03
Aug
By Eric Schweibenz
On August 1, 2012, the International Trade Commission (the “Commission”) issued a notice determining to partially review and partially vacate the Final Initial Determination (“ID”) issued by ALJ Robert K. Rogers, Jr. on May 10, 2012 finding no violation of Section 337 in Certain Polyimide Films, Products Containing Same, and Related Methods (Inv. No. 337-TA-772). 

By way of background, this investigation is based on an April 1, 2011 complaint filed by Kaneka Corporation of Japan (“Kaneka”) alleging violation of Section 337 in the importation into the U.S. and sale of certain polyimide films, products containing same, and related methods that infringe U.S. Patent Nos. 6,264,866 (“the ‘866 patent”), 6,746,639 (“the ‘639 patent”), 7,018,704 (“the ‘704 patent”), and 7,691,961 (“the ‘961 patent”).  The Respondents in this investigation are SKC Kolon PI, Inc. (“SKPI”) and SKC, Inc. (collectively, “SKC”).  See our April 4, 2011 post for more details.   

On May 10, 2012, ALJ Rogers issued the subject ID finding no violation of Section 337 by SKC with respect to the above-listed patents.   See our June 25, 2012 post for more details regarding the public version of the ID.  On May 22, 2012, Kaneka petitioned for review of the ID, with SKC filing a contingent petition for review the following day.  The Commission Investigative Staff did not participate in the investigation.

After examining the record of the investigation, including the ID and the parties’ petitions for review and responses thereto, the Commission determined to partially review and partially vacate the ID as follows:
[w]ith respect to the ’866 patent, the Commission has determined to review the finding that Kaneka does not satisfy the technical prong of the domestic industry requirement. With respect to the ‘704 patent, the Commission has determined to review and vacate as moot the ALJ’s alternative findings that the accused products do not infringe, that claim 1 is not invalid for anticipation or obviousness, and that Kaneka does not satisfy the technical prong or the economic prong of the domestic industry requirement. The Commission has determined not to review the ALJ’s conclusion that the asserted claims of the ‘704 patent are invalid for indefiniteness. With respect to the ‘961 patent, the Commission has determined to review the ALJ’s finding that certain of the accused products infringe and certain of the accused products do not infringe claim 9.

The parties are requested to brief their positions on two questions listed in the notice.  The notice also requests briefing on remedy, the public interest, and bonding.

Written submissions are due by August 15, 2012, with reply submissions due by August 22, 2012.
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