By Tiffany Hu

Law360 (April 22, 2019, 3:20 PM EDT) — The U.S. International Trade Commission mostly struck down Caterpillar Inc.’s efforts to invalidate one of the patents held by the American arm of a German construction machinery company, according to a notice to be published Tuesday in the Federal Register.

The ITC, which had been asked to review aspects of an administrative law judge’s October initial decision on a number of Wirtgen America Inc. patents, found that Caterpillar was unable to show that two claims in U.S. Patent Number 7,828,309 it was alleged to have infringed were invalid as obvious. Wirtgen had accused Caterpillar in 2017 of selling road milling machines for concrete and asphalt pavement that infringed its patents.

After the October ruling, Caterpillar told the ITC that because the judge had found that a person of ordinary skill in the art would have combined three pieces of prior art, the judge should have naturally found that the combination of prior art would have rendered three claims in the ‘309 patent invalid as obvious.

However, the ITC ruled that Caterpillar had successfully showed that only one claim in the ‘309 patent was invalid as obvious over prior art combination, and failed to show “through clear and convincing evidence” that the other two claims in the patent were invalid.

“The commission has determined not to review the remainder of the [initial determination],” the ITC wrote.

The notice also acknowledges that the ITC had earlier misstated that the administrative law judge did not find in October that Caterpillar violated Section 337 of the Tariff Act of 1930.

In fact, the judge had ruled that Caterpillar had infringed the ‘309 patent and another Wirtgen patent, U.S. Patent Number 9,656,530, though the judge did not find a violation with regard to the remaining patents, U.S. Patent Numbers 7,530,641 and 9,644,340, according to the filing.

“We note that these notices inadvertently misstated that the ALJ found no violation of section 337 in this investigation, and we hereby correct those misstatements,” the ITC wrote.

Wirtgen first brought its complaint to the ITC in July 2017, urging the commission to investigate whether road milling machines sold by Caterpillar and related companies, including the Switzerland-based Caterpillar Americas CV and the Italy-based Caterpillar Bitelli SpA, infringed its patents. Bitelli was later dropped from the investigation, according to the ITC.

Wirtgen’s complaint sought a cease-and-desist order and a limited exclusion order against Caterpillar and the related companies, according to commission documents.

The ITC said in its notice that the commission may soon issue exclusion or cease-and-desist orders on the allegedly infringing machines, adding that it was now accepting written submissions on the proposed remedy and its effect on the public interest.

An attorney for Wirtgen declined to comment Monday. Counsel for Caterpillar did not immediately respond to a request for comment Monday.

Caterpillar is represented by James Barney and David K. Mroz of Finnegan Henderson Farabow Garrett & Dunner LLP and Christine E. Lehman and Connor S. Houghton of Reichman Jorgensen LLP.

Wirtgen is represented by Daniel Yonan, Michael E. Joffre, Paul A. Ainsworth, Jonathan Tuminaro, Kyle E. Conklin and Ralph W. Powers III of Sterne Kessler Goldstein & Fox PLLC and John F. Triggs, Ryan D. Levy, William E. Sekyi and Seth R. Ogden of Patterson Intellectual Property Law PC.

The investigation is Certain Road Milling Machines and Components Thereof, investigation number 337-TA-1067, before the U.S. International Trade Commission.

–Additional reporting by Kevin Penton. Editing by Daniel King.