On November 12, 2009, Knowles Electronics LLC of Itasca, Illinois (“Knowles”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Analog Devices Inc. of Norwood, Massachusetts (“ADI”) unlawfully imports into the U.S., sells for importation, and sells within the U.S. after importation certain silicon microphone packages and products containing the same which allegedly infringe U.S. Patent Nos. 6,781,231 (the ‘231 patent) and 7,242,089 (the ‘089 patent).

According to the complaint, “[s]ilicon microphones are a unique type of microphone using processes like silicon etching that are normally used to create microchips” and the “technology-at-issue relates to a unique and proprietary package for a silicon microphone that consists of a microphone diaphragm made of silicon produced using the Microelectromechanical Systems (‘MEMS’) process, a substrate, and a cover.”

In the complaint, Knowles alleges that “ADI manufactures and imports into the United States and/or sells for importation into the United States a variety of silicon microphone packages that infringe the [asserted] Knowles [p]atents.”  Knowles further alleges that “ADI or one of its affiliates sells its silicon microphone packages to overseas manufacturers including Apple into downstream products such as Apple’s iPod Nano product line.”

With respect to domestic industry (technical prong), Knowles asserts that it “domestically practices at least one claim of the Knowles ‘231 Patent and the Knowles ‘089 Patent.”  Further, Knowles alleges that it satisfies the domestic industry (economic prong) requirement through “Knowles’s activities within the United States, including Knowles’s manufacture, research and development, repair and service of its MEMS Silicon Microphone Technology and its SiSonic Microphone Package.”  Knowles also alleges that the “existence of the economic prong of a domestic industry with respect to both of the ‘231 and ‘089 patents was adjudicated and affirmed in investigation 337-TA-629.”

Regarding other legal proceedings involving the asserted patents, Knowles alleges in its complaint that the ITC issued an opinion and limited exclusion order in investigation 337-TA-629.  Knowles further discloses that it filed a complaint on October 6, 2009 against ADI in the U.S. District Court for the Northern District of Illinois.  Additionally, Knowles discloses that both ADI and Wolfson Microelectronics Plc have recently requested that the U.S. Patent & Trademark Office re-examine the ‘231 and ‘089 patents.

Regarding potential remedy, Knowles asks that the Commission issue a permanent exclusion order and a permanent cease and desist order directed to ADI.

On December 1, 2009, Analog Devices, Inc. of Norwood, Massachusetts (“Analog”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Knowles Electronics LLC of Itasca, Illinois (“Knowles”) and Mouser Electronics, Inc. of Mansfield, Texas (“Mouser”) (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain surface mount MEMS (Micro-Electro-Mechanical System) microphones, as well as certain products that incorporate those microphones which allegedly infringe certain claims of U.S. Patent Nos. 7,220,614 (the ‘614 patent) and 7,364,942 (the ‘942 patent).

According to the complaint, the “patents-in-suit relate generally to forming durable anti-stiction surfaces on micromachined structures.”  Further, Analog alleges in its complaint that the asserted patents (i) “provide a solution to the problem of stiction, including in MEMS devices,” (ii) “disclose and claim processes and devices that utilize vapor deposition of a material having anti-stiction properties to produce a low stiction surface on a MEMS device,” and (iii) “disclose and claim chemicals that are effective in imparting the anti-stiction property to a surface for a MEMS device.”

In the complaint, Analog alleges that “the Accused Products are manufactured entirely outside of the United States in China and/or Japan and are then imported into the United States, sold for importation, and/or sold after importation, in the United States by Knowles and its U.S. distributors, including Mouser.”  Analog further alleges that a “representative of Analog purchased, in the United States, a Nokia 3600 cell phone containing a Knowles surface mount MEMS microphone, bearing identification number ‘S310 3745 V11’” and such Knowles surface mount MEMS microphone “was manufactured, at least in part, in China.”

With respect to related litigation, Analog asserts in its complaint that it filed suit on November 3, 2009 against Knowles in the U.S. District Court for the District of Delaware alleging infringement of the same patents asserted in the instant action.  In addition, Analog notes that Knowles filed a Section 337 complaint against Analog on November 12, 2009 and the ITC has not yet determined whether it will institute an investigation.  See our November 13 post for more details.  According to the complaint, there is “substantial overlap between Knowles’ Proposed Investigation and Analog’s Complaint” since “[b]oth investigations involve the same products – Analog’s MEMS microphones and Knowles’ surface mount MEMS microphones.”  Analog therefore seeks “consolidation of the investigations pursuant to Commission Rule 201.7(a)” in an effort to “save Commission resources, as well as those of the parties.”

Regarding domestic industry, Analog asserts that a “domestic industry as defined by 19 U.S.C. § 1337(a)(3) exists with respect to Analog’s activities in the United States that exploit the ‘614 Patent and ‘942 Patent and that relate to articles protected by the patented methods by reason of Analog’s significant investment in plant and equipment and significant employment of labor and capital.”

With respect to potential remedy, Analog asks that the Commission issue permanent limited and general exclusion orders and permanent cease and desist orders directed to the Proposed Respondents.

Further to our June 15 post, on July 16, 2009, the International Trade Commission issued the public version of its Opinion in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-629).  In the Opinion, the Commission affirmed ALJ Robert K. Rogers, Jr.’s determination that Respondent MEMS Technology Berhad (“MemsTech”) had violated Section 337.  Specifically, the Commission affirmed with certain modifications ALJ Rogers’ findings that Complainant Knowles Electronics, LLC’s (“Knowles”) U.S. Patent Nos. 6,781,231 (the “‘231 patent”) and 7,242,089 (the “‘089 patent”) are valid and that MemsTech’s silicon microphone packages infringe certain claims of those patents.  The Commission also issued a limited exclusion order against MemsTech.  Please note that Oblon Spivak represents MemsTech in this matter.

With respect to infringement, the Commission affirmed with certain modifications ALJ Rogers’s finding that MemsTech’s silicon mircrophone packages infringe the asserted claims of the ‘231 and ‘089 patents.  With respect to the modifications, the Commission found that in making his infringement determination, ALJ Rogers had improperly relied on exhibits that were not admitted into evidence.  The Commission struck these improper references, but affirmed ALJ Rogers’ infringement determination because, according to the Opinion, there was alternative support for infringement in the record.

The Commission also affirmed with certain modifications ALJ Rogers’ findings on claim construction and validity.  The Commission chose not to rely on all of ALJ Rogers’ reasoning, but affirmed his conclusion that the asserted claims of the ‘231 and ‘089 patents are not invalid.

Finally, with respect to remedy, the Commission (1) issued a limited exclusion order against MemsTech; (2) found that the public interest factors do not preclude issuance of such an order; and (3) found that there should be no bond during the Presidential review period.