[Federal Register Volume 75, Number 2 (Tuesday, January 5, 2010)]
[Notices]
[Pages 447-448]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-31253]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-630]


In the Matter of Certain Semiconductor Chips With Minimized Chip 
Package Size and Products Containing Same (III); Notice of the 
Commission's Final Determination of No Violation of Section 337; 
Termination of the Investigation

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 has been no violation of section 
337 of the Tariff Act of 1930, 19 U.S.C. 1337, in this investigation, 
and has terminated the investigation.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone (202) 205-3042. 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: This investigation was instituted on January 
14, 2008, based on a complaint filed by Tessera, Inc. of San Jose, 
California (``Tessera'') on December 21, 2007, and supplemented on 
December 28, 2007. 73 FR 2276 (Jan. 14, 2008). The complaint alleged 
violations of section 337 of the Tariff Act of 1930 (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 the same by reason of infringement of various claims of 
United States Patent Nos. 5,663,106 (``the '106 patent''); 5,679,977 
(``the '977 patent''); 6,133,627 (``the '627 patent''); and 6,458,681 
(``the '681 patent''). The complaint named eighteen respondents. 
Several respondents were terminated from the investigation based on 
settlement agreements and consent orders. Two respondents defaulted. 
The following respondents remain in the investigation: Acer Inc. of 
Taipei, Taiwan; Acer America Corp. of San Jose, CA; Centon Electronics, 
Inc. of Aliso Viejo, CA; Elpida Memory, Inc. of Tokyo, Japan and Elpida 
Memory (USA), Inc. of Sunnyvale, CA (collectively, ``Elpida''); 
Kingston Technology Co., Inc. of Fountain Valley, CA; Nanya Technology 
Corporation of Taoyuan, Taiwan; Nanya Technology Corp. USA of San Jose, 
CA; Powerchip Semiconductor Corporation of Hsinchu, Taiwan; ProMOS 
Technologies, Inc. of Hsinchu, Taiwan; Ramaxel Technology Ltd. of Hong 
Kong, China; and SMART Modular Technologies, Inc. of Fremont, CA. The 
'681 patent was terminated from the investigation prior to the hearing.
    On August 28, 2009, the Administrative Law Judge (``ALJ'') issued 
his final Initial Determination (``ID''), finding no violation of 
section 337 by Respondents with respect to any of the asserted claims 
of the asserted patents. Specifically, the ALJ found that the accused 
products do not infringe the asserted claims of the '106 patent. The 
ALJ also found that none of the cited references anticipates the 
asserted claims and that none of the cited references renders the 
asserted claims obvious. The ALJ further found that the asserted claims 
of the '106 patent satisfy the requirement of 35 U.S.C. 112, first, 
second and fourth paragraphs. Likewise, the ALJ found that the accused 
products do not infringe the asserted claims of the '977 and '627 
patents and that none of the cited references anticipates the asserted 
claims of the patents. The ALJ further found that the asserted claims 
of the '977 and '627 patents satisfy the definiteness requirement of 35 
U.S.C. 112, second paragraph, and that Respondents waived their 
argument with respect to obviousness. The ALJ also found that all chips 
Respondents purchased from Tessera licensees were authorized to be sold 
by Tessera and, thus, Tessera's rights in those chips became subject to 
exhaustion, but that Respondents, except Elpida, did not purchase all 
their chips from Tessera licensees.
    On September 17, 2009, Tessera and the Commission investigative 
attorney filed petitions for review of the ID. That same day, 
Respondents filed contingent petitions for review of the ID. On October 
1, 2009, the parties filed responses to the various petitions and 
contingent petitions for review.

[[Page 448]]

    On October 30, 2009, the Commission determined to review the final 
ID in part and requested briefing on several issues it determined to 
review, and on remedy, the public interest and bonding. 74 FR 57192 
(Nov. 4, 2009). The Commission determined to review (1) the finding 
that the claim term ``top layer'' recited in claim 1 of the '106 patent 
means ``an outer layer of the chip assembly upon which the terminals 
are fixed,'' the requirement that ``the `top layer' is a single 
layer,'' and the effect of the findings on the infringement analysis, 
invalidity analysis and domestic industry analysis; (2) the finding 
that the claim term ``thereon'' recited in claim 1 of the '106 patent 
requires ``disposing the terminals on the top surface of the top 
layer,'' and its effect on the infringement analysis, invalidity 
analysis and domestic industry analysis; (3) the finding that the 
Direct Loading testing methodology employed by Tessera's expert to 
prove infringement is unreliable; and (4) the finding that the 1989 
Motorola OMPAC 68-pin chip package fails to anticipate claims 17 and 18 
of the '977 patent. Id.
    On November 13, 2009, the parties filed written submissions on the 
issues under review, remedy, the public interest, and bonding. On 
November 20, 2009, the parties filed response submissions on the issues 
on review, remedy, the public interest and bonding.
    Having examined the record of this investigation, including the 
ALJ's final ID, the Commission has determined that there is no 
violation of section 337. Specifically, the Commission has determined 
to (1) modify the ALJ's construction of the claim terms ``top layer'' 
and ``thereon'' recited in claim 1 of the '106 patent; (2) reverse the 
ALJ's finding that the accused wBGA products do not meet all of the 
limitations of the asserted claims of the '106 patent but affirm his 
finding that there is no infringement due to patent exhaustion; (3) 
affirm the ALJ's finding that the accused wBGA products do not infringe 
the asserted claims of the '106 patent; (4) affirm the ALJ's validity 
and domestic industry analyses pertaining to the asserted claims of the 
'106 patent; (5) affirm the ALJ's finding that the Direct Loading 
testing methodology employed by Tessera's expert fails to prove 
infringement; and (6) affirm the ALJ's finding that the 1989 Motorola 
OMPAC 68-pin chip package fails to anticipate claims 17 and 18 of the 
'977 patent under the on-sale bar provision of 35 U.S.C. 102(b), but 
modify a portion of the ID.
    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 210.42-46 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.42-46).

    By order of the Commission.

    Issued: December 29, 2009.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. E9-31253 Filed 1-4-10; 8:45 am]
BILLING CODE 7020-02-P