By Eric Schweibenz
On April 22, 2011, the International Trade Commission (the “Commission”) issued a notice determining that there has been 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”).  On December 22, 2010, ALJ E. James Gildea issued the Initial Determination (“ID”) finding 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.

On February 23, 2011, the Commission issued a notice determining 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 (the “AAPA”) does not invalidate the asserted claims of the ‘229 patent.  The Commission determined not to review any issues related to the ‘309 and ‘254 patents and terminated those patents from the investigation.  See our February 24, 2011 post for more details.

According to the April 22 notice, on March 8, 2011, the parties filed written submissions on the issues under review, remedy, the public interest, and bonding.  The parties filed reply submissions on March 15, 2011.

After examining the record of the investigation, the Commission determined that there has been no violation of Section 337.  Specifically, the Commission determined to (1) reverse ALJ Gildea’s finding to the extent that it suggests that the AAPA cannot constitute prior art, and (2) find that the asserted claims of the ‘229 patent are obvious in light of a combination of (i) the AAPA and the knowledge in the art at the time of filing the patent’s priority document, (ii) the AAPA and Nagakari (Japanese unexamined patent application H11-21429), or (iii) the AAPA and the deNeuf product (product samples sold by Murata and provided by Mr. deNeuf).  The Commission also determined to vacate ALJ Gildea’s finding that the AAPA does not anticipate the asserted claims of the ‘229 patent; however, given the Commission’s finding that the asserted claims of the ‘229 patent are invalid for obviousness, the Commission did not reach the issue of anticipation.  The Commission determined to adopt the ALJ’s findings regarding the ‘229 patent in all other respects.  Accordingly, the Commission determined that there has been no violation of Section 337, and terminated the investigation.