[Federal Register Volume 75, Number 142 (Monday, July 26, 2010)]
[Notices]
[Pages 43553-43554]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-18162]


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 INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-501]


In the Matter of Certain Encapsulated Integrated Circuit Devices 
and Products Containing Same; Notice of Commission Final Determination 
of No Violation of Section 337; Termination of 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 is no violation of section 337 of 
the Tariff Act of 1930, as amended (19 U.S.C. 1337), in the above-
captioned investigation. The Commission has terminated the 
investigation.

FOR FURTHER INFORMATION CONTACT: Michael Liberman, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone 202-205-3112. 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 
(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 
under section 337 of the Tariff Act of 1930, 19 U.S.C. 1337 (``section 
337''), on December 19, 2003, based on a complaint filed by Amkor 
Technology, Inc. (``Amkor'') alleging a violation of section 337 in the 
importation, sale for importation, and sale within the United States 
after importation of certain encapsulated integrated circuit devices 
and products containing same in connection with several claims of three 
patents owned by Amkor, i.e, U.S. Patent Nos. 6,433,277 (``the `277 
patent''); 6,630,728 (``the `728 patent''); and 6,455,356 (``the `356 
patent''). The complainant named Carsem (M) Sdn Bhd; Carsem 
Semiconductor Sdn Bhd;

[[Page 43554]]

and Carsem, Inc. (collectively, ``Carsem'') as respondents.
    On November 18, 2004, the ALJ issued a final initial determination 
(``Final ID'') finding no violation of section 337, as well as a 
recommended determination on remedy and bond. After reviewing the Final 
ID in its entirety, the Commission on March 31, 2005, modified the 
ALJ's claim construction and remanded the investigation to the ALJ with 
instructions ``to conduct further proceedings and make any new findings 
or changes to his original findings that are necessitated by the 
Commission's new claim construction.'' Commission Order ] 8 (March 31, 
2005). On November 9, 2005, the ALJ issued a remand initial 
determination (``Remand ID''), in which he found a violation of section 
337 with regard to six claims of one asserted patent, but found no 
violation in connection with the claims of the two other asserted 
patents.
    Completion of this investigation has been delayed because of 
difficulty in obtaining from third-party ASAT, Inc. (``ASAT'') certain 
documents that Carsem asserted were critical for its affirmative 
defenses. The Commission's efforts to enforce a February 11, 2004, 
subpoena duces tecum and ad testificandum directed to ASAT resulted in 
a July 1, 2008, order and opinion of the U.S. District Court for the 
District of Columbia granting the Commission's second enforcement 
petition.
    On July 1, 2009, after ASAT had complied with the subpoena, the 
Commission issued a notice and order remanding this investigation to 
the ALJ to consider the ASAT documents and extending the target date 
for completion of this investigation. On September 10-11, 2009, a 
hearing was held to address Carsem's invalidity defenses based on the 
ASAT documents. On October 30, 2009, the ALJ issued a supplemental ID 
(``First Supplemental ID'') reaffirming his finding of a violation of 
section 337.
    On December 16, 2009, the Commission issued a notice of its 
decision to review the First Supplemental ID. On February 18, 2010, the 
Commission issued a Notice and Order reversing the ALJ's finding that 
ASAT's invention is not prior art to Amkor's asserted patents, and 
remanding the investigation to the ALJ to make necessary findings in 
light of the Commission's determination. In order to allow sufficient 
time to complete the investigation, the Commission extended the target 
date for completion of the investigation to July 20, 2010, and directed 
the ALJ to issue his findings by March 22, 2010.
    On February 24, 2010, Amkor filed a petition for clarification (and 
in the alternative reconsideration) of the Commission's February 18, 
2010, Notice and Order. On March 3, 2010, and March 8, 2010, 
respectively, the IA and Carsem filed responses opposing Amkor's 
request. On March 9, 2010, Amkor filed a motion to strike Carsem's 
opposition to Amkor's petition for clarification, alleging it was 
untimely. On March 11, 2010, Carsem opposed Amkor's motion to strike.
    On March 22, 2010, the ALJ issued a Supplemental ID (``Second 
Supplemental ID'') in which he found that the `277 and `728 patents 
were invalid in view of ASAT prior art and determined that there was no 
violation of Section 337 in the present investigation.
    Amkor and Carsem filed their initial comments seeking review of 
various portions of the Second Supplemental ID. Carsem's request for 
review is conditioned on the Commission's decision to review the Second 
Supplemental ID. All the parties also filed their timely response 
comments.
    The Commission has examined the record in this investigation, 
including the ALJ's Remand ID and Second Supplemental ID. The Remand ID 
found that a violation of Section 337 had occurred with respect to 
certain claims of the `277 patent, but not with respect to the `728 or 
`356 patents. Remand ID at 111-113. More specifically, the Remand ID 
found that: (1) Carsem infringed the asserted claims of the `277 
patent, Amkor practiced claim 21 of the `277 patent, and claims 2, 3, 
4, 21, 22, and 23 of the `277 patent had not been shown to be invalid; 
(2) Carsem infringed claims 1, 2, and 7 of the `728 patent but did not 
infringe claims 3, 4, and 8 of the same patent, Amkor practiced claim 1 
of the `728 patent, and all of the asserted claims of the `728 patent 
had been shown to be invalid; and (3) Carsem did not infringe the 
asserted claims of the `356 patent, Amkor did not practice claim 13 of 
the `356 patent, and none of the asserted claims of the `356 patent had 
been shown to be invalid. Id.
    The ALJ's Second Supplemental ID found that: (1) Claims 21-23 of 
the `277 patent are invalid as anticipated by the ASAT invention; (2) 
claims 1-4, 7, 17, 18, and 20 of the `277 patent, as well as claims 1-
4, 7, and 8 of the `728 patent, are invalid as obvious in view of 
various combinations of the prior art references involving the ASAT 
invention; and (3) the asserted claims of the `356 patent are not 
invalid in view of the ASAT invention. Second Supplemental ID at 37. As 
a result of these findings, the Second Supplemental ID ``modif[ied] the 
Initial Determination in the 2005 Remand ID to find no violation of 
Section 337 of the Tariff Act of 1930, as amended, in the importation 
into the United States, the sale for importation, or the sale within 
the United States after importation of certain encapsulated integrated 
circuit devices and products contains same in connection with claims 1-
4, 7, 17, 18, 20, 21-23 of the U.S. Patent No. 6,433,277, claims 1-4, 
7, and 8 of U.S. Patent No. 6,630,728 and claims 1, 2, 13 and 14 of 
U.S. Patent No. 6,455,356.'' Second Supplemental ID at 38.
    The Commission has examined the parties' respective comments and 
responses thereto, and has determined not to review the findings made 
in the Remand ID and in the Second Supplemental ID. As a result, the 
Commission has determined that there is no violation of section 337 in 
this investigation. The Commission has also denied Amkor's request for 
clarification and motion to strike. The Commission has terminated the 
investigation, and an opinion supporting the Commission's determination 
will be issued.
    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 
sections 210.41-.42, 210.50 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.41-.42, 210.50).

     Issued: July 20, 2010.

    By order of the Commission.
William R. Bishop,
Acting Secretary to the Commission.
[FR Doc. 2010-18162 Filed 7-23-10; 8:45 am]
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