[Federal Register Volume 67, Number 198 (Friday, October 11, 2002)]
[Notices]
[Pages 63449-63450]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 02-25997]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-450]


Certain Integrated Circuits, Processes for Making Same, and 
Products Containing Same; Notice of Final Determination and Issuance of 
Limited Exclusion Order

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 found a violation of section 337 of the Tariff Act of 
1930 (19 U.S.C. 1337) as to one claim of one patent and has issued a 
limited exclusion order in the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT: Clara Kuehn, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone 202-205-3012. 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). Copies of the Commission 
order, the Commission opinion in support thereof, and all 
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.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
by notice published in the Federal Register on March 6, 2001. 66 FR 
13567 (2001). The complainants were United Microelectronics 
Corporation, Hsinchu City, Taiwan; UMC Group (USA), Sunnyvale, CA; and 
United Foundry Service, Inc., Hopewell Junction, NY. Id. The Commission 
named two respondents, Silicon Integrated Systems Corp., Hsinchu City, 
Taiwan, and Silicon Integrated Systems Corporation, Sunnyvale, CA 
(collectively, ``SiS''). Id. The complaint, as supplemented, alleged 
violations of section 337 in the importation, the sale for importation, 
and the sale within the United States after importation of certain 
integrated circuits and products containing same by reason of 
infringement of claims 1, 2, and 8 of U.S. Letters Patent 5,559,352 
(``the '352 patent'') and claims 1, 3-16, and 19-21 of U.S. Letters 
Patent 6,117,345 (``the '345 patent''). Id. On November 2, 2001, the 
presiding administrative law judge (``ALJ'') issued an initial 
determination (``ID'') (ALJ Order No. 15) granting complainants'' 
motion for summary determination on the issue of importation and 
denying respondents' motion for summary determination of lack of 
importation. That ID was not reviewed by the Commission. A tutorial 
session was held on November 5, 2001, and an evidentiary hearing was 
held from November 7, 2001, through November 16, 2001, and from 
December 10, 2001, through December 12, 2001. The ALJ issued his final 
ID on May 6, 2002, concluding that there was no violation of section 
337. With respect to the '352 patent, the ALJ found that: Complainants 
have not established that the domestic industry requirement is met; 
none of respondents' accused devices infringe any asserted claim of the 
'352 patent literally or under the doctrine of equivalents; and claims 
1 and 2 of the '352 patent are invalid as anticipated under 35 U.S.C. 
102 and claim 8 of the '352 patent is invalid for obviousness under 35 
U.S.C. 103. With respect to the '345 patent, the ALJ found each of the 
claims listed in the notice of investigation, i.e., claims 1, 3-16, 19-
20, and 21, invalid as anticipated by and made obvious by certain prior 
art. The ALJ stated that, in their post-hearing filings, complainants 
asserted only claims 1, 3-5, 9, 11-13, and 20-21 of the '345 patent 
against respondents. He found that, if valid, each of the asserted 
claims of the '345 patent, i.e., claims 1, 3-5, 9, 11-13, and 20-21, is 
literally infringed by SiS's existing (or old) SiON manufacturing 
process, but that respondents' new N2O process does not 
infringe any asserted claim of the '345 patent. The ALJ further found 
that a

[[Page 63450]]

domestic industry exists with respect to the '345 patent. On May 13, 
2002, the ALJ issued his recommended determination on remedy and 
bonding. On May 20, 2002, complainants and the Commission investigative 
attorney (``IA'') petitioned for review of the subject ID, and 
respondents filed a contingent petition for review of the ALJ's final 
ID. On June 21, 2002, the Commission determined to review the ID in 
part. Specifically, the Commission determined to review and clarify 
that the ALJ found claim 13 of the '345 patent made obvious, but not 
anticipated, by the Tobben patent. The Commission also determined to 
review: (1) the ALJ's findings and conclusions of law regarding the 
'352 patent with respect to infringement of the asserted claims and 
domestic industry under the doctrine of equivalents; (2) the ALJ's 
finding that respondents' old E5 model ESD transistor does not infringe 
any asserted claim of the '352 patent, either literally or 
equivalently; (3) the ALJ's claim construction of the limitations ``an 
ESD protection device'' (claims 1, 2, and 8 of the '352 patent), ``a 
gate'' (claims 1 and 2), ``gates'' (claim 8), and ``source/drain 
regions * * * with each source/drain region comprising'' (claims 1, 2, 
and 8), and the ALJ's invalidity, domestic industry, and infringement 
findings and conclusions of law with respect to those limitations; (4) 
the ALJ's finding that claim 8 of the '352 patent is invalid as made 
obvious by a combination of prior art references; (5) whether the 
economic prong of the domestic industry requirement is met with respect 
to the '352 patent; (6) the ALJ's findings that the ``second 
antireflective coating'' (claim 1 and asserted dependent claims 3-8 of 
the '345 patent) and ``cap layer'' (claims 9-16, 19-20, and 21 of the 
'345 patent) are disclosed in the Tobben patent, and consequently (a) 
the ALJ's findings with respect to etching the second antireflective 
coating or cap layer (claims 4 and 12), (b) the ALJ's ultimate finding 
that the Tobben patent anticipates claims 1, 3-16, 19-20, and 21 of the 
'345 patent, and (c) the ALJ's conclusion that claim 13 is made obvious 
by the Tobben patent and other prior art; (7) the ALJ's conclusion that 
claim 13 of the '345 patent is invalid as obvious in light of the 
Tobben patent; and (8) the ALJ's conclusion that claims 1, 3-16, 19-20, 
and 21 of the '345 patent are invalid as made obvious by the Abernathey 
patent in combination with the Pan, Yagi, and/or Yota publications. The 
Commission determined not to review the remainder of the ID, including 
the ID's conclusions and findings of fact with respect to whether the 
Tobben patent is prior art to the '345 patent, infringement of the 
asserted claims of the '345 patent, domestic industry concerning the 
'345 patent, and failure to disclose the best mode of practicing the 
invention of the '345 patent. The Commission requested briefs on the 
issues under review, and posed briefing questions for the parties to 
answer. The Commission also requested written submissions on the issues 
of remedy, the public interest, and bonding. 67 FR 43338. Initial 
briefs were filed on July 9, 2002, and reply briefs were filed on July 
16, 2002, and July 17, 2002. Having examined the record in this 
investigation, including the briefs and the responses thereto, the 
Commission determined that there is a violation of section 337 as to 
claim 13 of the '345 patent, but no violation of the statute as to the 
remaining claims in issue of the '345 patent (viz., claims 1, 3-5, 9, 
11-12, 20, and 21) and no violation as to the claims in issue of the 
'352 patent (viz., claims 1, 2, and 8). With respect to the '352 
patent, the Commission determined to modify the ALJ's construction of 
certain limitations in the asserted claims of the '352 patent, and to 
affirm the ALJ's findings and conclusions that (a) the asserted claims 
are not infringed, and (b) complainants failed to establish the 
technical prong of the domestic industry requirement under the revised 
claim construction. The Commission also determined to affirm the ALJ's 
finding that claims 1 and 2 of the '352 patent are invalid as 
anticipated, to reverse the ALJ's finding that claim 8 of the '352 
patent is invalid as made obvious, and to take no position as to 
whether complainants established the economic prong of the domestic 
industry requirement with respect to the '352 patent. With respect to 
the '345 patent, the Commission determined to vacate the ALJ's findings 
and conclusions as to invalidity with respect to claims 6-8, 10, 14-16, 
and 19; to reverse the ALJ's finding that claims 1, 3-5, 9, 11-12, 20, 
and 21 are invalid as anticipated; to affirm the ALJ's conclusion that 
claims 1, 3-5, 9, 11-12, 20, and 21 of the '345 patent are invalid as 
obvious; and to clarify that claim 13 is not anticipated and reverse 
the ALJ's conclusion that claim 13 is invalid as obvious. The 
Commission also made determinations on the issues of remedy, the public 
interest, and bonding. The Commission determined that the appropriate 
form of relief is a limited exclusion order prohibiting the unlicensed 
entry of integrated circuits, including chipsets and graphics chips, 
that are made by a process covered by claim 13 of U.S. Letters Patent 
6,117,345 and manufactured by or on behalf of respondents, and 
motherboards containing such integrated circuits. The Commission also 
determined that the public interest factors enumerated in 19 U.S.C. 
1337(d) do not preclude the issuance of the limited exclusion order, 
and that the bond during the Presidential review period should be set 
at 100 percent of the entered value of integrated circuits subject to 
the Commission's order and 39 percent of the entered value of 
motherboards containing such integrated circuits. The authority for the 
Commission's determinations is contained in section 337 of the Tariff 
Act of 1930, as amended (19 U.S.C. 1337), and in sections 210.45-210.51 
of the Commission's Rules of Practice and Procedure (19 CFR 210.45-
210.51).

    By order of the Commission.
    Issued: October 7, 2002.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. 02-25997 Filed 10-10-02; 8:45 am]
BILLING CODE 7020-02-P