[Federal Register Volume 65, Number 141 (Friday, July 21, 2000)]
[Notices]
[Pages 45406-45408]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-18511]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-395]


In the Matter of Certain Eprom, Eeprom, Flash Memory, and Flash 
Microcontroller Semiconductor Devices and Products Containing Same; 
Notice of Commission Determination To Review-in-Part an Initial 
Determination on Inventorship and Two Orders; Schedule for Filing 
Written Submissions; Denial of Motion for Leave To File a Reply

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 May 17, 2000, and two ALJ orders in proceedings to reconsider 
the Commission's determination on inventorship in the above-captioned 
investigation, which was instituted pursuant to section 337 of the 
Tariff Act of 1930, 19 U.S.C. 1337. Specifically, the Commission has 
determined to review: (1) ALJ Order No. 50, (2) ALJ Order No. 69, (3) 
the determination in the ID that the Certificate of Correction of U.S. 
Letters Patent 4,451,903 (the `903 patent) was procured inequitably, 
and (4) the determination in the ID that the inventors named on the 
Certificate of Correction of the `903 patent are incorrect. The 
Commission has also determined to deny complainant Atmel Corp.'s Motion 
for Leave to File a Reply, dated June 22, 2000.

FOR FURTHER INFORMATION CONTACT: Jean Jackson, Esq., Office of the 
General Counsel, U.S. International Trade Commission, telephone 202-
205-3104. General information concerning the Commission may also be 
obtained by accessing its Internet server (http://www.usitc.gov). 
Hearing-impaired persons are advised that information on the matter can 
be obtained by contacting the Commission's TDD terminal on 202-205-
1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this patent-based 
investigation on March 18, 1997, based on a complaint filed by Atmel 
Corp. 62 FR 13706. The complaint named five respondents: Sanyo Electric 
Co., Ltd. of Japan; Winbond Electronics Corp. of Taiwan and Winbond 
Electronics North America Corporation of San Jose, California; and 
Macronix International Co., Ltd. of Taiwan and Macronix America, Inc. 
of San Jose, California. Silicon Storage Technology, Inc. was permitted 
to intervene in the investigation.
    In its complaint, Atmel alleged that the respondents violated 
section 337 by importing into the United States, selling for 
importation, and/or selling in the United States after importation 
certain electronic products and/or components that infringe one or more 
of claim 1 of U.S. Letters Patent 4,511,811, (the `811 patent), claim 1 
of U.S. Letters Patent 4,673,829 (the `829 patent), claims 1-9 of the 
`903 patent, and claim 1 of U.S. Letters Patent 4,974,565 (the `565 
patent). The `565 patent was later withdrawn from the investigation by 
Atmel.
    The ALJ issued his final ID on violation on March 19, 1998, in 
which he found, inter alia, no infringement of any of the three patents 
at issue, and hence no violation of section 337. The Commission 
reviewed the entire ID, except for the finding that claims 2-8 of the 
`903 patent are invalid as indefinite. After review, the Commission 
issued its final determination on July 2, 1998, in which it determined 
that the `903 patent was unenforceable for failure to name one or more 
co-inventors. The Commission also found that the `811 and `829 patents 
were invalid on the basis of collateral estoppel in light of a U.S. 
district court decision. 69 FR 37139 (July 9, 1998). The Federal 
Circuit reversed the district court decision on December 28, 1999. 
Atmel Corp. v.

[[Page 45407]]

Information Storage Device Inc., Appeal No. 99-1082 (Fed. Cir. 1999). 
Therefore, the Commission will revisit its decision concerning the `811 
and `829 patents in connection with the final disposition of this 
investigation.
    On August 21, 1998, Atmel filed a petition for correction of 
inventorship of the `903 patent with the U.S. Patent and Trademark 
Office (PTO) under PTO rule 324, 37 CFR 1.324. Atmel sought to add Anil 
Gupta as a co-inventor. After an ex parte proceeding, the PTO granted 
Atmel's petition on August 28, 1998. A Certificate of Correction issued 
from the PTO on October 6, 1998, which states that ``it is hereby 
certified that the correct inventorship of [the `903] patent is: Larry 
T. Jordan and Anil Gupta.'' On August 28, 1998, Atmel filed a notice of 
appeal with the U.S. Court of Appeals for the Federal Circuit from the 
Commission's July 2, 1998, final determination in this investigation 
(Appeal No. 98-1580). The appeal was remanded to the Commission on 
April 16, 1999, In re Winbond Electronics Corporation and Winbond 
Electronics North America Corporation, Misc. Docket No. 579, to 
consider a motion filed by Atmel for reconsideration of the 
Commission's inventorship determination in light of the Certificate of 
Correction of the `903 patent issued by the PTO.
    On July 20, 1999, the ALJ issued Order No. 50 which ordered Atmel 
to produce documents, for which it had claimed privilege, concerning 
the subject of ``proper inventorship'' of the `903 patent and to 
provide substantive answers to interrogatories requesting the substance 
of oral communications between Atmel employees and Atmel's attorneys on 
the ``proper inventorship'' of the `903 patent. ALJ Order No. 69, which 
issued on January 13, 2000, held that Atmel bore the burden of proof by 
clear and convincing evidence that the inventors shown on the 
Certificate of Correction are the actual inventors.
    The ALJ issued his final ID on the inventorship on May 17, 2000. 
The ID found (1) that Atmel had committed inequitable conduct in the 
procurement of the Certificate of Correction, (2) that the inventors 
listed on the Certificate of Correction were not the correct inventors, 
and (3) that no inequitable conduct was shown to have taken place in 
the prosecution of the original patent application. On May 30, 2000, 
Atmel petitioned for review of ALJ Orders Nos. 50 and 69 and the ALJ's 
refusal in the ID to find that respondents and intervenor were 
judicially estopped from challenging that Anil Gupta was a co-inventor. 
Atmel also petitioned for review of the ALJ's rulings in the ID that 
Atmel had committed inequitable conduct in the PTO correction 
proceedings and that the inventors listed on the Certificate of 
Correction were incorrect. Atmel also alleged that the ALJ exhibited 
such bias against Atmel that it was denied a fair hearing. The 
Commission investigative attorney (IA) petitioned on the same day for 
review of ALJ Order No. 69 and the ALJ's rulings in the ID concerning 
inequitable conduct and inventorship. On June 13, 2000, respondents and 
intervenor filed a joint response in opposition. The IA filed a 
response opposing in part Atmel's petition on the same date. Atmel 
filed a motion for leave to reply to the oppositions on June 22, 2000, 
which the Commission hereby denies.
    Having examined the record in this investigation, including Orders 
Nos. 50 and 69 and the ALJ's final ID, the petitions for review, and 
the responses thereto, the Commission has determined to review: (1) ALJ 
Order No. 50, (2) ALJ Order No. 69, (3) the ALJ's determination that 
the Certificate of Correction of the `903 patent was procured 
inequitably, and (4) the ALJ's determination that the inventors named 
on the Certificate of Correction are incorrect.
    The parties are requested to brief the issues under review. The 
briefs should include a discussion of, but are not restricted to, the 
following questions:

    (1) Which of the ALJ's findings concerning his determination of 
inequitable conduct, if any, are based on documents in the record as 
to which Atmel has never claimed privilege? Does any other evidence 
in the record, as to which Atmel has never claimed privilege, exist 
that would support a finding of inequitable conduct? Which of the 
ALJ's findings concerning inequitable conduct are supported by 
documents in the record as to which Atmel has claimed work product 
privilege? Which of the ALJ's findings concerning inequitable 
conduct are supported by documents in the record as to which Atmel 
has claimed attorney-client privilege only?
    (2) Which of the ALJ's findings concerning his determination 
that the correct inventors are not listed on the Certificate of 
Correction of the `903 patent are supported by documents in the 
record as to which Atmel has claimed privilege (please specify 
whether attorney-client or work product privilege)?
    (3) What evidence of record corroborates a finding that Dr. 
Smarandiou and Mr. Perlogos implemented Silicon Signature in the 
5133 EPROM before Mr. Gupta implemented Silicon Signature in the 
5213 EEPROM? What evidence of record corroborates a finding that Mr. 
Gupta implemented Silicon Signature in the 5213 EPROM before Dr. 
Smarandiou and Mr. Perlogos implemented Silicon Signature in the 
5213 EEPROM?
    (4) What legal authority or policy considerations support the 
finding that the burden of coming forward with evidence and the 
burden of proof by clear and convincing evidence should be applied 
to patent correction proceedings at the U.S. Patent and Trademark 
Office?
    (5) Under what authority is the Commission required to accord 
the presumption of validity to a certificate of correction 
concerning inventorship issued by the U.S. Patent and Trademark 
Office?
    (6) Is the Commission empowered to find that a regulation issued 
by the U.S. Patent and Trademark Office is ultra vires?

    The Commission intends to dispose of all outstanding issue in this 
investigation, including the remaining issues concerning the `811 and 
`829 patents, at the same time. Accordingly, if the Commission finds in 
connection with the final disposition of this investigation that there 
has been a violation of section 337, the Commission may issue (1) an 
order that could result in the exclusion of the subject articles from 
entry into the United States, and/or (2) cease and desist orders that 
could result in respondents 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 aforementioned public interest factors in 
the context of this investigation.
    If the Commission orders some form of remedy, the President has 60 
days to approve or disapprove the Commission's action. During this 
period, the subject articles would be entitled to enter the United 
States under

[[Page 45408]]

a bond, in an amount determined by the Commission and prescribed by the 
Secretary of the Treasury. The Commission is therefore interested in 
receiving submissions concerning the amount of the bond that should be 
imposed.
    Written Submissions: The parties to the investigation are requested 
to file written submissions on the issues under review. The submissions 
should be concise and, where applicable, thoroughly referenced to the 
record in this investigation. Respondents and intervenor are encouraged 
to file a joint submission. Additionally, the parties to the 
investigation, interested government agencies, and any other interested 
persons are encouraged to file written submissions on remedy, the 
public interest, and bonding. Such submissions should address the March 
19, 1998, recommended determination of the ALJ. Persons who have 
already filed such submissions, including the parties, may simply 
update their previously filed submissions.
    Complainant and the Commission investigative attorney are also 
requested to update the proposed remedial orders that they have already 
submitted for the Commission's consideration. The written submissions 
and updated proposed remedial orders must be filed no later than close 
of business on July 31, 2000. Reply submissions must be filed no later 
than the close of business on August 7, 2000. No further submissions on 
these issues will be permitted unless otherwise ordered by the 
Commission.
    Persons filing written submissions must file with the Office of the 
Secretary the original document and 14 true copies thereof on or before 
the deadlines stated above. Any person desiring to submit a document 
(or portion thereof) 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 section 201.6 of the Commission's Rules of Practice and 
Procedure, 19 CFR 201.6. 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.
    This action is taken under the authority of section 337 of the 
Tariff Act of 1930, 19 U.S.C. 1337, and sections 210.42-210.51 of the 
Commission's Rules of Practice and Procedure, 19 CFR 210.42-210.51.
    Copies of the public version of the ID, and all other 
nonconfidential 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 S.W., Washington, D.C. 
20436, telephone 202-205-2000. Public documents are also available for 
downloading from the Commission's website, http://www.usitc.gov.

    Issued: July 17, 2000.
    By order of the Commission.
Donna R. Koehnke,
Secretary.
[FR Doc. 00-18511 Filed 7-20-00; 8:45 am]
BILLING CODE 7020-02-P