[Federal Register Volume 79, Number 69 (Thursday, April 10, 2014)]
[Notices]
[Pages 19922-19923]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-08007]


-----------------------------------------------------------------------

INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-501 (Remand Proceeding)]


Certain Encapsulated Integrated Circuit Devices and Products 
Containing Same; Notice of a Commission Final Determination of 
Violation of Section 337; Issuance of a Limited Exclusion Order; 
Termination of Investigation

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined that there is a violation of section 337 of 
the Tariff Act of 1930, as amended, by respondents Carsem (M) Sdn Bhd; 
Carsem Semiconductor Sdn Bhd; and Carsem, Inc. (collectively, 
``Carsem,'' or respondents) in the above-captioned investigation. The 
Commission has issued a limited exclusion order directed to the 
infringing products of Carsem and has terminated the investigation.

FOR FURTHER INFORMATION CONTACT: Michael Liberman, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 205-3115. 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 
under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 
1337, on December 19, 2003, based on a complaint filed by Amkor 
Technology Inc. (``Amkor''). See 68 FR 70836 (Dec. 19, 2003). Amkor 
alleged a violation of section 337 by respondents Carsem 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 claims 1-4, 7, 17, 18 
and 20-23 of U.S. Patent No. 6,433,277 (``the '277 patent''); claims 1-
4, 7 and 8 of U.S. Patent No. 6,630,728 (``the '728 patent''); and 
claims 1, 2, 13 and 14 of U.S. Patent No. 6,455,356 (``the '356 
patent''). All three patents are owned by Amkor. The investigation also 
concerns a third-party, ASAT, Inc. (``ASAT''), and its invention 
(``ASAT invention''), which Carsem argued was invalidating prior art to 
Amkor's asserted patents.
    On November 18, 2004, the ALJ issued a final initial determination 
(``Final ID'') finding no violation of section 337. 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''). The Remand ID found a violation of 
section 337 with regard to six claims of the '277 patent, but found no 
violation in connection with the asserted claims of the '728 or '356 
patents.
    Completion of this investigation was delayed because of difficulty 
in obtaining from third-party 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 so that the 
ASAT documents could be considered. On October 30, 2009, the ALJ issued 
a supplemental ID (``First Supplemental ID''), finding that the ASAT 
invention was not prior art, and reaffirming his finding of a violation 
of section 337.
    On February 18, 2010, the Commission reversed the ALJ's finding 
that ASAT invention is not prior art to Amkor's asserted patents, and 
remanded the investigation to the ALJ to make necessary findings in 
light of the Commission's determination that the ASAT invention is 
prior art. On March 22, 2010, the ALJ issued a Supplemental ID 
(``Second Supplemental ID'') in which he found that the '77 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. On 
July 20, 2010, the Commission determined not to review the ALJ's Remand 
ID and Second Supplemental ID. As a result, the Commission determined 
that there is no violation of section 337 in this investigation. Amkor 
appealed the Commission's decision to the U.S. Court of Appeals for the 
Federal Circuit (``the Court'').
    On August 22, 2012, the Court ruled on Amkor's appeal reversing the 
Commission's determination that the '277 Patent is invalid under 35 
U.S.C. 102(g)(2), declining to affirm the Commission's invalidity 
determination on the alternative grounds raised by Carsem, and 
remanding for further proceedings consistent with its opinion. Amkor 
Technology Inc. v. International Trade Commission, 692 F.3d 1250 (Fed. 
Cir. 2012) (``Amkor Technology''). On October 5, 2012, Carsem filed a 
combined petition for panel rehearing and for rehearing en banc. The 
Court denied Carsem's petition on December 7, 2012, and issued its 
mandate on December 19, 2012, returning jurisdiction to the Commission.
    On January 14, 2013, the Commission issued an Order (``Commission's 
Order'') directing the parties to the investigation to submit their 
comments regarding what further proceedings must be conducted to comply 
with the August 22, 2012, judgment of the Court in Amkor Technology. 
The parties filed their initial and responsive submissions.
    On June 5, 2013, the Commission issued a Notice (``Commission's 
Notice'') requesting briefing on remedy, bonding and the public 
interest in the above-captioned investigation, as well as responses to 
certain questions posed by the Commission regarding the economic prong 
of the domestic industry requirement and the public interest. 78 FR 
35051 (June 11, 2013). The Commission also set a schedule for the 
filing of written submissions. The parties have filed their initial and 
reply submissions pursuant to the Commission Notice.
    Having examined the record in this investigation, including the 
parties'

[[Page 19923]]

submissions filed in response to the Commission's Order and 
Commission's Notice, and consistent with the judgment of the Court, the 
Commission has determined to affirm the ALJ's First Supplemental ID and 
Remand ID thus finding a violation of section 337. The Commission has 
also determined as follows with respect to the specific issues raised 
by the parties in response to the Commission's Order and Commission 
Notice:
    (1) To affirm the ALJ's determination that claims 2-4 and 21-23 of 
the '277 patent are not invalid over the ASAT invention;
    (2) To affirm the ALJ's determination that Carsem failed to show 
that equitable estoppel defense based on Amkor's alleged failure to 
disclose the '277 patent to JEDEC applies in this investigation;
    (3) To affirm, in light of the ALJ's express findings that Carsem 
failed to prove that Amkor has deceived the standard setting body or 
that the '277 patent is necessary to practice JEDEC's standards, the 
ALJ's implicit determination that Carsem failed to show that its legal 
estoppel defense based on Amkor's alleged failure to disclose the '277 
patent to JEDEC applies in this investigation;
    (4) To affirm with modifications the ALJ's finding in the 2004 
Final ID that Amkor satisfied the economic prong of the domestic 
industry requirement under subsection 337(a)(3)(A);
    (5) To affirm with modifications the ALJ's finding in the 2004 
Final ID that Amkor failed to satisfy the economic prong of the 
domestic industry requirement under subsection 337(a)(3)(B); and
    (6) To take no position on the ALJ's findings in the 2004 Final ID 
with respect to whether Amkor satisfied the economic prong of the 
domestic industry requirement under subsection 337(a)(3)(C).
    The Commission has determined that the appropriate form of relief 
in this investigation is a limited exclusion order prohibiting the 
unlicensed entry of certain encapsulated integrated circuit devices 
covered by claims 2-4 and 21-23 of the United States Patent No. 
6,433,277 and that are manufactured abroad by or on behalf of, or 
imported by or on behalf of, Carsem.
    The Commission has further determined that the public interest 
factors enumerated in section 337(d)(l) (19 U.S.C. 1337(d)(l)) do not 
preclude issuance of the limited exclusion order. Finally, the 
Commission determined that Amkor is required to post a bond in the 
amount of a reasonable royalty rate of $0.00025 (0.025[cent]) per 
contact per covered encapsulated integrated circuit device imported 
during the period of Presidential review. The Commission's order was 
delivered to the President and the United States Trade Representative 
on the day of its issuance.
    The Commission has therefore terminated this investigation. 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 Part 
210 of the Commission's Rules of Practice and Procedure (19 CFR part 
210).

    Issued: April 4, 2014.

    By order of the Commission.
William R. Bishop,
Supervisory Hearings and Information Officer.
[FR Doc. 2014-08007 Filed 4-9-14; 8:45 am]
BILLING CODE 7020-02-P