• ITC Decides To Rescind In Part Limited Exclusion Order In Certain Silicon Microphone Packages (337-TA-629)
  • November 2, 2011 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On October 28, 2011, the International Trade Commission (the “Commission”) issued a notice, order, and opinion determining to rescind in part the limited exclusion order issued in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-629).  Please note that Oblon Spivak represents Respondent MEMS Technology Berhad (“MemsTech”) in this matter.

    According to the Notice, this investigation was instituted on January 14, 2008 based on the complaint of Knowles Electronics, LLC (“Knowles’) (the “‘629 investigation”).  In the ‘629 investigation, Knowles asserted violation of Section 337 based on the importation, sale for importation, and sale after importation of certain silicon microphone packages that infringed claims 1, 2, 9, 10, 15, 17, 20, 28, and 29 of U.S. Patent No. 7,242,089 (the ‘089 patent) and claims 1 and 2 of U.S. Patent No. 6,781,231 (the ‘231 patent).  On June 12, 2009, the Commission issued a limited exclusion order directed to MemsTech.  See our June 15, 2009 post for more details.  On June 3, 2011, the U.S. Court of Appeals for the Federal Circuit affirmed the Commission’s final determination.  See our June 9, 2011 post for more details.

    On December 16, 2009, the Commission instituted Certain Silicon Microphone Packages and Products Containing the Same (Inv. No. 337-TA-695) (the “‘695 investigation”).  See our December 18, 2009 post for more details.  In the ‘695 investigation, Knowles alleged that Analog Devices Inc. violated Section 337 based on infringement of claim 1 of the ‘231 patent and claims 1, 2, 7, 16, 17, 18, and 20 of the ‘089 patent.  On November 22, 2010, the ALJ issued an initial determination finding that all of the asserted claims are invalid under 35 U.S.C. §§ 102 and 103, based on prior art not previously considered in the ‘629 investigation.  See our January 3, 2011 post for more details.  On January 21 2011, the Commission issued a notice determining not to review a majority of the ALJ’s findings on invalidity.  Knowles appealed the Commission’s final determination to the Federal Circuit, but later withdrew its appeal before the appeal was decided.

    On August 9, 2011, MemsTech petitioned the Commission to rescind all aspects of the June 12, 2009 limited exclusion order that are based on claim 1 of the ‘231 patent and claims 1, 2, 17, and 20 of the ‘089 patent because the Commission found those claims invalid in the ‘695 investigation.  Knowles opposed MemsTech’s petition.

    In the notice and accompanying opinion, the Commission “determined that its invalidity determinations in [the ‘695 investigation] constitute changed circumstances and justify partial rescission of the June 12, 2009 exclusion order entered in [the ‘629 investigation].”  The Commission therefore determined to rescind the portions of the June 12, 2009 exclusion order that refer to claim 1 of the ‘231 patent and claims 1, 2, 17, and 20 of the ‘089 patent.  All other provisions of the June 12, 2009 limited exclusion order remain in effect.