UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`
`
`In the Matter of:
`
`CERTAIN ROAD MILLING
`MACHINES AND COMPONENTS
`THEREOF
`
`
`
`
`
`Investigation
`No. 337-TA-1067
`
`
`COMMISSION INVESTIGATIVE STAFF’S
` DISCOVERY STATEMENT
`
`
`ISSUES TO BE LITIGATED
`
`A. Whether there is a violation of subsection (a)(1)(B) of section 337, as alleged by
`
`the Complainant, by the Respondents’ importation into the United States, the sale for
`
`importation, or the sale within the United States after importation of certain road milling
`
`machines and components thereof (“Accused Products”);
`
`B. Whether, as alleged by the Complainant, the Respondents’ Accused Products
`
`directly or indirectly infringe one or more of:
`
`1.
`
`Claims 1–5, 7–12, and 14–17 of U.S. Patent No. 9,644,340 (“the ’340
`
`patent”);
`
`2.
`
`Claims 1, 2, 5, 6, 9–22, and 27–29 of U.S. Patent No. 9,624,628 (“the ’628
`
`patent”);
`
`3.
`
`Claims 1–7, 13–24, and 26 of U.S. Patent No. 9,656,530 (“the ’530
`
`patent”);
`
`4.
`
`Claims 1, 2, 4, 6–8, 11, 12, and 15–17 of U.S. Patent No. 7,530,641
`
`1
`
`I.
`
`
`
`
`WASHINGTON, D.C.
`
`Before the Honorable David P. Shaw
`Administrative Law Judge
`
`
`
`In the Matter of:
`
`CERTAIN ROAD MILLING
`MACHINES AND COMPONENTS
`THEREOF
`
`
`
`
`
`Investigation
`No. 337-TA-1067
`
`
`COMMISSION INVESTIGATIVE STAFF’S
` DISCOVERY STATEMENT
`
`
`ISSUES TO BE LITIGATED
`
`A. Whether there is a violation of subsection (a)(1)(B) of section 337, as alleged by
`
`the Complainant, by the Respondents’ importation into the United States, the sale for
`
`importation, or the sale within the United States after importation of certain road milling
`
`machines and components thereof (“Accused Products”);
`
`B. Whether, as alleged by the Complainant, the Respondents’ Accused Products
`
`directly or indirectly infringe one or more of:
`
`1.
`
`Claims 1–5, 7–12, and 14–17 of U.S. Patent No. 9,644,340 (“the ’340
`
`patent”);
`
`2.
`
`Claims 1, 2, 5, 6, 9–22, and 27–29 of U.S. Patent No. 9,624,628 (“the ’628
`
`patent”);
`
`3.
`
`Claims 1–7, 13–24, and 26 of U.S. Patent No. 9,656,530 (“the ’530
`
`patent”);
`
`4.
`
`Claims 1, 2, 4, 6–8, 11, 12, and 15–17 of U.S. Patent No. 7,530,641
`
`1
`
`I.
`
`
`
`
`
`(“the ’641 patent”);
`
`5.
`
`Claims 1–3, 5–24, and 26–36 of U.S. Patent No. 7,828,309 (“the ’309
`
`patent”) (collectively, the Asserted Claims”).
`
`C. Whether there exists a Domestic Industry with respect to Complainant’s products;
`
`whether these products practice at least one claim of each asserted patent; and whether
`
`there has been significant investment in plant and equipment, significant employment of
`
`labor or capital post-importation manufacturing, repair, technical support, warranty
`
`support, and training activities in the United States.
`
`D. Whether the Asserted Claims are invalid or unenforceable, and/or whether the
`
`Respondents have any other appropriate affirmative defense;
`
`E. Whether, in the event a violation of section 337 is found, the Commission should
`
`issue cease and desist orders directed to Respondents; and
`
`F.
`
`Whether, in the event a violation of section 337 is found, a bond should be
`
`imposed for imports and sales occurring during the presidential review period, and if so,
`
`the bond rate that should be imposed.
`
`The private parties are currently discussing a stipulation relating to various discovery related
`
`procedural matters (such as an amendment to the protective order for source code protections), to
`
`be filed shortly. The Staff does not object.
`
`II.
`
`
`
`EVIDENCE TO BE OFFERED BY THE STAFF
`
`Evidence obtained through discovery among the parties and from non-parties may be
`
`offered at the hearing by the Staff. This evidence may include the issues outlined in the Notice
`
`of Investigation and Section I supra.
`
`INFORMATION AND EVIDENCE THAT MAY BE SOUGHT FROM OTHER
`2
`
`III.
`
`
`
`
`
`PARTIES AND THIRD PERSONS
`
`
`
`To the extent necessary, the Staff intends to serve written discovery requests on the
`
`private parties to elicit relevant information. The Staff may also serve additional discovery
`
`requests on third parties as necessary. In particular, the Staff may request additional discovery
`
`from the private parties or third parties after the private parties identify the documents,
`
`information, and other evidence on which they intend to rely in support of their respective
`
`positions. Further, the Staff may notice for deposition and depose persons identified by the
`
`private parties as having information relevant to this proceeding, including experts that the
`
`parties intend to call for testimony at the hearing.
`
`
`
`The Staff will participate as appropriate in the depositions noticed by the private parties.
`
`In appropriate circumstances, the Staff may seek and serve subpoenas in order to obtain
`
`documents or testimony from third persons.
`
`PROPOSED SCHEDULE FOR EXCHANGE OF INFORMATION WITHOUT
`IV.
`FORMAL DISCOVERY METHODS
`
`
`
`The proposed procedural schedule includes dates for the exchange of information
`
`required by Ground Rule 6, and dates relating to disclosure of priority dates, claim terms, and
`
`domestic industry products.
`
`INFORMATION AND EVIDENCE THAT CAN BE OBTAINED ONLY BY
`V.
`DEPOSITION, INTERROGATORY, SUBPOENA, OR REQUEST FOR ADMISSION
`
`
`
`The Staff will endeavor to use, as much as possible, informal methods of obtaining
`
`information and evidence. Nonetheless, the formal discovery process may be the best method
`
`for efficient exchange of information among the parties. At this point, it is not known what
`
`information and evidence may be obtained only by deposition, interrogatory, subpoena, or
`
`request for admission.
`
`
`
`3
`
`
`
`VI.
`
`
`
`JOINT PROPOSED PROCEDURAL SCHEDULE
`
`In Order No. 5, requesting the submission of discovery statements, the presiding
`
`Administrative Law Judge tentatively scheduled the hearing in this investigation for
`
`April 19-24, 2018. Accordingly, the parties have jointly proposed a schedule with hearing
`
`dates of April 19, 2018 attached hereto as Exhibit A.
`
`
`
`
`
`Dated: September 22, 2017
`
`
`
`Respectfully submitted,
`
`/s/Monisha Deka
`
`Margaret Macdonald, Director
`Jeffrey T. Hsu, Supervisory Attorney
`Monisha Deka, Investigative Attorney
`
`OFFICE OF UNFAIR IMPORT INVESTIGATIONS
`U.S. International Trade Commission
`500 E Street SW, Suite 401
`Washington, DC 20436
`(202) 205-3180
`(202) 205-2158 (facsimile)
`
`4
`
`
`
`
`
`
`
`
`
`Certificate of Service
`Investigation 337-TA-1067
`
`I, Monisha Deka, hereby certify that on September 22, 2017, copies of the foregoing Commission
`Investigative Staff’s Discovery Statement were served on parties as indicated below:
`
`
`U.S. International Trade Commission:
`
`
`
`The Honorable David. P Shaw
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, SW, Room 317
`Washington, DC 20436
`
`One copy by Hand Delivery with
`electronic courtesy copy
`
`
`
`One (1) copy by Electronic Mail
`
`
`
`One (1) copy by Electronic Mail
`
`
`
`
`
`
`
`
`Counsel for Complainant Wirtgen America,
`Inc.
`Daniel E. Yonan, Esq.
`STERNE, KESSLER, GOLDSTEIN & FOX,
`PLLC
`l100 New York Avenue, N.W.
`Washington, DC 20005
`Counsel for Respondents Caterpillar Prodotti
`Stradali S.r.L, Caterpillar Mitelli SpA,
`Caterpillar Americas CV, Caerpillar Paving
`Products, Inc., and Caterpillar, Inc.
`Christine E. Lehman , Esq.
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER LLP
`901 New York Avenue, NW
`Washington, DC 20001
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`/s/Monisha Deka
`Monisha Deka
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Suite 401
`Washington, DC 20436
`(202) 205-3180
`(202) 205-2158 (facsimile)
`
`
`
`Exhibit A
`
`JOINT PROCEDURAL SCHEDULE
`
`Description
`
`Institution
`
`Complainants to file first declaration detailing
`efforts to reduce the number of patent claims
`and patents at issue, as well as a list of the
`patents and claims remaining at issue (GR 6.a)
`
`File list of claim terms that each party contends
`should be construed (GR 6.b)
`
`Exchange initial contention interrogatory
`responses regarding issues as to which the
`party bears the burden of proof
`
`Complainants to file list of all products they
`will rely upon to satisfy domestic industry
`requirement (GR 6.h)
`
`Date
`
`Friday, August 25, 2017
`
`Monday, October 2, 2017
`
`Wednesday, October 18, 2017
`
`Friday, October 27, 2017
`
`Friday, October 27, 2017
`
`Deadline for first settlement conference (GR 3)
`
`Friday, November 03, 2017
`
`Exchange proposed constructions for the claim
`terms that the parties contend should be
`construed
`
`Thursday, November 7, 2017
`
`File Notice of Prior Art (GR 2)
`
` Tuesday, November 7, 2017
`
`Thursday, November 09, 2017
`
`Friday, November 10, 2017
`
`Friday, November 10, 2017
`
`Deadline to meet and confer in an attempt to
`reconcile or otherwise limit disputed claim
`terms and jointly identify terms most
`significant to resolving disputes (GR 6.b)
`
`Submission of First Settlement Conference
`Joint Report (GR 3)
`
`Exchange initial contention interrogatory
`responses regarding issues as to which the
`party does not bear the burden of proof
`
`
`
`6
`
`
`
`Description
`
`Date
`
`File proposed constructions of claim terms
`identified by each party (GR 6.c)
`
`File joint list of disputed claim terms and
`proposed constructions thereof and joint list of
`claim terms that must be construed but whose
`meanings are not disputed and the joint
`proposed constructions thereof (GR 6.b, c)
`
`Deadline to meet and confer to narrow issues
`in preparation of the Joint Claim Construction
`chart (GR 6.c)
`
`Parties to file joint statement identifying
`accused products (GR 6.h)
`
`File Joint Claim Construction chart containing
`construction of those terms on which the
`parties agree; including each party's proposed
`construction of disputed terms; the ten most
`significant terms; and any dispositive terms
`(GR 6.d)
`
`File identification of expert witnesses,
`including their expertise and curriculum vitae
`(GR 4.a)
`
`Complainants to file list of proposed
`representative accused products based on
`infringement contentions (GR 6.h)
`
`File tentative list of witnesses a party will call
`to testify at the hearing, with an identification
`of each witness's relationship to the party
`
`Respondents file responses to Complainants'
`proposed representative accused products (GR
`6.h)
`
`Each party files initial claim construction brief
`(GR 6.e)
`
`Exchange final contention interrogatory
`responses regarding issues as to which the
`
`
`
`7
`
`Tuesday, November 14, 2017
`
`Tuesday, November 21, 2017
`
`Tuesday, November 28, 2017
`
`Tuesday, November 28, 2017
`
`Friday, December 01, 2017
`
`Tuesday, December 05, 2017
`
`Tuesday, December 05, 2017
`
`Tuesday, December 05, 2017
`
`Wednesday, December 20, 2017
`
`Tuesday, December 22, 2017
`
`Wednesday, January 3, 2018
`
`
`
`Description
`
`Date
`
`party bears the burden of proof (subject to
`supplementation based on later discovery)
`
`Each party files reply claim construction brief
`(GR 6.e)
`
`Parties to file joint stipulation regarding
`representative accused products (GR 6.h)
`
`Exchange final contention interrogatory
`responses regarding issues as to which the
`party does not bear the burden of proof (subject
`to supplementation based on later discovery)
`
`Friday, January 8, 2018
`
`Monday, January 08, 2018
`
`Wednesday, January 17, 2018
`
`Fact Discovery cutoff and completion
`
`Wednesday, January 17, 2018
`
`Deadline for motions to compel-discovery
`
`Monday, January 22, 2018
`
`Parties file joint technology stipulation (GR
`6.i)
`
`Deadline for responses to motions to compel
`discovery
`
`Tuesday, January 23, 2018
`
`Tuesday, January 30, 2018
`
`File initial expert reports (GR 4.b)
`
`Wednesday, January 31, 2018
`
`File rebuttal expert reports (GR 4.b)
`
`Tuesday, February 13, 2018
`
`Deadline for filing summary determination
`motions
`
`Parties to submit (to administrative law judge)
`PDF versions of initial and rebuttal expert
`reports on CD, DVD, or flash drive (GR4.b)
`
`Friday, February 16, 2018
`
`Thursday, February 22, 2018
`
`Expert discovery cutoff and completion
`
`Friday, March 02, 2018
`
`Exchange of exhibit lists among the parties
`
`Friday, March 09, 2018
`
`Exchange direct exhibits (including witness
`statements), with physical and demonstrative
`exhibits available
`
`Tuesday, March 13, 2018
`
`Deadline for second settlement conference
`
`Wednesday, March 14, 2018
`
`
`
`8
`
`
`
`Description
`
`(GR 3)
`
`Date
`
`Exchange deposition designations
`
`Friday, March 16, 2018
`
`Submission of Second Settlement Conference
`Joint Report (GR3)
`
`Exchange rebuttal exhibits (including witness
`statements), with physical and demonstrative
`exhibits available
`
`Exchange counter deposition designations
`
`File prehearing statements and brief, including
`(a) witness list (GR 7.a); (b) exhibit list (GR
`7.b); and (c) statement of issues to be
`considered at the hearing (GR 7.c)
`
`File High Priority Objections (GR 9.f)
`
`Deadline for filing motions in limine
`
`File receipt of evidence without a sponsoring
`witness
`
`File responses to high priority objections
`
`Deadline for filing responses to motions in
`limine
`
`Staff - File prehearing statements and brief,
`including (a) witness list (GR 7.a); (b) exhibit
`list (GR 7.b); and (c) statement of issues to be
`considered at the hearing (GR 7.c)
`
`Submit proposed exhibit lists and exhibits on a
`single drive, including witness statements in
`binders and on a single drive (GR 8.a, 9.d)
`
`Wednesday, March 21, 2018
`
`Tuesday, March 27, 2018
`
`Friday, March 30, 2018
`
`Friday, March 30, 2018
`
`Monday, April 02, 2018
`
`Monday, April 02, 2018
`
`Monday, April 02, 2018
`
`Monday, April 9, 2018
`
`Monday, April 9, 2018
`
`Wednesday, April 11, 2018
`
`Tuesday, April 17, 2018
`
`Pre-Hearing Conference
`
`Thursday, April 19, 2018
`
`Hearing
`
`Thursday, April 19, 2018 to Tuesday, April
`24, 2018
`
`
`
`9
`
`
`
`Description
`
`File initial post-hearing briefs, set of final
`exhibits (GR 9.g), final exhibit lists (GR 9.h),
`and joint outline of the issues to be decided in
`the final ID (GR 1l.a)
`
`Date
`
`Friday, May 11, 2018
`
`File reply post-hearing briefs
`
`Wednesday, May 23, 2018
`
`Deadline to submit binder set of final exhibit
`lists and exhibits to the Office of General
`Counsel (GR 9.i)
`
`Friday, June 22, 2018
`
`Initial Determination due
`
`Friday, August 24, 2018
`
`Target date for completion of Investigation
`
`Wednesday, December 26, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
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