By Eric Schweibenz
On February 23, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ E. James Gildea on December 22, 2010 finding no violation of Section 337 in Certain Ceramic Capacitors and Products Containing Same (Inv. No. 337-TA-692).

By way of background, the Complainants in this investigation are Murata Manufacturing Co., Ltd. and Murata Electronics North America, Inc. (collectively, “Murata”).  The Respondents are Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics America, Inc. (collectively, “Samsung”).  In the ID, ALJ Gildea determined that Samsung had not violated Section 337 in connection with the importation into the United States, sale for importation, or sale within the United States after importation of certain multi-layer ceramic capacitors by reason of infringement of certain claims of U.S. Patent Nos. 6,243,254 (the ‘254 patent), 6,014,309 (the ‘309 patent), and 6,266,229 (the ‘229 patent).  ALJ Gildea also determined that a domestic industry exists that practices the ‘254 patent and the ‘229 patent, but not the ‘309 patent.  See our December 22, 2010 post for more details.

According to the February 23 notice, Murata and the Commission Investigative Staff each filed petitions for review of the ID on January 4, 2011.  That same day, Samsung filed a contingent petition for review of the ID.  On January 12, 2011, the parties filed responses to the petitions and contingent petition for review.

After examining the record of the investigation, including the ID, the petitions for review, and the responses to the petitions for review, the Commission determined to review the ID in part.  In particular, the Commission determined to review the ID’s findings with respect to the ‘229 patent and specifically the finding that so-called Applicant Admitted Prior Art does not invalidate the asserted claims of the ‘229 patent.  The Commission determined not to review the issues raised by the petitions for review related to the ‘309 and ‘254 patents and terminated those patents from the investigation.  However, with respect to the ‘309 patent, the February 23 notice states that it is unclear whether ALJ Gildea made a specific finding that Nakano discloses a thickness ratio of 0.01 to 10, and that, to the extent that the ALJ made such a finding, the Commission reverses and does not adopt such a finding as its own.

The notice states that the parties are requested to submit briefing on the issues under review and on remedy, the public interest, and bonding.  The notice further states that the Commission is particularly interested in responses to the following questions:  (1) “Can characterizations of the prior art that patent applicants make in the specification constitute the ‘single allegedly anticipatory reference pursuant to Section 102?’  See ID at 139.  Even if those characterizations cannot constitute such a reference, are applicants bound by characterizations of the prior art contained in the specification?  In your response, please consider Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007) and Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988);” (2) “Assume that patent applicants are bound by their characterizations as described above.  Have the ‘229 applicants made concessions showing that the asserted claims of the ‘229 patent are anticipated or obvious?  Please specify how the alleged applicant admissions disclose that a single prior art reference discloses each limitation of the asserted claims and/or that a combination of prior art references render the claims obvious.  Please cite only record evidence and relevant legal authority to support your position;” and (3) “Assume that the specification can constitute a single allegedly anticipatory reference pursuant to Section 102.  Please provide an analysis as to anticipation and obviousness.  Please cite only record evidence and relevant legal authority to support your position.”

Written submissions are due by March 8, 2011, with reply submissions due by March 15, 2011.