[Federal Register Volume 77, Number 90 (Wednesday, May 9, 2012)]
[Notices]
[Pages 27249-27251]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-11175]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-753]


Certain Semiconductor Chips and Products Containing Same; Review 
of a Final Initial Determination; Schedule for Written Submissions; 
Termination of the Investigation as to Three Respondents

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 to terminate the investigation as to three 
respondents on the basis of settlement. The Commission has also 
determined to review in the entirety the final initial determination 
(``final ID'') issued by the presiding administrative law judge 
(``ALJ'') on March 2, 2012, finding no violation of section 337 of the 
Tariff Act of 1930, 19 U.S.C. 1337, in the above-captioned 
investigation.

FOR FURTHER INFORMATION CONTACT: Sidney A. Rosenzweig, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 708-2532. 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 January 4, 2011, based on a complaint filed by Rambus Inc. of 
Sunnyvale, California (``Rambus''), alleging a violation of section 337 
in the importation, sale for importation, and sale within the United 
States after importation of certain semiconductor chips and products 
containing the same. 76 FR 384 (Jan. 4, 2011). The complaint alleged 
the infringement of various claims of patents including U.S. Patent 
Nos. 6,470,405; 6,591,353; 7,287,109 (collectively, ``the Barth 
patents''); and Nos. 7,602,857; and 7,715,494 (collectively, ``the 
Dally patents''). The Barth patents share a common specification, as do 
the Dally patents. The notice of investigation named as respondents 
Freescale Semiconductor of Austin, Texas (``Freescale''); Broadcom 
Corp. of Irvine, California (``Broadcom''); LSI Corporation of 
Milpitas, California (``LSI''); Mediatek Inc. of Hsin-Chu, Taiwan 
(``Mediatek''); NVIDIA Corp. of Santa Clara, California (``NVIDIA''); 
STMicroelectronics N.V. of Geneva, Switzerland; and STMicroelectronics 
Inc. of Carrollton, Texas (collectively, ``STMicro''), as well as 
approximately twenty customers of one or more of these respondents.
    The investigation has since been terminated against many of the 
respondents on the basis of Rambus's settlements with Broadcom, 
Freescale, and NVIDIA. Following the ALJ's issuance of the ID, Rambus 
settled its dispute with Mediatek. On March 16, 2012, Rambus, Mediatek, 
and Mediatek's customer-respondents Audio Partnership PLC and Oppo 
Digital, Inc., moved to terminate the investigation as to Mediatek and 
these two customers. No oppositions were filed. The Commission has 
determined to grant the motion, terminating the investigation as to 
these three respondents.
    LSI and STMicro are the only two manufacturer respondents 
remaining. With them as respondents are their customers Asustek 
Computer, Inc. and Asus Computer International, Inc.; Cisco Systems, 
Inc. (``Cisco''); Garmin International Inc.; Hewlett-Packard Company; 
Hitachi Global Storage Technologies; and Seagate Technology.
    On March 2, 2012, the ALJ issued the final ID. The ID found no 
violation of section 337 for several reasons. All of the asserted 
claims were found to be invalid or obvious in view of the prior art 
under 35 U.S.C. 102 and 103. The Barth patents were found to be 
unenforceable under the doctrine of unclean hands by virtue of Rambus's 
destruction of documents. The ID also found that Rambus had exhausted 
its rights under the Barth patents as to certain products of one 
respondent. The ID found that all of the asserted patent claims were 
infringed, and rejected

[[Page 27250]]

numerous affirmative defenses raised by the respondents.
    On March 19, 2012, Rambus, the respondents and the Commission 
investigative attorney (``IA'') each filed a petition for review of the 
ID. On March 27, 2012, these parties each filed a response to the 
others' petitions.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petitions for review, and the responses thereto, 
the Commission has determined to review the final ID in its entirety.
    In connection with the Commission's review, the parties are asked 
to respond only to the questions enumerated below. Except as otherwise 
expressly indicated, the parties' submissions are to be based on the 
ALJ's claim constructions. The parties' submissions should be limited 
to issues they have properly preserved and should be limited to the 
evidentiary record.

1. Claim Construction (Dally Patents)

    a. Why ``output frequency'' requires a construction setting forth a 
specific data rate per cycle, as opposed to the plain language of the 
claims, which requires only a particular output frequency, i.e., a 
number of cycles per second.
    b. If ``output frequency'' is construed not to require a particular 
data rate, the effect of that construction, if any, on the section 102 
and 103 determinations on review, as set forth below.

2. Validity

    a. The motivation to combine and secondary indicia of 
nonobviousness, for each section 103 combination upon which one or more 
parties petitioned for review. (Barth patents and Dally patents)
    b. The pertinence, if any, of synchronous versus asynchronous prior 
art, and the motivation to apply the teachings of asynchronous art to 
synchronous systems. (Barth patents)
    c. Whether the Harriman patent evidences the publication of the 
NeXTBus. specification, in view of the fact that NeXT is the assignee 
of the Harriman patent. (Barth patents)
    d. Whether the respondents have demonstrated the publication date 
of the SyncLink specification (RX-4270C). (Barth patents)

3. Infringement

    a. The disablement of the Cisco products with a disabled 
transmitter (Dally patents), see Resp. Pet. 48, as compared to the 
disablement of the SL500 prior art products, see Rambus Pet. 17-20.
    b. Given that ``in every infringement analysis, the language of the 
claims, as well as the nature of the accused products, dictates whether 
an infringement has occurred,'' Fantasy Sports Properties, Inc. v. 
Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002) (emphasis 
added), whether a finding of infringement or noninfringement of the 
asserted Dally claims should be guided by the claim language at issue 
in Fantasy Sports, Silicon Graphics, Inc. v. ATI Technologies., Inc., 
607 F.3d 784, 794 (Fed. Cir. 2010), ACCO Brands, Inc. v. ABA Locks 
Manufacturer Co., 501 F.3d 1307, 1310 (Fed. Cir. 2007), or other 
Federal Circuit caselaw regarding active or enabled components.
    c. The infringement of asserted Dally '494 method claims 39, 40, 
and 42 in view of the ALJ's discussion at page 77 of the ID regarding 
enabled features of apparatuses.
    d. Certain STMicroelectronics products are claimed to have 
substantial noninfringing uses by virtue of their compatibility with 
SDR memory. See Resps. Pet. 25; ID at 67 n.9. Explain with specificity 
and citations to the evidentiary record what these STMicroelectronics 
products are and your contention that these products have or lack 
substantial noninfringing uses.

4. Unclean Hands (Barth Patents)

    a. Whether the doctrines of preclusion or stare decisis prevent 
Rambus from challenging the determinations from the 661 investigation 
as to the date upon which it was obligated to retain documents, or its 
bad faith.
    b. Explain with specificity the factual distinctions between the 
records of the 661 investigation and this investigation, with respect 
to prejudice suffered or allegedly suffered by the respondents by 
reason of Rambus's destruction of documents.

5. Inequitable Conduct (Barth Patents)

    In connection with Commission review, the parties are asked to 
brief the following issues relating to nondisclosure of the SyncLink 
specification (RX-4270C), and only that specification (i.e., not other 
SyncLink publications and not RamLink):
    a. Whether the respondents have proven materiality of this 
particular document.
    b. Whether the PTO's reexamination of the '109 patent demonstrates 
that the broadest reasonable construction of the '109 patent's 
``signal'' is a construction broader than the '405 and '353 patents' 
``strobe signal.''
    c. If the broadest reasonable construction of ``signal'' in the 
'109 patent is ``a signal,'' and not ``a strobe signal,'' whether the 
SyncLink specification is cumulative with art presented to the PTO.
    d. If inequitable conduct were to be found for the '109 patent, 
whether the '405 and '353 patents are also unenforceable.

6. Domestic Industry

    a. Whether, given the particular scope of the licensed field of 
each Rambus license, Rambus should nonetheless be required to allocate 
licensing expenses on a patent-by-patent basis.

7. Patent Exhaustion (Barth Patents)

    a. Whether the licensed Samsung memory products substantially 
embody the Barth patents.
    b. What evidence, if any, demonstrates that the Samsung memory 
purchased (by the respondent discussed on the bottom half of page 337 
of the ID, see Rambus Pet. 95-97), was ever located in the United 
States prior to incorporation into products overseas, and whether the 
respondent took possession of the memory in the United States.

8. Standing (Dally Patents)

    a. Whether Rambus is a bona fide purchaser pursuant to 35 U.S.C. 
Sec.  261.
    b. Whether UNC's claim of ownership is barred by laches.

The parties have been invited to brief only these discrete issues, as 
enumerated above, with reference to the applicable law and evidentiary 
record. The parties are not to brief other issues on review, which are 
adequately presented in the parties' existing filings.
    In connection with the final disposition of this investigation, the 
Commission may (1) issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue one or more cease and desist orders that could result in the 
respondent(s) being required to cease and desist from engaging in 
unfair acts in the importation and sale of such articles. Accordingly, 
the Commission is interested in receiving written submissions that 
address the form of remedy, if any, that should be ordered. If a party 
seeks exclusion of an article from entry into the United States for 
purposes other than entry for consumption, the party should so indicate 
and provide information establishing that activities involving other 
types of entry either are adversely affecting it or likely to do so. 
For background, see In the Matter of Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360,

[[Page 27251]]

USITC Pub. No. 2843 (December 1994) (Commission Opinion).
    If the Commission contemplates some form of remedy, it must 
consider the effects of that remedy upon the public interest. The 
factors the Commission will consider include the effect that an 
exclusion order and/or cease and desist orders would have on (1) the 
public health and welfare, (2) competitive conditions in the U.S. 
economy, (3) U.S. production of articles that are like or directly 
competitive with those that are subject to investigation, and (4) U.S. 
consumers. The Commission is therefore interested in receiving written 
submissions that address the aforementioned public interest factors in 
the context of this investigation.
    If the Commission orders some form of remedy, the U.S. Trade 
Representative, as delegated by the President, has 60 days to approve 
or disapprove the Commission's action. See Presidential Memorandum of 
July 21, 2005, 70 FR 43251 (July 26, 2005). During this period, the 
subject articles would be entitled to enter the United States under 
bond, in an amount determined by the Commission. The Commission is 
therefore interested in receiving submissions concerning the amount of 
the bond that should be imposed if a remedy is ordered.
    Written Submissions: The parties to the investigation are requested 
to file written submissions as set forth above. Parties to the 
investigation, interested government agencies, and any other interested 
parties are encouraged to file written submissions on the issues of 
remedy, the public interest, and bonding. Such submissions should 
address the recommended determination by the ALJ on remedy and bonding. 
Complainant and the IA are also requested to submit proposed remedial 
orders for the Commission's consideration. Complainant is also 
requested to state the dates that the patents expire and the HTSUS 
numbers under which the accused products are imported. The written 
submissions and proposed remedial orders must be filed no later than 
close of business on Friday, May 18, 2012 and responses to the 
Commission's questions should not exceed 100 pages. Reply submissions 
must be filed no later than the close of business on Friday, June 1, 
2012 and such replies should not exceed 60 pages. No further 
submissions on these issues will be permitted unless otherwise ordered 
by the Commission.
    Persons filing written submissions must file the original document 
and 12 true copies thereof on or before the deadlines stated above with 
the Office of the Secretary. Any person desiring to submit a document 
to the Commission in confidence must request confidential treatment 
unless the information has already been granted such treatment during 
the proceedings. All such requests should be directed to the Secretary 
of the Commission and must include a full statement of the reasons why 
the Commission should grant such treatment. See 19 CFR 210.6. Documents 
for which confidential treatment by the Commission is sought will be 
treated accordingly. All nonconfidential written submissions will be 
available for public inspection at the Office of the Secretary.
    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 210.21, 210.42-46 and 210.50 of the Commission's Rules of 
Practice and Procedure (19 CFR 210.21, 210.42-46 and 210.50).

    By order of the Commission.
    Issued: May 3, 2012.
James R. Holbein,
Secretary to the Commission.
[FR Doc. 2012-11175 Filed 5-8-12; 8:45 am]
BILLING CODE 7020-02-P