[Federal Register Volume 66, Number 147 (Tuesday, July 31, 2001)]
[Notices]
[Pages 39536-39537]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-19013]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-395]


Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller 
Semiconductor Devices, and Products Containing Same; Notice of Decision 
To Deny Complainant Atmel's Petition for Reconsideration of the 
Commission's Final Determination of No Violation of Section 337 of the 
Tariff Act of 1930 by Respondent Macronix

AGENCY: International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to deny complainant Atmel's petition for 
reconsideration of the Commission's final determination of no violation 
of section 337 of the Tariff Act of 1930 by respondent Macronix in the 
above-captioned investigation.

FOR FURTHER INFORMATION CONTACT: Timothy P. Monaghan, Esq., Office of 
the General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone 202-205-3152.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on March 18, 1997, based upon a complaint filed by Atmel Corporation 
(``Atmel'') alleging that Sanyo Electric Co., Ltd. (``Sanyo''), Winbond 
Electronics Corporation of Taiwan and Winbond Electronics North America 
Corporation of California (collectively ``Winbond''), and Macronix 
International Co., Ltd. and Macronix America, Inc. (collectively 
``Macronix'') had violated section 337 in the sale for importation, the 
importation, and the sale within the United States after importation of 
certain erasable programmable read only memory (``EPROM ''), 
electrically erasable programmable read only memory (``EEPROM''), flash 
memory, and flash microcontroller semiconductor devices thereof, by 
reason of infringement of one or more claims of U.S. Letters Patent 
4,511,811 (``the '811 patent''), U.S. Letters Patent 4,673,829 (``the 
'829 patent''), and U.S. Letters Patent 4,451,903 (``the '903 patent'') 
assigned to Atmel. 62 Fed. Reg. 13706 (March 21, 1997). Silicon Storage 
Technology, Inc. (``SST'') intervened in the investigation.
    On October 27, 2000, the Commission determined that there was a 
violation of section 337. The Commission found that the claims in issue 
of the '903 patent are valid, enforceable, and infringed by the imports 
of respondents Sanyo and Winbond (but not respondent Macronix), and 
found a violation of section 337 with regard to the '903 patent as to 
Sanyo and Winbond. As to the '811 and '829 patents, the Commission 
found that the claims in issue of those patents are valid and 
enforceable, but not infringed by the imports of respondents Sanyo, 
Winbond, or Macronix, and found no violation of section 337 with regard 
to the '811 and '829 patents.
    The Commission determined that the appropriate form of relief was a 
limited exclusion order prohibiting the importation of EPROMs, EEPROMs, 
flash memories, and flash microcontroller semiconductor devices, and 
circuit boards containing those semiconductor memory devices, that 
infringe claims 1 or 9 of the '903 patent and that are manufactured 
and/or imported by or on behalf of Sanyo and Winbond. The Commission 
also determined that the public interest factors enumerated in section 
337(d) do not preclude the issuance of the limited exclusion order and 
that the bond during the Presidential review period should be set at 
$0.78 per device.
    Winbond appealed these findings to the U.S. Court of Appeals for 
the Federal Circuit regarding the '903 patent, as well as the 
Commission's claim construction and infringement findings, Winbond 
Electronics Corp. v. U.S. International Trade Commission, Case Nos. 01-
1031-1032-1034 (the Winbond appeal). Atmel appealed to the Federal 
Circuit the Commission's finding that respondent Macronix did not 
infringe the asserted claims of the '903 patent and the Commission's 
findings of no violation with respect to the '811 and '829 patents, 
Atmel Corp. v. U.S. International Trade Commission, Case No. 01-1128 
(the Atmel appeal). Atmel also appealed the temporal scope of the 
Commission's order finding that Atmel had waived its attorney client 
privilege and work product protections.
    On January 30, 2001, the Federal Circuit issued an order on all 
issues raised in the Winbond appeal and on two issues raised in the 
Atmel appeal. The Court also issued an unpublished opinion on the 
issues of claim construction and infringement of the '903 patent.
    In the Atmel appeal, the Court disagreed with some of the 
Commission's claim construction, and vacated the Commission's finding 
that Macronix does not infringe the asserted claims of the '903 patent. 
The Court remanded the case to the Commission to determine whether 
Macronix infringes under the claim construction found by the Court to 
be correct. On March 23, 2001, the Federal Circuit issued its mandate 
formally remanding this matter to the Commission for further fact 
finding and a determination on whether the Macronix devices infringe 
the '903 patent under the Federal Circuit's claim construction.
    On June 1, 2001, the Commission determined that under the Federal 
Circuit's claim construction the accused Macronix devices do not 
infringe the claims at issue of the '903 patent, and terminated the 
remand investigation with a finding of no violation of section 337 by 
Macronix.
    On June 18, 2001, Atmel filed a petition pursuant to rule 210.47 
for reconsideration of the Commission's June 1, 2001, determination of 
no violation by Macronix. On June 25, 2001, Macronix filed a response 
to Atmel's petition for reconsideration. No other responses were filed.
    This action is taken under the authority of section 337 of the 
Tariff Act of 1930, as amended (19 U.S.C. 1337), and rule 210.47 of the 
Commission's Rules of Practice and Procedure, 19 CFR 210.47.
    Copies of the Commission Order 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, SW., Washington, DC 20436, telephone 202-205-
2000. Hearing-impaired persons are advised that information on this 
matter can be obtained by contacting the Commission's TDD terminal on 
202-205-1810. 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

[[Page 39537]]

viewed on the Commission's electronic docket (EDIS-ON-LINE) at http://dockets.usitc.gov/eol/public.


    Issued: July 26, 2001.

    By order of the Commission.
Donna R. Koehnke,
Secretary.
[FR Doc. 01-19013 Filed 7-30-01; 8:45 am]
BILLING CODE 7020-02-P