A Detailed Look At Murata’s ITC Complaint Against Samsung EMCO

ITC Complaint Claims Infringement On Methods for Lowering MLCC Inductance; Methods for Avoiding MLCC Cracking and De-lamination; and Methods for Avoiding Oxidation During Gas Firing of MLCC…

The law firm of Orrick, Herrington & Sutcliffe LLP of Washington, DC filed a complaint with the United States International Trade Commission (USITC) on behalf of Murata Manufacturing Company Limited of Kyoto, Japan and Murata Electronics North America of Smyrna, Georgia naming Samsung Electro-Mechanics Co., Ltd. Of Suwon City, Republic of Korea (SEMCO) and Samsung Electro-Mechanics America, Inc., of Irvine, California USA as the respondents. The law firm sent a letter of complaint on Murata’s behalf on October 1, 2009 to Marilyn R, Abbott, Secretary, USITC, requesting that the Commission conduct an investigation under section 337 of the Tariff Act of 1930, as amended regarding “Certain Ceramic Capacitors and Products Containing Same”

Specific Claims of Patent Infringement:According to the complaint, Murata alleges that SEMCO continues to unlawfully import into the U.S., sell for importation, and sell within the U.S. after importation certain ceramic capacitors and products containing ceramic capacitors which allegedly infringe upon Murata’s claims of U.S. Patent Nos. 6,266,229 (the ‘229 patent entitled “Multilayered Capacitor”); 6,014,309 (the ‘309 patent entitled “Laminated Ceramic Electronic Parts” covering both MLCC and chip varistors); 6,377,439 (the ‘439 patent entitled “Electronic Multilayer Ceramic Component”); and 6,243,254 (the ‘254 patent entitled “Dielectric Ceramic Composition and Laminated Ceramic Capacitor Using The Same”).
What Murata Is Seeking: Murata requests that, after an investigation by the USITC, the Commission issue an exclusion order pursuant to Section 337 (part d), that will prohibit the entry into the United States of SEMCO’s ceramic capacitors and products containing ceramic capacitors, and a cease and desist order pursuant to section 337 (part f) to preclude SEMCO from offering for sale, marketing, advertising, demonstrating, warehousing, selling and/or using such imported products in the United States. Murata is also expecting the ITC to determine if any damages have been realized as a result of the infringement upon completion of its investigation into the matter (Publisher’s Note: SEMCO does not break out sales by world region for any of its products in its financial data; and therefore it is not known how much in ceramic capacitor sales SEMCO does in the United States- however, United Nations Trade Data shows US imports of MLCC from South Korea at $26.7 million USD for the 2008 calendar year; but still, the claim is careful to point out that SEMCO manufactures MLCC in countries outside of Korea, and therefore its true MLCC revenues in the United States cannot be accurately determined through conventional research methods).
Details of the Alleged Patent Infringement: According to the complaint, three of Murata’s asserted patents relate specifically to multilayered ceramic chip capacitors and the fourth of Murata’s asserted patents relates to the raw material consumed in the manufacture of ceramic capacitors. Specifically, the complaint describes the asserted patents as follows: (i) “the ‘229 patent is generally directed to a multilayer capacitor that is better adapted for high frequency circuit applications because it can have a lower equivalent series inductance (ESL)”; (ii) “the ‘309 patent describes ceramic parts such as a multilayer ceramic capacitor or a multilayer ceramic varistor” and further describes “how to select characteristics of the internal electrodes and of the ceramic layers to avoid manufacturing and reliability problems”; (iii) “the ‘439 patent is directed to a multilayer ceramic component, such as a multilayer ceramic capacitor, which is less susceptible to cracking or de-lamination and has high thermal shock resistance and high reliability”; and (iv) “the ‘254 patent is directed to certain dielectric ceramic compositions and multilayer ceramic capacitors that use that ceramic as a dielectric and nickel as the electrode.” To summarize- Murata’s complaint focuses on methods for lowering the equivalent series inductance in an multilayered ceramic chip capacitor (MLCC); production methods for avoiding MLCC cracking and de-lamination; and the composition and volume of ceramic dielectric materials for use with nickel electrodes in an MLCC.

Corresponding Patents In Other Countries: The complaint also notes that the “229 patent” also has additional patents issued in Japan, Taiwan and Europe; while the “309 patent” has additional patents in the People’s Republic of China and in the Republic of Korea (the 309 patent was rejected in Japan); while the 439 patent has additional patents issued in the Republic of Korea, Taiwan, and in Malaysia (the 439 patent was also rejected in Japan); while the “254 patent” has additional foreign counterparts in Japan, Taiwan, the People’s Republic of China, the Republic of Korea, Germany and the United Kingdom.

The Specific Types of MLCC Noted In The Claim: Murata’s complaint also cites specific MLCC produced by SEMCO as being in violation of all or part of the four patents mentioned; including SEMCOs (EIA Case) 0402 0.1 microfarad, 10 Volt, in X7R dielectric (SEMCO Part Number CL05B104KP5NNNC), which is sold through distribution in the United States for $0.0025 a piece in quantities of 10,000; the (EIA Case) 0402 1.0 microfarad at 6.3 Volt in X6S dielectric (SEMCO Part Number CL05X105KQ5NNNC), which is sold through distribution in the United States for $0.70 a piece; and the (EIA Case) 1206 at 10 microfarad, 25 Volt in X7R dielectric, which sells through distribution in the United States for $0.0442 a piece in quantities of 2000 (SEMCO Part Number CL31B106KAHNNNE).

The Murata complaint also points out four specific SEMCO MLCC parts of the “low ESL type” in the CL01Y and the CL21Y series.

Claims of Infringement on the “229 Patent:” With respect to the claim of infringement upon Murata’s “229 patent” the case is offered up in the complaint that SEMCO parts CL01Y104MR5NJNB, CL01Y105MR5NJNB, CL21B104M05NJNB and CL21Y225MR5NJNB emulate in some form the specific electrode plate lead dimension and arrangement in the MLCC. The patent itself notes how careful control of the electrode plate with respect to length and width ratios limits the magnetic flux induced by current flow and therefore reduces the equivalent series inductance of the capacitor to desirable levels.

Claims of Infringement on the “309 Patent:” With respect to the claim of infringement upon Murata’s “309 patent” the case is offered up in the complaint that SEMCO part CL31B106KAHNNNE emulates in some form that by controlling the ratio of the thickness of the internal metal electrodes to the thickness of the corresponding ceramic dielectric material layer- suppression of layer de-lamination and component cracking can be achieved during the sintering process. Also, the claim is made in the patent that by controlling the ratio of the total volume of the internal electrode material to the total volume of the ceramic dielectric material in the finished component, added strength is given to the capacitor to help protect it against the adverse affects of thermal stress.

Claims of Infringement on the “439 Patent:” With respect to the claim of infringement upon Murata’s “439 patent” the case is offered up in the complaint that SEMCO part CL05X105KQ5NNNC emulate in some form that by controlling the ratio of the width of the side of the MLCC- between the side-gap region and the ends of the inner electrodes- and one of the side faces of the sintered ceramic block- to the width of the inner electrodes- reduces the capacitors susceptibility to cracking and de-lamination and helps to reduce the adverse affects of thermal shock.

Claims of Infringement on the “254 Patent:” With respect to the claim of infringement upon Murata’s “254 patent” the case is offered up in the complaint that multiple SEMCO MLCC infringe upon the asserted claims protected in the patent (the complaint references SEMCO part No. CL05B104KP5NNNC as a single example of multiple parts produced by SEMCO that infringe upon the claims in the “254” patent). This patent notes that by controlling the ratio of barium materials and titanium materials in the concentration of barium titanate ceramic, the affects of oxidation can be reduced during sintering of a capacitor body with nickel internal electrode in a gas stabilized kiln or furnace.

What Happens Next: Within 30 calendar days of the filing of the complaint the ITC Commissioners will vote on whether to begin an investigation into the Murata claim of patent infringement. The subject matter of the investigation and the parties involved are made public through notice of investigation in the United States Federal Register. In addition, all non-confidential documents filed with the ITC are made available to the public via the ITC’s Electronic Document Information System (EDIS), which can be accessed through the ITC’s Internet website: www.usitc.gov.

Publisher’s Note: Why This is An Important Case For The Industry: The decision as to whether or not the ITC will pursue this case, and any subsequent rulings made by the ITC in the matter of this case may have important and wide reaching implications for the ceramic capacitor industry and the passive electronic component industry worldwide. Any ruling made by the ITC is governed by the trade within the borders of the United States. However, a ruling by the ITC can be used as precedent in other courts in other countries, and therefore the listing of corresponding patents in other countries noted in the Murata claim should not be lost on the reader. PCI Magazine will continue to follow this case as it unfolds.