Case: 19-2306 Document: 98 Page: 1 Filed: 12/18/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CATERPILLAR INC., CATERPILLAR PAVING
PRODUCTS, INC.,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
WIRTGEN GMBH, JOSEPH VOGELE AG,
WIRTGEN GROUP HOLDING GMBH, WIRTGEN
AMERICA, INC.,
Intervenors
______________________
2019-2306
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-1088.
______________________
Decided: December 18, 2020
______________________
LUKE MCCAMMON, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, argued for ap-
pellants. Also represented by JAMES R. BARNEY, MAREESA
ARNITA FREDERICK.
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2 CATERPILLAR INC. v. ITC
HOUDA MORAD, Office of General Counsel, United
States International Trade Commission, Washington, DC,
argued for appellee. Also represented by SIDNEY A.
ROSENZWEIG, DOMINIC L. BIANCHI, WAYNE W. HERRINGTON.
MICHAEL E. JOFFRE, Sterne Kessler Goldstein & Fox,
PLLC, Washington, DC, argued for intervenors. Also rep-
resented by PAUL ASHLEY AINSWORTH, DONALD BANOWIT,
WILLIAM MILLIKEN, RALPH WILSON POWERS, III, DANIEL
YONAN; MARK ANDREW KILGORE, RYAN D. LEVY, SETH R.
OGDEN, WILLIAM E. SEKYI, JOHN FRANCIS TRIGGS, Patter-
son Intellectual Property Law, PC, Nashville, TN.
______________________
Before DYK, SCHALL, and HUGHES, Circuit Judges.
DYK, Circuit Judge.
The International Trade Commission (“Commission”)
determined that certain claims of
U.S. Patent No.
7,140,693 (“the ’693 patent”) were invalid because of an on-
sale bar. Caterpillar Inc. and Caterpillar Paving Products,
Inc. (collectively “Caterpillar”) appeal the Commission’s in-
validity determination as to claim 28. 1 We affirm.
1 The Commission found claims 1, 15–18, 24, 26–28,
36, and 38 of the ’693 patent invalid due to the on-sale bar.
Caterpillar only appeals that invalidity ruling with respect
to claim 28. The other claims were also found invalid on
other grounds.
Wirtgen GMBH v. International Trade Commission,
No. 19-2320, which involved the same Commission pro-
ceeding, was deconsolidated from this case on November 6,
2020, and affirmed pursuant to Fed. Cir. R. 36 on Novem-
ber 10, 2020.
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CATERPILLAR INC. v. ITC
BACKGROUND
The ’693 patent “relates generally to work machines for
the treatment of roadway surfaces, and more particularly
to a planer or milling machine for asphalt and concrete.”
’693 patent, col. 1 ll. 6–8. The ’693 patent discloses a mill-
ing machine with a rear wheel or track that can be swung
between a “retracted” position, in which the wheel or track
is inside the frame of the machine, and a “projecting” posi-
tion, in which the wheel or track is outside the frame.
Id.
col. 2 ll. 43–49.
Caterpillar, the current owner of the ’693 patent, 2 filed
a complaint with the Commission alleging violations by
Wirtgen GmbH, Wirtgen Group Holding GmbH, and Wirt-
gen America, Inc. (collectively, “Wirtgen”) of section 337 of
the Tariff Act of 1930, as amended, by reason of importa-
tion of products that infringed certain claims of the ’693
patent. 3 The Commission instituted an investigation
based on the complaint, and an evidentiary hearing was
held before an administrative law judge.
Wirtgen argued before the administrative law judge
that certain asserted claims of the ’693 patent (including
claim 28) were invalid based on a prior sale of the SF 102
C machine sold by Bitelli before the critical date of the ’693
patent. Under the on-sale bar provision of pre-Leahy-
Smith America Invents Act (“pre-AIA”) version of
35 U.S.C.
§ 102(b), which governs here, a patent claim is invalid if
“the invention was . . . on sale in this country, more than
2 The original assignee of the ’693 patent was Bitelli
S.p.A. (“Bitelli”), an Italian company, who subsequently as-
signed its rights in the patent to Caterpillar. Bitelli was
acquired by Caterpillar in 2000.
3 Caterpillar asserted a different patent (not the ’693
patent) against Joseph Vögele AG in the underlying pro-
ceedings.
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4 CATERPILLAR INC. v. ITC
one year prior to the date of the application for patent in
the United States.”
As evidence that the Bitelli SF 102 C machine was on
sale in the United States before the ’693 patent’s critical
date of April 26, 2001, Wirtgen relied on two Bitelli records.
The first Bitelli record was an invoice for sale dated June
21, 1999, identifying a Bitelli SF 102 C machine sold to a
customer with an address in California. The second Bitelli
record was a spreadsheet showing that a Bitelli SF 102 C
machine was sold with an invoice date of July 27, 2000, to
the same customer as in the June 1999 invoice. The ma-
chine referenced in the July 2000 record was found in the
United States during the Commission’s investigation in
2018.
Caterpillar did not dispute that the records showed
that the Bitelli SF 102 C machines were on sale by the year
2000 (and does not now dispute that the machines met all
of the claim limitations). But Caterpillar contended that
the two Bitelli records did not show that “the sales were in
the United States” and that the invoices showed that the
machines were delivered in Italy. J.A. 117–18. For exam-
ple, Caterpillar noted that the June 1999 invoice listed the
“Port” as “Free Port Our Premises,” suggesting that the
machine was delivered at Bitelli’s premises in Italy.
J.A. 118.
The administrative law judge focused primarily on the
June 1999 invoice. The administrative law judge deter-
mined that, “[e]ven if this machine was delivered in Italy,
the invoice [was] evidence of commercial activity directed
to the United States that would satisfy the ‘on sale’ bar.”
Id. The administrative law judge also found corroboration
in the July 2000 record of a sale of the Bitelli SF 102 C
machine to the same customer because “a machine bearing
that serial number was discovered in the United States.”
J.A. 118–19. The administrative law judge found that
“[t]hese facts, considered collectively, [were] clear and
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CATERPILLAR INC. v. ITC
convincing evidence that the Bitelli SF 102 C was ‘on sale
in this country’ by at least July 2000.” J.A. 119. The ad-
ministrative law judge also determined that Wirtgen
proved that the Bitelli SF 102 C machine met the limita-
tions of claim 28 of the ’693 patent, and that the claim was
therefore invalid under the on-sale bar of
35 U.S.C.
§ 102(b) (pre-AIA). The Commission determined not to re-
view the aspect of the administrative law judge’s decision
that found claim 28 (and other claims) invalid as antici-
pated by the Bitelli SF 102 C machine. Accordingly, the
administrative law judge’s decision became the Commis-
sion’s decision. See
5 U.S.C. § 557(b);
19 C.F.R. § 210.42(h).
Caterpillar timely appealed to this court, and we have
jurisdiction under
28 U.S.C. § 1295(a)(6). After oral argu-
ment, we requested supplemental briefing, including brief-
ing on the significance of the inclusion of “CUSTOMS
TARIFF N. 84305000” in the June 1999 invoice. In support
of their briefing, the parties submitted additional materi-
als from the administrative record, including additional in-
voices from Bitelli to other customers.
DISCUSSION
“We review the Commission’s final determination of a
violation of section 337 under the standards of the Admin-
istrative Procedure Act (‘APA’).” Vizio, Inc. v. Int’l Trade
Comm’n,
605 F.3d 1330, 1336 (Fed. Cir. 2010). “Under the
APA, this court reviews the Commission’s legal determina-
tions de novo, and its factual findings for substantial evi-
dence.”
Id. (citing
5 U.S.C. § 706(2)(A), (E)). “Anticipation
is a question of fact that we review for substantial evi-
dence.” Guangdong Alison Hi-Tech Co. v. Int’l Trade
Comm’n,
936 F.3d 1353, 1364 (Fed. Cir. 2019).
The pre-AIA on-sale bar provides that “[a] person shall
be entitled to a patent unless . . . the invention was . . . on
sale in this country, more than one year prior to the date of
the application for patent in the United States.” 35 U.S.C.
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6 CATERPILLAR INC. v. ITC
§ 102(b) (pre-AIA). 4 “Whether an invention was on sale
within the meaning of § 102(b) is a question of law that we
review de novo based upon underlying facts . . . .” Electro-
motive Div. of Gen. Motors Corp. v. Trans. Sys. Div. of Gen.
Elec. Co.,
417 F.3d 1203, 1209 (Fed. Cir. 2005). “[A]n ac-
cused infringer carries the burden of proving invalidity by
clear and convincing evidence.”
Id. at 1212 n.2.
On appeal, Caterpillar challenges the Commission’s
determination that the Bitelli SF 102 C machine was “on
sale in this country.” Under the pre-AIA on-sale bar, if the
“offer for sale” was “made in this country,” then the inven-
tion would be “on sale” in this country even if the invention
was sold for use outside of the United States. Robbins Co.
v. Lawrence Mfg. Co.,
482 F.2d 426, 434 (9th Cir. 1973) (in-
vention shipped to Australia was on sale in the United
States because the “offer for sale” was made in Seattle); see
also Aguayo v. Universal Instruments Corp.,
356 F. Supp.
2d 699, 743 (S.D. Tex. 2005) (product manufactured in Hol-
land and shipped to Canada was on sale in this country be-
cause “the offer to sell and acceptance of the [product]
occurred and were exchanged within the United States”).
But here, where it appears that the transfer of title oc-
curred in Italy, our cases do not hold that the mere fact that
the sale was made to a United States company is sufficient.
We must analyze whether the invention was sold for use in
the United States. Under such circumstances, as we noted
4 Under the revised on-sale bar provision of the AIA,
“[a] person shall be entitled to a patent unless . . . the
claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available
to the public before the effective filing date of the claimed
invention.”
35 U.S.C. § 102(a) (AIA) (emphasis added).
“[I]n the 2011 America Invents Act, Congress amended
Section 102 to eliminate the ‘in this country’ geographic
limitations.” 1 Chisum on Patents § 3.05 (2020).
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CATERPILLAR INC. v. ITC
in Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc.,
“a commercial offer for sale made by a foreign entity that
is directed to a United States customer at its place of busi-
ness in the United States may serve as an invaliding activ-
ity.”
726 F.3d 1370, 1375 (Fed. Cir. 2013) (citing In re
Caveney,
761 F.2d 671, 676–77 (Fed. Cir. 1985)); see also
id. at 1375–76 (foreign supplier’s confirmation of purchase
order was invalidating activity under pre-AIA on-sale bar
where the buyer “listed on the purchase order its facility in
Tennessee as the shipping address and its office in Virginia
as the billing address”); In re Caveney,
761 F.2d at 673–74,
677 (“offer from England” was “directed to” a buyer “at its
place of business in the United States” where “samples of
the claimed invention” were sent to the United States
buyer, and the invention was ultimately shipped to the
United States).
Here, there is substantial evidence to support the Com-
mission’s finding that the sale documented by the June
1999 invoice constituted “commercial activity directed to
the United States,” J.A. 118, namely that the Bitelli SF 102
C machine was sold to a United States customer for use in
this country.
Several aspects of the June 1999 invoice provide evi-
dence that the sale of the Bitelli SF 102 C machine was for
use in the United States. First, the face of the invoice in-
dicates that the sale was to a buyer with a United States
address.
Second, other indicia in the invoice show that this was
a sale for export to the United States. The June 1999 in-
voice lists a “CUSTOMS TARIFF N. 84305000” in the left-
most column and notes that the “goods” were “of Italian
origin.” J.A. 1493. Although 84305000 appears to refer to
a tariff subheading number for the European Union, the
first six digits correspond to the analogous subheading in
the Harmonized Tariff System of the United States
(“HTSUS”), 8430.50, which is for “[o]ther moving, grading,
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8 CATERPILLAR INC. v. ITC
leveling, [or] scraping . . . machinery, for earth, minerals or
ores” that are “self-propelled.” HTSUS, heading 8430
(1999). While the number 84305000 appears on an invoice
to an Italian buyer of another machine, only the June 1999
invoice labels the number as a customs tariff number, and
the June 1999 invoice is the only invoice that refers to a
“customs tariff” number. There would be no need to note a
customs tariff number for a sale between an Italian seller
such as Bitelli and a buyer located in Italy or another Eu-
ropean Union country, since the establishment of the Eu-
ropean Union resulted in “the elimination, as between
Member States, of customs duties and quantitative re-
strictions on the import and export of goods.” Treaty on
European Union, Title II Art. G(B)(3), 1757 U.N.T.S. 3, 14
(Feb. 7, 1992). The invoice also contains a description of
the Bitelli SF 102 C machine in English and identifies the
currency as U.S. dollars, also some indication of a sale for
export to the United States.
Third, the VAT assessment in the June 1999 invoice to
the United States customer is further evidence that the
item was not for use in Italy or elsewhere in the European
Union. The VAT assessments for Bitelli’s invoices to cus-
tomers in Italy list the “VAT%” as “20,000” or 20 percent.
J.A. 1487, 1489; see also J.A. 1488 (“VAT” in right-most col-
umn of invoice listed as “20”). The VAT percentages for
these invoices appear to refer to a standard VAT rate for
Italy. See Dep’t of the Navy, Country Tax Law Study for
Italy 6 (2010), https://it.usembassy.gov/wp-content/up-
loads/sites/67/2016/04/USSSO-Tax2010.pdf.
In contrast, the VAT assessment in the June 1999 in-
voice is listed as “Non Impon. Art. 8/1˚A,” near the text,
“VAT Exemption Title.” J.A. 1493. The parties’ agreed-
upon translation of “Non Impon. Art. 8/1˚A” is “Not Taxable
Article 8/1 A.” J.A. 1157. “Non imponibili” in Italian indi-
cates a “zero rated” transaction. Country Tax Law Study
for Italy, supra, at 6. “‘Zero rated’ transactions allow the
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supplier to entirely deduct the VAT already paid on pur-
chases.” Id. at 8.
Article 8/1 A refers to a provision of Italian law, Article
8 of the Presidential Decree No. 633 of October 26, 1972,
which includes among “zero rated” transactions exports of
goods from Italy to the territory of a non-European Union
country. Id.; see also id. at 78–79 (translation of Art. 8 of
Presidential Decree No. 633 of October 26, 1972). 5
Fourth, the fact that another Bitelli SF 102 C machine
sold in July 2000 to the same customer was found in the
United States also suggests that the June 1999 sale of the
Bitelli SF 102 C machine was for use in the United States.
Finally, there are no contrary indicia that the machine
in the June 1999 invoice was sold for use in Italy or any-
where else outside the United States. Caterpillar offers no
evidence that the customer in the June 1999 invoice had a
presence other than in the United States.
CONCLUSION
The Commission’s determination that the Bitelli SF
102 C machine was on sale in this country, as documented
by the June 1999 invoice, is supported by substantial evi-
dence. We therefore affirm the Commission’s decision in-
validating claim 28 of the ’693 patent as anticipated by the
Bitelli SF 102 C machine.
5 As another point of comparison, the invoices for
buyers in Belgium and France (other countries in the Eu-
ropean Union in 1999) list the VAT assessment as “Non
Imp. Art. 41.” J.A. 1490, 1492. “Art. 41” appears to refer
to Article 41 of Decree Law no. 331 of August 30, 1993,
which “governs VAT on intra-Community acquisitions of
goods.” Country Tax Law Study for Italy, supra, at 5; see
also Wirtgen’s Suppl. Br. Ex. A.
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10 CATERPILLAR INC. v. ITC
AFFIRMED
