By: Alex Li and David Maiorana – On February 14, 2019, the U.S. International Trade Commission (“ITC”) issued an Initial Determination (“ID”) in the matter of Certain Road Construction Machines and Components Thereof, Inv. 337-TA-1088.  In the ID, ALJ Lord ruled that investments and R&D activities related to a product prototype built in Italy satisfied the domestic industry requirement as substantial investment in engineering, research and development under Section 337(a)(3)(C), without the need for a comparison between foreign and domestic investments.  We have previously reported on this investigation in earlier blog posts related to whether the domestic industry requirement necessitated the sale of a product was required prior to filing a complaint (here) and whether all complainants need standing at the ITC (here).

In this investigation, Caterpillar Inc. and its subsidiary (“Caterpillar”) filed a complaint against a number of Wirtgen companies (“Wirtgen”) alleging infringement of certain patents.  Caterpillar claimed a domestic industry existed with respect to its road milling machines PM3XX, which were prototypes built for testing.  The machines, although designed and developed in Minnesota, were manufactured in Italy.  According to Caterpillar, the PM3XX embodied the claims of the patent in question, and thousands of hours were spent in its development in the United States.  Wirtgen, however, argued that there was insufficient evidence to determine whether Caterpillar’s investments were substantial because Caterpillar did not submit a comparative analysis of its domestic and foreign investments.

ALJ Lord disagreed with Wirtgen because the Commission has never required such a comparison.  She noted that a comparative analysis would be useful when a foreign-made product was imported to the United States to perform value-adding post-manufacturing steps to refine, complete, and bring the product to market.  But ALJ Lord reasoned that such comparative analysis was not applicable to a product that resulted from “significant research and development, design and engineering efforts in the U.S.” because the product “would not even exist without the domestic input, which necessarily represents a significant contribution to the finished product.”  ALJ Lord therefore found that Caterpillar’s PM3XX products satisfied the domestic industry requirement .

Takeaway

This ID highlights the complexities of analyzing domestic industry at the ITC.  Complainants and Respondents need to be familiar with the nuances and particularities that arise in particular factual situations.  In this case, product design expenses in the U.S. were found to satisfy Section 337(a)(3)(C) even though the manufacturing took place overseas.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a USPTO examiner along with 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the ITC. Dave has experience in diverse technology areas, including teeth whitening, diapers, fem care products, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.