[Federal Register Volume 76, Number 40 (Tuesday, March 1, 2011)]
[Notices]
[Pages 11275-11277]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-4442]


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INTERNATIONAL TRADE COMMISSION

 [Investigation No. 337-TA-692]


In the Matter of Certain Ceramic Capacitors and Products 
Containing Same; Notice of Commission Determination To Review in Part A 
Final Initial Determination Finding No Violation of Section 337; 
Schedule for Filing Written Submissions on the Issues Under Review and 
on Remedy, the Public Interest and Bonding

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to review in part the final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ'') on December 22, 2010, finding no violation of section 337 of 
the Tariff Act of 1930, 19 U.S.C. 1337, in this investigation.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone (202) 205-3042. Copies of non-
confidential

[[Page 11276]]

documents filed in connection with this investigation are or will be 
available for inspection during official business hours (8:45 a.m. to 
5:15 p.m.) in the Office of the Secretary, U.S. International Trade 
Commission, 500 E Street, SW., Washington, DC 20436, telephone (202) 
205-2000. General information concerning the Commission may also be 
obtained by accessing its Internet server (http://www.usitc.gov). The 
public record for this investigation may be viewed on the Commission's 
electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired 
persons are advised that information on this matter can be obtained by 
contacting the Commission's TDD terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on November 4, 2009, based on a complaint filed by Murata Manufacturing 
Co., Ltd. of Kyoto, Japan and Murata Electronics North America, Inc. of 
Smyrna, Georgia (collectively, ``Murata''). 74 FR 57193-94 (Nov. 4, 
2009). The complaint alleged violations of section 337 of the Tariff 
Act of 1930 (19 U.S.C. 1337) in the importation into the United States, 
the sale for importation, and the sale within the United States after 
importation of certain ceramic capacitors and products containing the 
same by reason of infringement of various claims of United States 
Patent Nos. 6,266,229 (``the '229 patent''); 6,014,309 (``the '309 
patent''); 6,243,254 (``the '254 patent''); and 6,377,439 (subsequently 
terminated from the investigation). The complaint named Samsung 
Electro-Mechanics Co., Ltd. of Suwon City, Korea and Samsung Electro-
Mechanics America, Inc. of Irvine, California (collectively, 
``Samsung'') as respondents.
    On December 22, 2010, the ALJ issued his final ID, finding no 
violation of section 337 by Respondents with respect to any of the 
asserted claims of the asserted patents. Specifically, the ALJ found 
that the accused products do not infringe the asserted claims of the 
'254 patent. The ALJ also found that none of the cited references 
anticipated the asserted claims and that none of the cited references 
rendered the asserted claims obvious. The ALJ further found that the 
asserted claims were not rendered unenforceable due to inequitable 
conduct. The ALJ, however, found that asserted claims 11-14, 19, and 20 
of the '254 patent failed to satisfy the requirements of 35 U.S.C. 112 
for lack of written description. Likewise, the ALJ found that the 
accused products do not infringe asserted claim 3 of the '309 patent 
and that none of the cited references anticipated or rendered obvious 
the asserted claims. The ALJ further found that the asserted claim was 
not rendered unenforceable due to inequitable conduct. Similarly, the 
ALJ found that the accused products meet all the limitations of the 
asserted claims of the '229 patent and that the claims are not rendered 
unenforceable due to inequitable conduct. The ALJ further found that 
the cited references do not anticipate the asserted claims but found 
that the prior art rendered the asserted claims obvious. The ALJ 
concluded that an industry exists within the United States that 
practices the '254 and '229 patents but that a domestic industry does 
not exist with respect to the '309 patent as required by 19 U.S.C. 
1337(a)(2) and (3).
    On January 4, 2011, Murata and the Commission investigative 
attorney filed petitions for review of the ID. That same day, Samsung 
filed a contingent petition for review of the ID. On January 12, 2011, 
the parties filed responses to the various petitions and contingent 
petition for review.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petitions for review, and the responses thereto, 
the Commission has determined to review the final ID in part. 
Specifically, the Commission has determined to review the findings 
related to the '229 patent and in particular the finding that AAPA 
(Applicant Admitted Prior Art) does not invalidate the asserted claims 
of the '229 patent. With respect to the '309 patent, it is unclear 
whether the ALJ made a specific finding that Nakano discloses a 
thickness ratio of 0.01 to 10. ID at 167. To the extent that the ALJ 
made such a finding, the Commission reverses and does not adopt such a 
finding as its own. The Commission has determined not to review the 
issues related to the '309 patent and '254 patent raised by the 
petitions for review and terminates the '309 and '254 patents from the 
investigation.
    The parties are requested to brief their positions on the issues 
under review with reference to the applicable law and the evidentiary 
record. In connection with its review, 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.
    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.
    In connection with the final disposition of this investigation, the 
Commission may (1) issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue one or more cease and desist orders that could result in the 
respondent(s) being required to cease and desist from engaging in 
unfair acts in the importation and sale of such articles. Accordingly, 
the Commission is interested in receiving written submissions that 
address the form of remedy, if any, that should be ordered. If a party 
seeks exclusion of an article from entry into the United States for 
purposes other than entry for consumption, the party should so indicate 
and provide information establishing that activities involving other 
types of entry either are adversely affecting it or likely to do so. 
For background, see In the Matter of Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 
(December 1994) (Commission Opinion).
    If the Commission contemplates some form of remedy, it must 
consider the effects of that remedy upon the public interest. The 
factors the Commission will consider include the effect that an 
exclusion order and/or cease and desist orders would have on (1) the 
public health and welfare, (2) competitive conditions in the U.S. 
economy, (3) U.S. production of articles that are like or directly 
competitive with those that are subject to investigation, and (4) U.S. 
consumers. The Commission is therefore interested in receiving written 
submissions that address the

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aforementioned public interest factors in the context of this 
investigation.
    If the Commission orders some form of remedy, the U.S. Trade 
Representative, as delegated by the President, has 60 days to approve 
or disapprove the Commission's action. See Presidential Memorandum of 
July 21, 2005, 70 FR 43251 (July 26, 2005). During this period, the 
subject articles would be entitled to enter the United States under 
bond, in an amount determined by the Commission. The Commission is 
therefore interested in receiving submissions concerning the amount of 
the bond that should be imposed if a remedy is ordered.
    Written Submissions: The parties to the investigation are requested 
to file written submissions on the issues identified in this notice. 
Parties to the investigation, interested government agencies, and any 
other interested parties are encouraged to file written submissions on 
the issues of remedy, the public interest, and bonding. Such 
submissions should address the recommended determination by the ALJ on 
remedy and bonding with respect to the '29 patent. Complainants and the 
IA are also requested to submit proposed remedial orders for the 
Commission's consideration. Complainants are also requested to state 
the date that the patent expires and the HTSUS numbers under which the 
accused products are imported. The written submissions and proposed 
remedial orders must be filed no later than close of business on 
Tuesday, March 8, 2011. Reply submissions must be filed no later than 
the close of business on Tuesday, March 15, 2011. No further 
submissions on these issues will be permitted unless otherwise ordered 
by the Commission.
    Persons filing written submissions must file the original document 
and 12 true copies thereof on or before the deadlines stated above with 
the Office of the Secretary. Any person desiring to submit a document 
to the Commission in confidence must request confidential treatment 
unless the information has already been granted such treatment during 
the proceedings. All such requests should be directed to the Secretary 
of the Commission and must include a full statement of the reasons why 
the Commission should grant such treatment. See 19 CFR 210.6. Documents 
for which confidential treatment by the Commission is sought will be 
treated accordingly. All nonconfidential written submissions will be 
available for public inspection at the Office of the Secretary.
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in sections 210.42-46 and 210.50 of the Commission's Rules of Practice 
and Procedure (19 CFR 210.42-46 and 210.50).

    By order of the Commission.

    Issued: February 23, 2011.
William R. Bishop,
Hearings and Meetings Coordinator.
[FR Doc. 2011-4442 Filed 2-28-11; 8:45 am]
BILLING CODE 7020-02-P