Caterpillar loses appeal of ITC decision at CAFC

The outcome: 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 onsale bar. Caterpillar Inc. and Caterpillar Paving Products, Inc. (collectively “Caterpillar”) appeal the Commission’s invalidity determination as to claim 28.1 We affirm. The patent related to machines that treat roadway surfaces: 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 milling 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” position, in which the wheel or track is outside the frame. Id. col. 2 ll. 43–49. The invalidity argument was based on the on-sale bar as it existed BEFORE the AIA: 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-LeahySmith 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 one year prior to the date of the application for patent in the United States.” The issue related to the text "in this country": 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 example, 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 CAFC analyzed the issue in the following way: Here, there is substantial evidence to support the Commission’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 evidence that the sale of the Bitelli SF 102 C machine was for use in the United States. First, the face of the invoice indicates 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 invoice lists a “CUSTOMS TARIFF N. 84305000” in the leftmost 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, 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 European Union country, since the establishment of the European Union resulted in “the elimination, as between Member States, of customs duties and quantitative restrictions 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.