[Federal Register Volume 77, Number 223 (Monday, November 19, 2012)]
[Notices]
[Pages 69501-69502]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-28101]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-698 (Enforcement Proceeding)]


Certain DC-DC Controllers and Products Containing Same; Decision 
To Affirm-in-Part, Reverse-in-Part, Modify-in-Part, and Vacate-in-Part 
an Enforcement Initial Determination Finding a Violation of the August 
13, 2010 Consent Order; Issuance of Modified Consent Order and Civil 
Penalty; and Termination of Enforcement Proceeding

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 affirm-in-part, reverse-in-part, modify-
in-part, and vacate-in-part an enforcement initial determination 
(``EID'') of the presiding administrative law judge (``ALJ'') finding a 
violation of the

[[Page 69502]]

August 13, 2010 consent order (``Consent Order'') by respondent uPI 
Semiconductor Corp. (``uPI'') of Hsinchu, Taiwan, and has issued a 
modified consent order and civil penalty order in the amount of 
$620,000 directed against uPI.

FOR FURTHER INFORMATION CONTACT: Clint A. Gerdine, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 708-2310. Copies of 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. 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 the matter can 
be obtained by contacting the Commission's TDD terminal on 202-205-
1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this enforcement 
proceeding on September 6, 2011, based on an enforcement complaint 
filed by Richtek Technology Corp. of Hsinchu, Taiwan and Richtek USA, 
Inc. of San Jose, California (collectively ``Richtek''). 76 FR 55109-
10. The complaint alleged violations of the August 13, 2010 consent 
orders issued in the underlying investigation by the continued practice 
of prohibited activities such as importing, offering for sale, and 
selling for importation into the United States DC-DC controllers or 
products containing the same that infringe one or more of U.S. Patent 
Nos. 7,315,190 (``the '190 patent''); 6,414,470 (``the '470 patent''); 
and 7,132,717 (``the '717 patent''); or that contain or use Richtek's 
asserted trade secrets. The Commission's notice of institution of 
enforcement proceedings named uPI and Sapphire Technology Limited 
(``Sapphire'') of Shatin, Hong Kong as respondents.
    On April 11, 2012, the Commission issued notice of its 
determination not to review the ALJ's ID terminating the investigation 
as to Sapphire based on a settlement agreement.
    On June 8, 2012, the ALJ issued his EID finding a violation of the 
Consent Order by uPI. He found importation and sale of accused products 
that infringe all asserted claims of the patents at issue, and 
importation and sale of formerly accused products that contain or use 
Richtek's asserted trade secrets. He found that uPI's products 
developed after the consent order issued did not misappropriate 
Richtek's asserted trade secrets. Also, he recommended enforcement 
measures for uPI's violation that included the following: (1) Modifying 
the Consent Order to clarify that the Order applies (and has always 
applied) to all uPI affiliates, past, present, or future; and (2) 
imposing a civil penalty of $750,000 against uPI. On June 25, 2012, uPI 
and Richtek each filed a petition for review of the EID; on July 3, 
2012, Richtek, uPI, and the Commission investigative attorney (``IA'') 
each filed a response to the opposing party's petition.
    On August 9, 2012, the Commission issued notice of its 
determination to review the following: (1) The ALJ's finding of 
infringement of the '470 patent; (2) the ALJ's finding of infringement 
of the '190 patent; and (3) the ALJ's determination that uPI violated 
the Consent Order on 75 days. 77 FR 49022-23 (Aug. 15, 2012). The 
determinations made in the EID that were not reviewed became final 
determinations of the Commission by operation of rule. See 19 CFR 
210.75(b)(3). The Commission also requested the parties to respond to 
certain questions concerning the issues under review and requested 
written submissions on the issues of remedy, the public interest, and 
bonding from the parties and interested non-parties.
    On August 23 and 30, 2012, respectively, complainant Richtek, 
respondent uPI, and the IA each filed a brief and a reply brief on the 
issues for which the Commission requested written submissions.
    Having reviewed the record in this investigation, including the EID 
and the parties' written submissions, the Commission has determined to 
affirm-in-part, reverse-in-part, modify-in-part, and vacate-in-part the 
EID's findings under review. Specifically, the Commission has affirmed 
the ALJ's finding that uPI violated the consent order, and determined 
that the number of violation days is 62 days. The Commission has also 
affirmed the ALJ's finding of direct infringement of claims 1-11 and 
26-27 of the '190 patent with respect to uPI's formerly accused 
products. In addition, the Commission has vacated the ALJ's finding 
that uPI does not induce infringement of claims 1-11 and 26-27 of the 
'190 patent.
    The Commission has also determined to reverse the ALJ's finding 
that claims 29 and 34 of the '470 patent are directly infringed by 
respondent uPI's accused DC-DC controllers and products containing the 
same, and has determined that Richtek waived any allegations of 
indirect infringement with respect to the '470 patent. This action 
results in a finding of no violation of the Consent Order with respect 
to the '470 patent.
    Further, the Commission has vacated as moot the portion of the EID 
relating to the '717 patent because the asserted claims 1-3 and 6-9 
have been cancelled following issuance of Ex Parte Reexamination 
Certificate No. U.S. 7,132,717 C1 on October 3, 2012.
    Further, the Commission has made its determination on the issues of 
remedy, the public interest, and bonding. The Commission has determined 
to impose a civil penalty of $620,000 on respondent uPI for violation 
of the Consent Order on 62 days. The Commission has also determined to 
modify the Consent Order to clarify that the consent order applies (and 
has always applied) to all uPI affiliates, past, present, or future. 
Further, the Commission has modified the Consent Order to remove the 
portions relating to the '717 patent based on issuance of the 
reexamination certificate.
    The Commission has terminated the enforcement proceeding. 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 
section 210.75 of the Commission's Rules of Practice and Procedure, 19 
CFR 210.75.

    Issued: November 14, 2012.

    By order of the Commission.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2012-28101 Filed 11-16-12; 8:45 am]
BILLING CODE 7020-02-P