[Federal Register Volume 74, Number 101 (Thursday, May 28, 2009)]
[Notices]
[Pages 25579-25581]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-12371]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-605]


In the Matter of Certain Semiconductor Chips With Minimized Chip 
Package Size and Products Containing Same; Notice of Commission Final 
Determination of Violation of Section 337; Termination of 
Investigation; Issuance of Limited Exclusion Order and Cease and Desist 
Orders

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 that there is a violation of 19 U.S.C. 1337 
by Spansion, Inc. and Spansion, LLC, both of Sunnyvale, California 
(collectively ``Spansion''); QUALCOMM, Inc. of San Diego, California 
(``Qualcomm''); ATI Technologies of Thornhill, Ontario, Canada 
(``ATI''); Motorola, Inc. of Schaumburg, Illinois (``Motorola''); 
STMicroelectronics N.V. of Geneva, Switzerland (``ST-NV''); and 
Freescale Semiconductor, Inc. of Austin, Texas (``Freescale'') 
(collectively, ``Respondents'') in the above-captioned investigation. 
The investigation is terminated.

FOR FURTHER INFORMATION CONTACT: Megan M. Valentine, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone (202)

[[Page 25580]]

708-2301. Copies of non-confidential 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 at 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 May 21, 2007, based on a complaint filed by Tessera against 
Spansion, Qualcomm, ATI, Motorola, ST-NV, and Freescale. 72 FR 28522 
(May 21, 2007). The complaint alleges violations of Section 337 of the 
Tariff Act of 1930, as amended, 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 semiconductor chips with 
minimized chip package size or products containing same by reason of 
infringement of one or more claims of U.S. Patent Nos. 5,852,326, and 
6,433,419.
    On December 1, 2008, the presiding administrative law judge 
(``ALJ'') issued his final ID finding no violation of Section 337 by 
Respondents. The ID included the ALJ's recommended determination 
(``RD'') on remedy and bonding. In his ID, the ALJ found that 
Respondents' accused products do not infringe the asserted claims the 
`326 patent or the asserted claims of the `419 patent. The ALJ 
additionally found that the asserted claims of the `326 and `419 
patents are not invalid for failing to satisfy the enablement 
requirement or the written description requirement of 35 U.S.C. 112 ] 
1. The ALJ further found that the asserted claims of the `326 and `419 
patents are not invalid as indefinite of 35 U.S.C. 112 ] 2. The ALJ 
also found that the asserted claims of the `326 and `419 patents are 
not invalid under 35 U.S.C. Sec.  102 for anticipation or under 35 
U.S.C. 103 for obviousness. Finally, the ALJ found that an industry in 
the United States exists with respect to the `326 and `419 patents as 
required by 19 U.S.C. 1337(a)(2) and (3). In his RD, the ALJ 
recommended that, should the Commission determine that a violation 
exists, a limited exclusion order (``LEO'') would be properly directed 
to Respondents' accused chip packages and to the downstream products of 
Motorola, a named respondent.
    On December 15, 2008, Tessera and the Commission investigative 
attorney (``IA'') filed separate petitions seeking review of the ALJ's 
determination concerning non-infringement of the asserted claims of the 
`326 and `419 patents. Also on December 15, 2008, Respondents filed 
various contingent petitions seeking review of certain aspects of the 
ALJ's findings as concern both the `326 and `419 patents in the event 
that the Commission determined to review the ID's findings concerning 
non-infringement. On December 23, 2008, Respondents filed an opposition 
to Tessera's and the IA's petitions for review, and Tessera and the IA 
filed separate responses to Respondents' various contingent petitions 
for review.
    On January 30, 2009, the Commission determined to review the final 
ID in part and requested briefing on the issues it determined to 
review, remedy, the public interest, and bonding. 74 FR 6175-6 (Feb. 5, 
2009). The Commission determined to review: (1) The ALJ's finding that 
Respondents' accused devices do not infringe the asserted claims the 
`326 and `419 patents; (2) the ALJ's finding that Tessera has waived 
any argument that the accused products indirectly infringe the `419 
patent; (3) the ALJ's finding that Motorola's invention of the 1989 
68HC11 OMPAC chip (``OMPAC'') does not anticipate the asserted patents 
under 35 U.S.C. 102(b); and (4) the ALJ's finding that the Motorola's 
OMPAC invention does not anticipate the asserted patents under 35 
U.S.C. 102(g). Id. The Commission determined not to review the 
remaining issues decided in the ID. On February 6, 2009, Respondents 
filed a motion to extend the briefing schedule. On February 10, 2009, 
the Commission issued a Notice extending the deadline for receiving 
initial submissions and reply submissions in light of the fact that the 
ALJ did not issue the public version of the final ID until February 9, 
2009. The Commission also extended the target date to April 14, 2009. 
The Commission issued a corrected version of the Notice on February 18, 
2009, clarifying the deadline for reply submissions of issues relating 
to violation of Section 337.
    On February 23, 2009, the parties filed initial written submissions 
regarding the issues on review, remedy, the public interest, and 
bonding. On March 5, 2009, the parties filed response submissions. 
Several respondents (``the 649 Respondents) in co-pending investigation 
Certain Semiconductor Chips with Minimized Chip Package Size and 
Products Containing Same, Inv. No. 337-TA-649 (``the 649 
Investigation''), also filed reply briefs on remedy, the public 
interest, and bonding. In its initial submission on remedy, Tessera 
requested that the Commission issue a ``tailored'' general exclusion 
order (``GEO'') should the Commission determine that there is a 
violation of Section 337. Tessera also requested that, should the 
Commission determine that the current record is not adequate to support 
issuance of a GEO, the Commission should issue the LEO recommended by 
the ALJ immediately, and then conduct further proceedings regarding the 
availability of a tailored GEO. The IA concurred. Respondents in this 
investigation and the 649 Respondents opposed Tessera's request for a 
``tailored'' GEO. On March 9, 2009, Siliconware Precision Industries 
Co., Ltd. and Siliconware U.S.A., Inc. (collectively ``SPIL 
Respondents''), who are respondents in the 649 Investigation, filed a 
motion to extend the date for filing reply submissions to the 
Commission's Notice of Review of the final ID and to compel the 
production of Tessera's initial confidential briefing in response to 
the Commission's Notice.
    In support its February 23, 2009, brief on Remedy, the Public 
Interest and Bonding, Tessera submitted an affidavit from Dr. Stephen 
Prowse and a statement from Mr. Bernard Cassidy. On March 5, 2009, 
Respondents filed a motion to strike Dr. Prowse's affidavit and Mr. 
Cassidy's statement. On March 16, 2009, the IA filed a response in 
support of Respondents' Motion to Strike.
    On March 11, 2009, Spansion filed a Notice of Commencement of 
Bankruptcy Proceedings and of Automatic Stay, requesting a stay of the 
investigation because it and certain of its subsidiaries had filed for 
relief under Chapter 11 of the United States Bankruptcy Code, 11 U.S.C. 
101 et seq. Tessera filed an opposition to Spansion's request on March 
18, 2009, and the IA filed an opposition on March 23, 2009.
    On March 26, 2009, the Commission issued a Notice requesting 
additional briefing on remedy and extending the target date. 74 FR 
14820-1 (April 1, 2009). In the Notice, the Commission asked the 
parties and any interested non-parties to address whether Tessera is 
entitled to a GEO under 19 U.S.C. 1337(d)(2), whether the Commission 
has the authority to issue a ``tailored'' GEO, which would ostensibly 
reach only specified downstream products, and whether the Commission 
has the authority to issue an LEO immediately and then issue a GEO at a 
later date

[[Page 25581]]

when the Commission concludes the investigation. On April 10, 2009, 
Tessera, the IA, Respondents, and several interested non-parties filed 
initial written submissions in response to the Commission's request for 
additional briefing on remedy. Respondent Spansion did not submit any 
briefing in response to the Commission's request. On April 20, 2009, 
Tessera, the IA, Respondents, and the SPIL Respondents filed reply 
submissions in response to the Commission's request for additional 
briefing on remedy. On April 20, 2009, the Commission issued a Notice 
in response to a motion from Broadcom extending the due date for reply 
submissions from interested non-parties to April 29, 2009, since the 
public versions of the parties' initial submissions were not due to be 
filed until April 22, 2009. Notice of Commission Determination to 
Extend the Deadline for Receiving Reply Submission from Interested 
Parties in Response to the Commission's Request for Additional Briefing 
on Remedy (April 20, 2009). On April 29, 2009, the interested non-
parties submitted their reply briefs.
    On April 24, 2009, respondent Qualcomm filed a motion for leave to 
file a petition for reconsideration pursuant to 19 CFR 210.47 of the 
Commission's determination not to review the ID's finding that the 
asserted claims of the patents-in-suit are not indefinite. Qualcomm 
argued that the United States Patent and Trademark Office rejected as 
``indefinite'' under 35 U.S.C. 112, ] 2, new claims submitted by 
Tessera in connection with the reexamination of U.S. Patent No. 
6,133,627, one of the parent patents of the `419 patent. Tessera filed 
an opposition to Qualcomm's motion on April 30, 2009. The IA filed an 
opposition on May 4, 2009. Qualcomm filed a reply to Tessera's and the 
IA's oppositions on May 5, 2009.
    Having examined the record of this investigation, including the 
ALJ's final ID, the Commission has determined to reverse the ID's 
determination of no violation of the `326 patent and `419 patent. 
Specifically, the Commission reverses the ID's finding that 
Respondents' accused devices do not infringe asserted claims 1, 2, 6, 
12, 16-19, 21, 24-26, and 29 of the `326 patent and asserted claims 1-
11, 14, 15, 19, and 22-24 of the `419 patent. The Commission further 
reverses the ID's conclusion regarding waiver with respect to any 
claims that the accused chip packages indirectly infringe the asserted 
claims of the `419 patent. Moreover, the Commission finds that 
Respondents have contributorily infringed the asserted claims of the 
`419 patent. The Commission also modifies the ID's analysis concerning 
its finding that the `326 and `419 patents are not invalid under 35 
U.S.C. 102(b) to clarify that the statute requires comparing the on-
sale date of alleged prior art against the priority date of the 
asserted patents, not against the conception date of the asserted 
patents.
    The Commission has determined that the appropriate form of relief 
is (1) a limited exclusion order under 19 U.S.C. 1337(d)(1) prohibiting 
the unlicensed entry of semiconductor chips with minimized chip package 
size and products incorporating these chips that infringe one or more 
of claims 1, 2, 6, 12, 16-19, 21, 24-26, and 29 of the `326 patent and 
claims 1-11, 14, 15, 19, and 22-24 of the '419 patent, and are 
manufactured abroad by or on behalf of, or imported by or on behalf of, 
Spansion, Qualcomm, ATI, Motorola, ST-NV, and Freescale; and (2) cease 
and desist orders directed to Motorola, Qualcomm, Freescale, and 
Spansion.
    The Commission has further determined that the public interest 
factors enumerated in Section 337(d) and (f) (19 U.S.C. 1337(d), (f)) 
do not preclude issuance of the limited exclusion order and the cease 
and desist orders. The Commission has determined that the bond for 
temporary importation during the period of Presidential review (19 
U.S.C. 1337(j)) shall be in the amount of 3.5% of the value of the 
imported articles that are subject to the order. The Commission's order 
was delivered to the President and the United States Trade 
Representative on the day of its issuance.
    Additionally, the Commission denies the motion by the SPIL 
Respondents to extend the date for reply submissions to the 
Commission's Notice of Review of the final ID and to compel the 
production of Tessera's initial confidential briefing in response to 
the Commission's Notice of Review. The Commission further denies 
Spansion's motion for a stay of the investigation in light of the 
commencement of bankruptcy proceedings involving it. The Commission 
also denies respondent Qualcomm's motion for leave to file a petition 
for reconsideration of the Commission's determination not to review the 
ID's finding that the asserted claims of the patents-in-suit are not 
indefinite. Finally, the Commission denies Respondents' motion to 
strike the Prowse Affidavit and the Cassidy Statement.
    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 210.42-50 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.42-50).

    Issued: May 20, 2009.

    By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. E9-12371 Filed 5-27-09; 8:45 am]
BILLING CODE 7020-02-P