2011-12183. In the Matter of Certain Mems Devices and Products Containing Same; Notice of Commission Decision to Affirm-In-Part and Reverse-In-Part a Final Initial Determination Finding a Violation of Section 337; Issuance of a Limited Exclusion ...

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined to affirm-in-part and reverse-in-part a final initial determination (“ID”) of the presiding administrative law judge (“ALJ”) finding a violation of section 337 by respondents in the above-captioned investigation, and has issued a limited exclusion order directed against products of respondents Knowles Electronics LLC (“Knowles”) of Itasca, Illinois and Mouser Electronics, Inc. (“Mouser”) of Mansfield, Texas.

FOR FURTHER INFORMATION CONTACT:

Clint Gerdine, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone [phone]. Copies of non-confidential documents filed in connection with this investigation are or will be available for inspection during official business hours (8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone [phone]. General information concerning the Commission may also be obtained by accessing its Internet server at http://www.usitc.gov. The public record for this investigation may be viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired persons are advised that information on this matter can be obtained by contacting the Commission's TDD terminal on [phone].

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation on January 5, 2010, based on a complaint filed on December 1, 2009, by Analog Devices, Inc. (“Analog Devices”) of Norwood, Massachusetts. 75 FR 449-50 (January 5, 2010). The complaint, as supplemented, alleged violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain microelectromechanical systems (“MEMS”) devices and products containing the same by reason of infringement of certain claims of U.S. Patent Nos. 7,220,614 (“the `614 patent”) and 7,364,942 (“the `942 patent”). The complaint further alleged that an industry in the United States exists as required by subsection (a)(2) of section 337. The complaint named as respondents Knowles and Mouser.

On December 23, 2010, the ALJ issued his final ID finding a violation of section 337 by respondents as to the `942 patent only, and issued his recommended determinations on remedy and bonding. On January 18, 2011, respondents, Analog Devices, and the Commission investigative attorney (“IA”) each filed a petition for review of the final ID, and each party filed a response on January 27, 2011.

On March 7, 2011, the Commission determined to review: (1) The ALJ's construction of the claim term “oven” relating to both the `614 and `942 patents; (2) the ALJ's construction of the claim term “sawing” relating to both the `614 and `942 patents; (3) the ALJ's determination that the accused process does not infringe, either literally or under the doctrine of equivalents, claims 12, 15, 31-32, 34-35, and 38-39 of the `614 patent or claim 1 of the `942 patent; (4) the ALJ's finding that U.S. Patent No. 5,597,767 (“the `767 patent”) does not incorporate by reference U.S. Patent Nos. 5,331,454 (“the `454 patent”) and 5,512,374 (“the `374 patent”); (5) the ALJ's finding that claims 2-6 and 8 are infringed by the accused process; (6) the ALJ's findings that claims 34-35 and 38-39 of the `614 patent, and claims 2-6 and 8 of the `942 patent, are not anticipated, under 35 U.S.C. 102(a), by the `767 patent or the `374 patent; (7) the ALJ's findings that claims 34-35 and 38-39 of the `614 patent are not obvious, under 35 U.S.C. 103, in view of the `767 patent and the Sakata et al. (“Sakata”) prior art reference; and (8) the ALJ's finding that the technical prong of the domestic industry requirement is satisfied as to both the `614 and `942 patents. The determinations made in the final ID that were not reviewed became final determinations of the Commission by operation of rule. See 19 U.S.C. 210.42(h).

The Commission requested the parties to respond to certain questions concerning the issues under review and requested written submissions on the issues of remedy, the public interest, and bonding from the parties and interested non-parties. 74 FR 13433-34 (March 11, 2011).

On March 18 and March 25, 2011, respectively, complainant Analog Devices, respondents, and the IA each filed a brief and a reply brief on the issues for which the Commission requested written submissions. Also, on March 21, 2001, respondents filed a motion for leave to file a corrected submission that clarified that the March 18, 2011 submission was filed on behalf of both Knowles and Mouser. On March 29, 2011, respondents filed a motion for leave to file a corrected submission that strikes a portion of their initial brief. On March 31, 2011, respondents filed notice of their withdrawal of their March 29, 2011 motion. The Commission has determined to grant respondents' remaining motion of March 21, 2011.

Having reviewed the record in this investigation, including the final ID and the parties' written submissions, the Commission has determined to affirm-in-part and reverse-in-part the ID's findings under review. Particularly, the Commission has reversed the ALJ's finding and has determined that the `767 patent incorporates by reference the `374 and `454 patents.

The Commission has affirmed all other issues under review including the following: (1) The ALJ's construction of the claim term “oven” relating to both the `614 and `942 patents; (2) the ALJ's construction of the claim term “sawing” relating to both the `614 and `942 patents; (3) the ALJ's determination that the accused process does not infringe, either literally or under the doctrine of equivalents, claims 12, 15, 31-32, 34-35, and 38-39 of the `614 patent or claim 1 of the `942 patent; (4) the ALJ's finding that claims 2-6 and 8 of the `942 patent are infringed by the accused process; (5) the ALJ's findings that claims 34-35 and 38-39 of the `614 patent, and claims 2-6 and 8 of the `942 patent, are not anticipated, under 35 U.S.C. 102(a), by the `767 patent or the `374 patent; (6) the ALJ's findings that claims 34-35 and 38-39 of the `614 patent are not obvious, under 35 U.S.C. 103, in view of the `767 patent and Sakata; and (7) the ALJ's finding that Analog Devices satisfies the technical prong of the domestic industry requirement with respect to the `614 and `942 patents, based on his finding that respondents' argument based on NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1313-1321 (Fed. Cir. 2005), is waived. The Commission has taken no position on the ALJ's finding that the domestic industry is satisfied even if respondents' argument based on NTP is not waived. These actions result in a finding of a violation of section 337 with respect to claims 2-6 and 8 of the `942 patent.

Further, the Commission has made its determination on the issues of remedy, the public interest, and bonding. The Commission has determined that the appropriate form of relief is a limited exclusion order prohibiting the unlicensed entry of MEMS devices and products containing the same that infringe claims 2-6 and 8 of the `942 patent that are manufactured abroad by or on behalf of, or are imported by or on behalf of, Knowles or Mouser, or any of their affiliated companies, parents, subsidiaries, licensees, contractors, or other related business entities, or successors or assigns.

The Commission further determined that the public interest factors enumerated in section 337(d)(1) (19 U.S.C. 1337(d)(1)) do not preclude issuance of the limited exclusion order. Finally, the Commission determined that no bond is required to permit temporary importation during the period of Presidential review (19 U.S.C. 1337(j)). The Commission's order and opinion were delivered to the President and to the United States Trade Representative on the day of their issuance.

The Commission has terminated this investigation. The authority for the Commission's determination is contained in section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and in sections 210.42, 210.45, and 210.50 of the Commission's Rules of Practice and Procedure (19 CFR 210.42, 210.45, 210.50).

By order of the Commission.

Issued: May 10, 2011.

James R. Holbein,

Acting Secretary to the Commission.