[Federal Register Volume 78, Number 131 (Tuesday, July 9, 2013)]
[Notices]
[Pages 41079-41082]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-16363]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-819]


Certain Semiconductor Chips With Dram Circuitry, and Modules and 
Products Containing Same

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 review-in-part the final initial 
determination issued by the presiding administrative law judge in the 
above-captioned investigation on March 26, 2013. The Commission has 
determined not to review the final initial determination of no 
violation with respect to U.S. Patent No. 7,659,571, and the 
investigation is terminated with respect to that patent. The Commission 
requests certain briefing from the parties on the issues under review, 
as indicated in this notice. The Commission also requests briefing on 
the issues of remedy, the public interest, and bonding.

FOR FURTHER INFORMATION CONTACT: Clark S. Cheney, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone 202-205-2661. 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 
on December 21, 2011, based on a complaint filed by Elpida Memory, 
Inc., of Tokyo, Japan and Elpida Memory (USA) Inc. of Sunnyvale, 
California

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(collectively, ``Elpida''). 76 FR 79215 (Dec. 21, 2011). The complaint 
alleged violations of section 337 of the Tariff Act of 1930, as amended 
(19 U.S.C. 1337), based on infringement of several U.S. patents. The 
notice of investigation named Nanya Technology Corporation of TaoYuan, 
Taiwan and Nanya Technology Corporation, U.S.A. of Santa Clara, 
California (collectively, ``Nanya''), as respondents. The Office of 
Unfair Import Investigations did not participate in the investigation.
    On March 26, 2013, the presiding administrative law judge (``ALJ'') 
issued a final ID finding a violation of section 337 based on 
infringement of five patents and no violation with respect to a sixth 
patent. In particular, the ALJ found a violation based on infringement 
of claims 8-11 and 17-18 of U.S. Patent No. 6,150,689 (``the '689 
patent''); claims 4, 14, and 20 of U.S Patent No. 6,635,918 (``the '918 
patent''); claim 27 of 7,495,453 (``the '453 patent''); claims 5-6 of 
U.S. Patent No. 7,713,828 (``the '828 patent''); and claims 1-2 of U.S. 
Patent No. 7,906,809 (``the '809 patent''). The ALJ found no 
infringement of and no domestic industry for articles protected by 
7,659,571 (``the '571 patent'') and accordingly found no violation of 
section 337 with respect to that patent. The ALJ also found claims 17 
and 18 of the '453 patent to be invalid. The ALJ issued a recommended 
determination (``RD'') on remedy and bonding. The ALJ recommended a 
limited exclusion order be issued against Nanya barring entry of 
infringing DRAM articles. The ALJ recommended additional briefing on an 
appropriate bond, or alternatively that the bond be set at one percent.
    On April 8, 2013, complainant Elpida filed a petition for review of 
the ALJ's determination that claims 17 and 18 of the '453 patent are 
invalid. The same day Nanya filed a petition for review of a number of 
the determinations in the ID that were adverse to it. Nanya also 
presented a contingent petition for review of the validity of the '571 
patent in the event that Elpida petitioned for review of the ALJ's non-
infringement and no domestic industry determinations with respect to 
that patent.
    Having examined the record of this investigation, including the ID, 
the petitions for review, and the responses thereto, the Commission has 
determined to review the ALJ's determination of violation with respect 
to the '689 patent, the '918 patent, the '453 patent, the '828 patent, 
and the '809 patent. The Commission has determined not to review the 
ALJ's determination of no violation with respect to the '571 patent, 
and the investigation is terminated with respect to that patent.
    The parties are requested to brief their positions on the issues 
under review with reference to the applicable law and the evidentiary 
record, including intrinsic patent evidence and expert testimony. In 
connection with its review, the Commission is particularly interested 
in the following issues:
    1. With respect to the validity of the '453 patent, please address 
the following:
    a. What record evidence suggests that the ODT-leg portion of the 
circuit and the non-ODT-leg portion of the circuit in U.S. Patent 
Publication No. 2006/0126401 to Ba (RX-107) should or should not have 
the same number of legs?
    b. What impedance are the ODT legs of Ba attempting to match? What 
impedance are the non-ODT legs of Ba attempting to match? Does any 
disclosure in Ba suggest that ODT-leg portion of the circuit and the 
non-ODT-leg portion of the circuit should be impedance-matched to each 
other?
    c. Does the two-chip embodiment found in paragraph 10 of Ba have 
any relevance to the question of whether the ODT-leg portion of the 
circuit and the non-ODT-leg portion of the circuit should or should not 
have the same number of legs?
    d. What record evidence supports a conclusion that the claimed 
``output control circuit'' in the '453 patent, which ``activates a 
first number of unit buffers in common when an ODT impedance is set to 
a first value and activates a second number of unit buffers in common 
when the ODT impedance is set to a second value,'' would have been 
obvious in view of Ba?
    e. What record evidence supports a conclusion that one ODT leg 
described in Ba corresponds to a ``unit buffer'' as described in the 
asserted claims of the '453 patent? What record evidence, including 
expert testimony, supports a conclusion that two or more ODT legs in Ba 
correspond to a ``unit buffer''?
    2. With respect to the '828 patent, please address the following, 
including whether arguments relating to any of the following have been 
waived:
    a. Elpida's complaint alleges, inter alia, that the ``sale,'' 
``importation,'' and ``use'' of Nanya semiconductors constitutes 
infringement of the asserted ``method of forming'' claims of the '828 
patent. What legal support exists for the propositions that (1) the 
sale of an article infringes a method claim; (2) the importation of an 
article infringes a method claim; or (3) the use of an article 
infringes a claim to a ``method of forming'' the article?
    b. Elpida's complaint alleges a violation of 19 U.S.C. Sec.  
1337(a)(1)(B)(i) based on the importation, sale for importation, and 
sale after importation of Nanya semiconductors. What is Elpida's theory 
of infringement under that statutory subsection?
    c. Of what relevance, if any, is 19 U.S.C. 1337(a)(1)(B)(ii) to the 
allegations in Elpida's complaint concerning the asserted claims of the 
'828 patent?
    d. Is a cause of action under 19 U.S.C. 1337(a)(1)(B)(i) mutually 
exclusive to a cause of action under 19 U.S.C. 1337(a)(1)(B)(ii)? Why 
or why not?
    e. What evidence in the record, if any, indicates where Nanya 
allegedly performs the method steps of the asserted claims of the '828 
patents? Do those processes occur entirely outside the United States? 
Of what relevance is the location where a method is performed to the 
infringement analysis here?
    f. What evidence in the record, if any, indicates where Elpida 
allegedly performs the method steps of the asserted claims of the '828 
patent? Do those processes occur entirely outside the United States?
    g. What evidence in the record, if any, shows that Elpida has met 
its burden to show the existence of a domestic industry ``relating to 
the articles protected by'' the claims of '828 patent? Can a ``method 
of forming'' claim ``protect'' an ``article'' under 19 U.S.C. 
1337(a)(2) and (3)? How is satisfaction of this statutory requirement 
similar to or different from an infringement analysis? Of what 
relevance is the location where the method is performed to a domestic 
industry analysis?
    h. With respect to the validity of the '828 patent, of what 
relevance is the disclosure of ``formation of a silicon growth layer 9 
in the source/drain region'' on page 14 of the Yamada prior art 
reference (RX-0027.014)? Is element 9 part of the source/drain region? 
What record evidence informs the answer to these questions?
    i. With respect to the validity of the '828 patent, the Yamada 
prior art reference discloses at RX-0027.006 ``MOSFET source/drain 
regions 10 comprising n+ diffusion layers are raised up by a silicon 
growth layer 9, with the n+ diffusion layer 10 formed from the surface 
of the silicon growth layer 9 which is raised up.'' What is the 
significance of the phrase ``raised up,'' used twice in this 
disclosure? Does this support a conclusion that element 9 is part of 
the source/drain region? What record evidence informs the answer to 
these questions?
    3. With respect to the '809 patent, please address the following:

[[Page 41081]]

    a. Is there any support in the '809 patent specification for the 
claim phrase ``substantially the same'' other than passages that use 
the phrase ``substantially in agreement''? Is there any significance to 
the fact that the applicants of the '809 patent distinguished proposed 
claims that used the phrase ``substantially in agreement'' by stating 
the prior art electrodes were ``substantially wider'' (see JXM-12 at 7-
10)? Does this statement influence a proper understanding of the phrase 
``substantially in agreement'' as it is used in the '809 patent 
specification? Should that understanding of the specification also 
apply to claims that use the phrase ``substantially the same''? Does 
the term ``wider'' connote a comparison of size?
    b. Must the claim terms ``formed in a semiconductor substrate'' and 
``formed on the semiconductor substrate'' be given mutually exclusive 
meanings, or may the terms overlap in meaning? Please identify all 
evidence, including evidence from the patent figures, indicating how a 
person of ordinary skill in the art would interpret these two phrases 
at the time of the invention.
    c. What are the implications for infringement and domestic industry 
if the Commission were to adopt Nanya's proposed construction of the 
claim phrase, ``upper surface which is substantially the same as the 
lower surface and aligned with the lower surface''?
    d. Has Nanya presented a sufficiently detailed petition to preserve 
an argument that the ALJ's technical prong determination is erroneous 
with respect to the '809 claim term ``wherein a cross-sectional area of 
each elevated source and drain region in any plane parallel to the 
substrate is greater than the area of the upper or lower surfaces 
thereof''? What would be the consequence of adopting Nanya's proposed 
interpretation of that term with respect to infringement and domestic 
industry?
    4. With respect to bonding, Nanya is requested to submit and 
summarize relevant evidence of license agreements referred to in the 
ALJ's RD at page 5. Elpida is requested to submit and summarize 
relevant bonding evidence referred to in the RD at page 6. The parties 
are both requested to present arguments concerning an appropriate bond 
based on record evidence and appropriate legal authorities.
    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, 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 and prescribed by the 
Secretary of the Treasury. 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 on all of the issues identified in this 
notice. 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 ALJ's recommendation on remedy and 
bonding set forth in the RD. Complainant Elpida is also requested to 
submit proposed remedial orders for the Commission's consideration. 
Elpida is also requested to state the dates that each of the asserted 
patents are set to expire and the HTSUS numbers under which the accused 
products are imported. Initial written submissions and proposed 
remedial orders must be filed no later than close of business on 
Friday, July 19, 2013. Initial written submissions by the parties shall 
be no more than 75 pages, excluding exhibits. Reply submissions must be 
filed no later than the close of business on Friday, July 26, 2013. 
Reply submissions by the parties shall be no more than 40 pages, 
excluding exhibits. No further submissions on these issues will be 
permitted unless otherwise ordered by the Commission.
    Persons filing written submissions must file the original document 
electronically on or before the deadlines stated above and submit 8 
true paper copies to the Office of the Secretary by noon the next day 
pursuant to section 210.4(f) of the Commission's Rules of Practice and 
Procedure (19 CFR 210.4(f)). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-819'') in a prominent place on 
the cover page and/or the first page. (See Handbook for Electronic 
Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf). Persons with questions 
regarding filing should contact the Secretary (202-205-2000).
    Any person desiring to submit a document to the Commission in 
confidence must request confidential treatment. All such requests 
should be directed to the Secretary to the Commission and must include 
a full statement of the reasons why the Commission should grant such 
treatment. See 19 CFR Sec.  201.6. Documents for which confidential 
treatment by the Commission is properly sought will be treated 
accordingly. A redacted non-confidential version of the document must 
also be filed simultaneously with the any confidential filing. All non-
confidential written submissions will be available for public 
inspection at the Office of the Secretary and on EDIS.
    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 and 210.50 of the Commission's Rules of Practice 
and Procedure (19 CFR 210.42-46 and 210.50).

    By order of the Commission.


[[Page 41082]]


    Issued: July 2, 2013.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-16363 Filed 7-8-13; 8:45 am]
BILLING CODE 7020-02-P