By Eric Schweibenz
On March 7, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Robert K. Rogers, Jr. on December 23, 2010 finding a violation of Section 337 in Certain MEMS Devices and Products Containing Same (Inv. No. 337-TA-700).

By way of background, the Complainant in this investigation is Analog Devices, Inc. (“Analog”).  The Respondents are Knowles Electronics LLC and Mouser Electronics, Inc. (collectively, the “Respondents”).  In the ID, ALJ Rogers determined that the Respondents had violated Section 337 with respect to U.S. Patent No. 7,364,942 (the ‘942 patent) but had not violated Section 337 with respect to U.S. Patent No. 7,220,614 (the ‘614 patent).  See our February 4, 2011 post for more details.

According to the March 7 notice, Analog, the Respondents, and the Commission Investigative Staff (“OUII”) each filed petitions for review of the ID on January 18, 2011.  On January 26, 2011, each party filed responses to the other parties’ petitions.  On February 4, 2011, Analog and the Respondents each filed submissions on the public interest.

After examining the record of the investigation, including the ID and the parties’ filings, the Commission determined to review the ID in part.  In particular, the Commission determined to review:  (1) the ALJ’s construction of the claim term “oven” relating to both the ‘614 and ‘942 patents; (2) the ALJ’s construction of the claim term “sawing” relating to both the ‘614 and ‘942 patents; (3) the ALJ’s determination that the accused process does not infringe, either literally or under the doctrine of equivalents, claims 12, 15, 31-32, 34-35, and 38-39 of the ‘614 patent or claim 1 of the ‘942 patent; (4) the ALJ’s finding that U.S. Patent No. 5,597,767 (the ‘767 patent) does not incorporate by reference U.S. Patent Nos. 5,331,454 and 5,512,374 (the ‘374 patent); (5) the ALJ’s finding that claims 2-6 and 8 of the ‘942 patent are infringed by the accused process; (6) the ALJ’s findings that claims 34-35 and 38-39 of the ‘614 patent, and claims 2-6 and 8 of the ‘942 patent, are not anticipated by the ‘767 patent or the ‘374 patent under 35 U.S.C. § 102(a); (7) the ALJ’s finding that claims 34-35 and 38-39 of the ‘614 patent are not obvious in view of the ‘767 patent and the Sakata et al. prior art reference under 35 U.S.C. § 103; and (8) the ALJ’s finding that the technical prong of the domestic industry requirement has been satisfied as to both the ‘614 and ‘942 patents.  The Commission determined not to review the remainder of the ID.

The notice states that the parties are requested to submit briefing on four particular issues and on remedy, the public interest, and bonding.  The four issues on which the Commission has requested briefing are:
1.  In arguing that the term “oven” should be construed as “a system that includes a heated chamber,” is it the contention of [Analog] and [OUII] that the system includes elements such as a reservoir, heaters on the reservoir, a delivery line that connects the reservoir and the deposition chamber, a vacuum line, a nitrogen line, and a device (such as a computer) for programming the temperature, gas pressure, etc. of the oven?  See [] Analog’s Contingent Petition at 25 and [OUII’s] Contingent Petition at 6.

2.  If the term “oven” as it appears in claim 1 of the ‘942 [patent] was construed broadly to encompass the entire system, would the claim cover a method in which the wafer is inserted into, and the anti-stiction compound is heated within, any portion of the system, including the elements listed in the question above, such as a heater, delivery line, or a device for programming?  In your response, please address whether the Commission should construe the disputed term in light of the context supplied by the claim, which indicates, for example, that the anti-stiction compound is heated within said oven.

3.  If the term “oven” is construed broadly, then is the claim invalid based on a failure to satisfy the written description and enablement requirements?  For example, does the specification disclose that the anti-stiction compound can be heated within a vacuum line or a device for programming?

4.  The ALJ determined that the ‘374 patent did not disclose the limitation “exposing said wafer, substantially at room temperature, to the vapor of a compound having anti-stiction properties” of claim 34 of the ‘614 patent, finding that a table found at column 5 of the ‘374 [patent] does not disclose a “process whereby the anti-stiction compound is deposited on a wafer ‘substantially at room temperature.’”  ID at 108-09.  Can the required disclosure be found in the ‘374 [patent] at cols. 4:59-5:62?

Written submissions are due by March 18, 2011, with reply submissions due by March 25, 2011.