By Eric Schweibenz
On October 7, 2010, the International Trade Commission issued a notice determining to review the August 5, 2010 Remand Initial Determination (“RID”) issued by ALJ Carl C. Charneski in Certain Connecting Devices (“Quick-Clamps”) for Use with Modular Compressed Air Conditioning Units, Including Filters, Regulators, and Lubricators (“FRL’s”) That Are Part of Larger Pneumatic Systems and the FRL Units They Connect (Inv. No. 337-TA-587).  Please note that Oblon Spivak represents Respondents SMC Corporation and SMC Corporation of America (collectively, “SMC”) in this matter.

By way of background, the Complainant in this investigation is Norgren Inc. (“Norgren”).  ALJ Charneski issued an initial determination on February 13, 2008 in which he found no violation of Section 337.  Norgren petitioned for review, and the Commission rendered a final decision on April 14, 2008 adopting the ALJ’s initial determination.  Norgren appealed the Commission’s decision to the U.S. Court of Appeals for the Federal Circuit.

On May 26, 2009, the Federal Circuit issued a decision in which it modified the Commission’s claim construction, reversed the Commission’s determination of non-infringement, vacated the Commission’s determination of nonobviousness, and remanded the case.  The Federal Circuit’s remand order contained instructions “to evaluate obviousness in the first instance based upon the correct construction of the claim term ‘generally rectangular ported flange’ -- i.e., a construction that does not require a flange having projections on all four sides.”  See our May 28, 2009 post for more details.  ALJ Charneski conducted a one-day evidentiary hearing on April 21, 2010.  On August 5, 2010, ALJ Charneski issued the RID determining that none of the asserted claims of the patent-in-suit were invalid as obvious.  See our August 13, 2010 and September 13, 2010 posts for more details.

According to the October 7 notice, SMC and the Commission Investigative Staff each filed a petition for review of the RID.

After examining the record of the investigation, including the RID and petitions for review, the Commission determined to review the RID “on the issue of obviousness” and to solicit briefing with respect to the issues on review.  Specifically, the Commission requested written submissions regarding “(a) whether the SMC old-style clamp is generally rectangular and (b) whether adding a hinge to one side of a generally rectangular clamp would have been obvious to one skilled in the art in 1993.”

Additionally, the October 7 notice requests briefing on three questions of particular interest to the Commission.

The parties’ briefs to the Commission are due by October 21, 2010, with reply submissions due by November 1, 2010.