• ALJ Rogers Issues Public Version of Initial Determination in Certain MEMS Devices (337-TA-700)
  • February 10, 2011 | Author: Alexander E. Gasser
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • Further to our December 23, 2010 post, on January 24, 2011, ALJ Robert K. Rogers, Jr. issued the public version of the Initial Determination (“ID”) (dated December 23, 2010) in Certain MEMS Devices and Products Containing the Same (337-TA-700).

    By way of background, the Complainant in this investigation is Analog Devices, Inc (“Analog”). and the Respondents are Knowles Electronics LLC (“Knowles”) and Mouser Electronics, Inc. (“Mouser”). The two patents at issue relate to MEMS devices and products containing the same. Both U.S. Patent No. 7,220,614 (the ‘614 patent) and U.S. Patent No. 7,364,942 (the ‘942 patent) are entitled “Process for Wafer Level Treatment to Reduce Stiction and Passivate Micromachined Surfaces and Compounds Used Therefor” and are directed to a process for forming durable anti-stiction surfaces on micromachined structures while they are still in wafer form (i.e., before they are separated into discrete devices for assembly into packages). Analog accused several models of Knowles’ SiSonic MEMS microphones, made using Knowles’ “dry” SAM anti-stiction process, of infringing the ‘614 and ‘942 patents. An investigation was instituted on January 5, 2010.

    As discussed in more detail below, ALJ Rogers determined that a violation of Section 337 had occurred with regard to the ‘942 patent, but not with regard to the ‘614 patent.

    Claim Construction

    ALJ Rogers construed six disputed terms in the ID. Four of the disputed terms/phrases were common to both the ‘614 and ‘942 patents: “a compound having anti-stiction properties,” “a temperature sufficient to vaporize,” “sawing,” and “oven.” The phrase “substantially at room temperature” found in the ‘614 patent was also at issue, as was the phrase “organo-metallic surface,” found in the ‘942 patent.

    With regard to the first term at issue, “a compound having anti-stiction properties,” Respondents sought to limit the phrase to specific anti-stiction compounds identified in the specification. Analog and the Commission Investigative Staff (“OUII”) argued that such limitation was improper. The OUII sought instead to add a non-limiting list of example compounds to the construction. ALJ Rogers agreed with Analog and the OUII and determined, based on the specification and the doctrine of claim differentiation, that Respondents’ construction was overly narrow.  However, the ALJ found the OUII’s non-limiting list of examples unnecessary. Thus, ALJ Rogers construed the phrase as “a compound that prevents sticking between surfaces.”

    In connection with the second term at issue, “a temperature sufficient to vaporize,” the parties disagreed as to whether this phrase required the inclusion of a specific temperature range. Respondents argued that the claim language was ambiguous and thus should be construed based on the only guidance provided in the patent, a range of 100º-500º C. Both the OUII and Analog argued that limiting the claim to such a range was improper. Specifically, they argued that the patent discloses two categories of anti-stiction compounds, and that such a range is only applicable to one of those categories. ALJ Rogers agreed with Analog and the OUII and determined such a range would improperly limit the claims based on the specification. Thus, the ALJ construed the phrase as “a temperature sufficient to convert a liquid or solid into a vapor.”

    Regarding the third term at issue, “sawing,” Analog asserted a proposed construction of  “cutting or separating.” Respondents argued that “sawing,” is commonly understood to mean cutting with a blade, and thus sought a construction limiting the term to “mechanically cutting with a blade such as a diamond wafer saw.”  The OUII argued that “sawing” means only “separating,” requiring no mechanical blade limitation. ALJ Rogers found no evidence to suggest “sawing” and “separating” should have the same meaning and found no reason that “sawing” should require the use of a mechanical blade. Instead, the ALJ construed the term as “cutting.”

    With regard to the fourth term at issue, “oven,” both Analog and the OUII argued that this term means “a system that includes a heated chamber.” Analog disagreed with Respondents construction, “a chamber for heating,” because the “oven,” it argued, is the whole system rather than individual heated chambers within that system. ALJ Rogers noted the term “oven” was used inexactly throughout the specification, but ultimately agreed with Respondents.  Observing that where there is an equal choice between a broader and a narrower meaning of a claim, the notice function of the claim is best served by adopting the narrower meaning, ALJ Rogers accordingly construed the term as “a chamber used for heating.”

    As to the fifth term at issue, “substantially at room temperature,” a phrase found only in the ‘614 patent, Analog contended no construction was required. Respondents argued that “room temperature” should be construed to require a temperature in the range of 20º-25º C, and that “substantially” should be limited to allow only 1º C variation. The OUII asserted that the phrase should include temperatures meaningfully close to a range that one of ordinary skill in the art would consider room temperature. ALJ Rogers construed the phrase as “a temperature in the range of approximately 20º-25º C,” noting that terms like “substantially” are commonly used to avoid a strict numerical boundary and thus declined to impose one.

    As to the sixth and final term at issue, “organo-metallic surface,” a phrase found only in the ‘942 patent, the parties disagreed as to whether it should include silicon-based surfaces. Analog and the OUII argued that such surfaces should be included; Respondents disagreed. ALJ Rogers found the specification inconclusive regarding whether or not “organo-metallic surfaces” should include silicon-based surfaces. Ultimately however, the ALJ found Analog’s evidence more persuasive than Respondents and adopted Analog’s construction. The ALJ construed the phrase to mean “a surface comprised of compounds containing a metallic element and organic groups (with the metallic element bound to carbon atoms),” noting that this construction would not exclude silicon-based surfaces.

    Validity

    Respondents argued that both the ‘614 and ‘942 patents were invalid both for failure to disclose best mode and for violating the written description requirement. The OUII and Analog argued in opposition. ALJ Rogers agreed with the OUII and Analog, determining that Respondents had failed to offer clear and convincing evidence that either the ‘614 or ‘942 patents were invalid for failure to satisfy the best mode or written description requirements.

    Respondents also argued a lack of enablement and indefiniteness with respect to specific claim terms of the two patents. Both Analog and the OUII asserted that Respondents had abandoned these defenses and ALJ Rogers agreed. The ALJ determined Respondents had abandoned these defenses by failing to offer any argument as to enablement and/or indefiniteness in their pre-hearing briefing.

    Respondents next argued that relevant claims of the ‘614 and ‘942 patents were anticipated by U.S. Patent Nos. 5,597,767 (the ‘767 patent), 5,694,740 (the ‘740 patent), and/or 5,512,374 (the ‘374 patent). Analog and the OUII argued in opposition. As to the ‘767 patent, Respondents’ argument was based on the disclosure of the ‘767 patent and two patents allegedly incorporated by the ‘767 patent. ALJ Rogers first determined that two allegedly incorporated patents were not properly incorporated. In addition, the ALJ determined that even if the two patents were properly incorporated, neither they nor the ‘767 patent disclosed each of the limitations of the ‘614 and ‘942 patents.

     With regard to the ‘740 patent, ALJ Rogers determined that this reference, considered during prosecution of the ‘614 patent, failed to disclose the wafer-level vapor deposition process required by the relevant claims of the ‘614 and ‘942 patents.

    The ALJ also determined that the ‘374 patent failed to disclose all necessary limitations. Specifically, the ALJ determined that the ‘374 patent failed to disclose the use of an oven or furnace in the deposition process, as required by the relevant claims of both the ‘614 and ‘942 patents. In addition, the ‘374 patent failed to disclose a compound having organic content, as required by the ‘942 patent.

    As a final theory of invalidity, Respondents argued that the relevant claims of the ‘614 and ‘942 patents were made obvious by several combinations of prior art. Respondents argued that the ‘614 patent was rendered obvious by (1) the ‘740 patent in view of U.S. Patent No. 6,265,026 (“Wang”), (2) the ‘740 patent in view of an article entitled “Anti-Stiction Silanization Coating to Silicon Micro-Structures by a Vapor Phase Deposition Process” (“Sakata”), (3) the ‘740 patent in view of the ‘767 patent, (4) the ‘767 patent in view of Wang, and/or (5) the ‘767 patent in view of Sakata. Respondents also argued that the ‘942 patent was rendered obvious by the ‘740 patent in view of the ‘767 patent. Analog and the OUII argued in opposition to each of these combinations.

    As to the first combination that Respondents argued should render the ‘614 patent obvious, ALJ Rogers determined that neither the ‘740 patent, nor Wang disclosed wafer-level deposition. Further, the ALJ determined that Respondents failed to offer a sufficient reason to combine the ‘740 patent and Wang.

    As an initial matter concerning the second combination that Respondents asserted should render the ‘614 patent obvious, ALJ Rogers first determined that Sakata was in fact prior art. Analog argued Sakata was not prior art because the reduction to practice of the invention of the ‘614 patent antedated Sakata. ALJ Rogers disagreed, finding that Analog did not demonstrate an entitlement to an earlier reduction to practice date. Having confirmed Sakata’s status as prior art, the ALJ then considered whether ‘740 patent in view of Sakata rendered the ‘614 patent obvious. ALJ Rogers answered in the negative, determining that Respondents had not offered a sufficient reason to combine the ‘740 patent and Sakata. In addition, the ALJ repeated his earlier conclusion that Respondents could not rely on the ‘740 patent to disclose a wafer-level anti-stiction process.

    As to Respondents third asserted combination, the ‘740 and ‘767 patents, the ALJ reiterated his prior respective anticipation conclusions. The ALJ then determined that the combination failed to disclose at least the claim elements of inserting a wafer into an oven or furnace and removing a treated wafer from the oven or furnace. In addition, the ALJ again noted that Respondents had failed to offer any argument regarding a reason to combine the ‘740 and ‘767 patents.

    As to the fourth combination asserted to render the ‘614 patent obvious, ALJ Rogers again determined that Respondents failed to offer a sufficient reason to combine the ‘767 patent and Wang. The ALJ found no evidence that Wang addressed the anti-stiction problems addressed in the ‘767 or ‘614 patents, and thus there was no reason to combine them.

    Relating to the fifth combination Respondents argued should render the ‘614 patent obvious, the ALJ determined that the combination of the ‘767 patent and Sakata failed to disclose the “sawing” limitation as construed. Further, the ALJ determined that a passage in the ‘767 patent would teach away from the use of sawing.

    Finally, regarding the only combination asserted by Respondents to render the ‘942 patent obvious, ALJ Rogers determined that neither the ‘740 patent nor the ‘767 patent discloses the step of “depositing said vapor on a surface of the wafer¿.” In addition, the ALJ repeated his conclusion that Respondents had failed to offer any argument regarding a reason to combine the ‘740 and ‘767 patents.

    Infringement

    Having found both the ‘614 and ‘942 patents valid, ALJ Rogers next assessed whether the Knowles process as employed by Respondents in making the accused products infringed those patents.

    With respect to the ‘614 patent, the ALJ determined that the Knowles process did not practice the “sawing” element of independent claims 12 or 31, and thus did not infringe those claims. Nor did the Knowles process practice independent claims 15, 32, or 34. Likewise, the ALJ concluded the Knowles process did not practice dependent claims 35, 38, or 39. Ultimately, the ALJ determined there had been no infringement of the ‘614 patent by the Knowles process.

    With regard to the ‘942 patent, ALJ Rogers determined the Knowles process did not practice independent claim 1, but did practice independent claim 2 and dependent claims 3-6 and 8. Therefore, the ALJ found that the Knowles process infringed these claims of the ‘942 patent.

    Domestic Industry

    As to domestic industry, ALJ Rogers determined that Analog had significantly invested in plant and equipment and substantially invested in engineering.  Thus, the ALJ determined Analog had satisfied the economic prong for both the ‘614 and ‘942 patents. The ALJ also determined that Analog’s anti-stiction treatment process does practice the claims of the ‘614 and ‘942 patents, also satisfying the technical prong.

    Remedy & Bonding

    Having found infringement and domestic industry, ALJ Rogers recommended a limited exclusion order directed to Respondents’ accused products in the event the Commission finds a violation of Section 337. However, the ALJ recommended that this order include a certification provision so that Customs would not block the importation of Respondents’ SiSonic products which were not manufactured using the accused process.

    In addition to the limited exclusion order, Analog sought a cease and desist order against Mouser. However, because no evidence was presented as to the percentage of Mouser’s inventory made using the accused process, the ALJ could not determine whether Mouser’s inventory of such products was “commercially significant.” Therefore, ALJ Rogers did not recommend a cease and desist order.

    As to bond, should a violation of Section 337 be found by the Commission, the ALJ recommended no bond. The ALJ stated that although Analog had the information necessary to provide a price differential analysis between its and Respondents products, it had failed to provide such an analysis, and thus did not meet its burden to demonstrate the proper bond amount.