09
Jun
By Eric Schweibenz
On June 3, 2011, the Federal Circuit issued its opinion in MEMS Tech. Berhad  v. Int’l Trade Comm’n (2010-1018).  This was an appeal by MEMS Technology Berhad (“MemsTech”) from the International Trade Commission’s (the “Commission”) final determination in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-629) that MemsTech has violated Section 337 in connection with the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain silicon microphone packages.  See our July 21, 2009 post for more details.  Please note that Oblon Spivak represents MemsTech in this matter.

In the opinion, the Federal Circuit affirmed the Commission’s determinations on claim construction, infringement, validity, domestic industry, and the applicability of the Commission’s exclusion order to MemsTech’s “chamber-chip” products.

The asserted patents in the investigation relate to microelectromechanical system (“MEMS”) packages comprising a substrate, a cover, and a microphone (also termed a transducer).  In particular, U.S. Patent No. 7,242,089 (the ‘089 patent) is directed to MEMS packages that allow acoustic energy to contact a transducer while protecting the transducer from light, electromagnetic radiation, and physical damage.  U.S. Patent No. 6,781,231 (the ‘231 patent) relates to MEMS packages that shield the microphone from an interference signal or an environmental condition.

As to claim construction, MemsTech appealed the Commission’s construction of the claim terms “volume” and “electrically coupled” in the ‘089 patent and “microelectromechanical system package” and “electrically coupled” in the ‘231 patent.  The Federal Circuit affirmed the Commission’s constructions of these terms.

With respect to infringement, the Federal Circuit affirmed the Commission’s findings because MemsTech had not disputed that under the Commission’s claim construction, MemsTech infringed the asserted claims of the ‘089 and ‘231 patents.

As to invalidity, MemsTech appealed the Commision’s determination that certain asserted claims of the ‘089 patent are not invalid under 35 U.S.C. § 102 as anticipated by U.S. Patent No. 6,522,762 to Mullenborn or under 35 U.S.C. § 103 as obvious over (1) U.S. Patent No. 4,533,795 to Baumhauer (“Baumhauer”) alone or in view of an article by Kress, or (2) U.S. Patent No. 5,459,368 to Onishi (“Onishi”).  MemsTech also appealed the Commission’s determination that certain asserted claims of the ‘231 patent are not anticipated by Baumhauer or obvious over Onishi.  However, the Federal Circuit affirmed the Commission’s invalidity determinations.

Regarding domestic industry, MemsTech appealed the Commission’s determination that Complainant Knowles Electronics LLC (“Knowles”) satisfied the technical prong of the domestic industry requirement with respect to the ‘089 patent.  However, the Federal Circuit affirmed the Commission’s findings on this issue because MemsTech’s argument was based on its contention that the Commission had erred in its construction of the claim terms “electrically coupled” and “volume.”  Since the Court had already determined to affirm the Commission’s construction of those terms, the Court also affirmed on the domestic industry issue.

Lastly, with respect to the “chamber chip” issue, MemsTech argued that the Commission had violated its duties under the Administrative Procedure Act by granting Knowles’s petition for reconsideration under 19 C.F.R. § 210.47 with respect to the Commission’s original determination that the chamber-chip products “should not be covered by the Commission exclusion order” in the investigation.  However, the Federal Circuit found that the Commission’s decision to grant the petition under Rule 210.47 was not arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law.

Accordingly, the Federal Circuit affirmed the Commission’s final determination of a violation of Section 337.
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