- ITC Issues Public Version Of Opinion In Certain MEMS Devices (337-TA-700)
- May 20, 2011 | Author: Eric W. Schweibenz
- Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
Further to our May 11, 2011 post, on May 13, 2011, the International Trade Commission (the “Commission”) issued the public version of its Opinion affirming-in-part, modifying-in-part, and reversing-in-part ALJ Robert K. Rogers, Jr.’s December 23, 2010 Initial Determination (“ID”) in Certain MEMS Devices and Products Containing Same (Inv. No. 337-TA-700) and finding a violation of Section 337.
ALJ Rogers’ ID determined that Respondents Knowles Electronics LLC (“Knowles”) and Mouser Electronics, Inc. (“Mouser”) violated Section 337 by infringing certain claims of Complainant Analog Devices Inc.’s (“Analog Devices”) U.S. Patent No. 7,364,942 (the ‘942 patent), but that there was no violation with respect to its U.S. Patent No. 7,220,614 (the ‘614 patent). See our February 4, 2011 post for more details. On March 7, 2011, the Commission determined to review the ID. Specifically, the Commission determined to review: (1) the ALJ’s construction of the claim term “oven;” (2) the ALJ’s construction of the claim term “sawing;” (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 of the ‘942 patent are infringed by the accused process; (6) the ALJ’s finding that claims 34-35 and 38-39 of the ‘614 patent and claims 2-6 and 8 of the ‘942 patent, are not anticipated by the ‘767 patent or the ‘374 patent under 35 U.S.C. § 102(a); (7) the ALJ’s finding that claims 34-35 and 38-39 of the ‘614 patent are not obvious in view of the ‘767 patent and Sakata et al. (the “Sakata reference”) under 35 U.S.C. § 103; and (8) the ALJ’s finding that the technical prong of the domestic industry requirement has been satisfied as to both the ‘614 and ‘942 patents. See our March 8, 2011 post for more details. In the Opinion, the Commission reversed the ALJ’s finding that the ‘767 patent did not incorporate by reference the ‘454 patent or the ‘374 patent and affirmed the remaining issues.
According to the Opinion, the technology at issue relates to micromachined sensors and actuators, also referred to as microelectromechanical systems (“MEMS”), that are manufactured using semiconductor technologies to form and separate wafers into discrete devices for microelectronic packaging. The ‘614 and ‘942 patents are directed to a process for forming anti-stiction surfaces on MEMS devices before the wafer is separated into dies or discrete devices for assembly into packages. Analog Devices accused several models of Knowles’ SiSonic MEMS microphones made using Knowles’ “dry” Self-Assembled Monolayer anti-stiction process (“the accused process”) of infringment.
In the Opinion, the Commission reviewed the ALJ’s claim construction with regard to two terms, “oven” and “sawing.” The Commission agreed with ALJ Rogers’ construction of both terms finding the term “oven” meant “a chamber used for heating” and that the term “sawing” meant “cutting.” These terms were included in some but not all of the asserted claims. With respect to infringement, the Commission affirmed that the accused process did not meet either of these limitations.
As to anticipation, the Commission reviewed ALJ Rogers determination that claims 34-35 and 38-39 of the ‘614 patent and claims 2-6 and 8 of the ‘942 patent were not anticipated by the ‘767 or ‘374 patents. The ALJ’s analysis included a determination as to whether the ‘767 patent properly incorporated by reference the ‘374 and ‘454 patents. ALJ Rogers found that although the ‘767 patent incorporated by reference the application which led to the ‘374 patent, it did not incorporate the ‘374 patent. The Commission disagreed, noting that there was one-to-one correspondence between the issued ‘374 patent and its patent application, and that Analog Devices had not shown otherwise. Concerning the ‘454 patent, ALJ Rogers also found that it was not properly incorporated by reference because the ‘767 patent stated that it incorporated by reference “U.S. patent application Ser. No. 5,331,454” instead of “U.S. Patent no. 5,331,454.” The Commission noted that the proper focus, when considering incorporation by reference, is on material and content rather than semantics and typographical errors. In addition, the Commission determined that it would be clear to one skilled in the art that “U.S. patent application Ser. No. 5,331,454” referred to the issued patent. Thus, the Commission reversed the ALJ’s conclusion, determining that the ‘767 patent incorporated by reference the disclosures of the ‘374 and ‘454 patents. Despite this conclusion, the Commission agreed with the ALJ’s ultimate anticipation analysis, determining that the relevant claims were still not anticipated by the ‘767 or ‘374 patents.
With respect to obviousness, the Commission agreed with the ALJ that the combination of the ‘767 patent and the Sakata reference did not teach the “sawing” limitation included in the asserted claims of the ‘614 patent. Thus, the Commission determined that the asserted claims of the ‘614 patent were not obvious in view of the ‘767 patent and the Sakata reference.
Regarding domestic industry, the Commission agreed with ALJ Rogers that Analog Devices satisfied the technical prong of the domestic industry requirement. Respondents argued that Analog Devices could not meet the requirement because at least one claim step of each claim was not performed in the U.S. The Commission agreed with the ALJ that Respondents waived this argument by failing to raise it in their pre-hearing brief.
Accordingly, the Commission found a violation of Section 337 with respect to claims 2-6 and 8 of the ‘942 patent and issued a limited exclusion order directed to Knowles and Mouser. In addition, the Commission indicated that this exclusion order should include a certification provision allowing importation of Respondents’ MEMS devices and products containing same that are made using the non-accused anti-stiction process. The Commission found that such an order would not be contrary to public interest. No cease and desist order was issued, as the Commission found that Analog Devices had not provided evidence that Mouser maintained a “commercially significant” inventory of accused products. Finally, with regard to bond, the Commission determined that Analog Devices failed to establish that any bond was appropriate and imposed no such bond.