 17. The ALJ’s determinations became those of the Commission when it declined to review them. Caterpillar appealed regarding the ’530 and ’309 patents, and Wirtgen cross-appealed as to the ’641 patent.

According to the opinion, the Federal Circuit found no reversible error in the ALJ’s determinations (adopted by the Commission) with respect to the ’530 and ’309 patents, which rest on substantial evidence. Regarding Wirtgen’s challenge to the rulings regarding induced infringement of claims 11 and 17 of the ’641 patent, the Court found that the ALJ’s determinations that Wirtgen did not present evidence of (1) Caterpillar’s knowledge of the ’641 patent, and (2) Caterpillar’s knowledge that the induced acts infringed the ’641 patent, were not supported by substantial evidence. In particular, the Court noted that Wirtgen expressly alleged knowledge sufficient for induced infringement in its pre and post-hearing briefs, and that Caterpillar never disputed those allegations. Further, the Court observed that Caterpillar had admitted that it knew about the ’641 patent, and that Caterpillar did not dispute Wirtgen’s assertions that it knew that its customers infringed the ’641 patent. The Court stated, “The ALJ nevertheless, sua sponte, found that Wirtgen had not proved its assertion of knowledge. Given the record cited to the ALJ by Wirtgen, and the absence of any contest on the point by Caterpillar, that was not a reasonable finding to make.”

In a concurring opinion, Judge O’Malley reiterated a point she previously made in her dissenting opinion in Suprema, Inc. v. Int’l Trade Comm’n, 796 F.3d 1338, 1354 (Fed. Cir. 2015) (en banc), that the Commission has no authority to bar products that are non-infringing at the date of importation and that will only become infringing if and when some future parties are induced to use the products in a way that infringes a method claim.