[Federal Register Volume 85, Number 25 (Thursday, February 6, 2020)]
[Notices]
[Pages 6971-6973]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-02336]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1089]


Certain Memory Modules and Components Thereof; Commission 
Determination To Review in Part a Final Initial Determination Finding a 
Violation of Section 337; Schedule for Filing Written Submissions on 
the Issues Under Review and on Remedy, the Public Interest, and 
Bonding; Extension of the Target Date

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 a final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ''), finding a violation of section 337 of the Tariff Act of 
1930. The Commission requests briefing from the parties on certain 
issues under review, as indicated in this notice. The Commission also 
requests briefing from the parties and interested persons on the issues 
of remedy, the public interest, and bonding. The Commission has also 
determined to extend the target date for the completion of the above-
captioned investigation to April 7, 2020.

FOR FURTHER INFORMATION CONTACT: Robert Needham, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 708-5468. 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 (https://www.usitc.gov). The public record for this investigation may be viewed 
on the Commission's electronic docket (EDIS) at https://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 4, 2017, based on a complaint filed by Netlist, Inc. of 
Irvine, California (``Netlist''). 82 FR 57290-91. The complaint, as 
supplemented, alleges violations of section 337 of the Tariff Act of 
1930, as amended, 19 U.S.C. 1337, in the importation into the United 
States, the sale for importation, and the sale within the United States 
after importation of certain memory modules and components thereof that 
infringe claims 1-8, 10, 12, 14, 16-22, 24, 25, 27, 29-35, 38, 43-45, 
47, 48, 50, 52, and 58 of U.S. Patent No. 9,606,907 (``the '907 
patent'') and claims 1-5, 7-15, 17-25, 27, and 29 of U.S. Patent No. 
9,535,623 (``the '623 patent''). Id. The Commission's notice of 
investigation named as respondents SK hynix Inc. of the Republic of 
Korea; SK hynix America Inc. of San Jose, California; and SK hynix 
memory solutions Inc. of San Jose, California (together, ``SK hynix''). 
Id. at 57291. The Office of Unfair Import Investigations (``OUII'') is 
also participating in this investigation. Id.
    The Commission subsequently terminated the investigation with 
respect to claims 16-22, 24, 25, 27, 29-35, 38, 43-45, 47, 48, 50, 52, 
and 58 of the '907 patent and claims 12-15, 17-25, 27, and 29 of the 
'623 patent based on Netlist's partial withdrawal of its complaint. See 
Order. No. 12 (Mar. 19, 2018), not reviewed, Notice (Apr. 5, 2019); 
Order. No. 19 (Sept. 25, 2018), not reviewed, Notice (Oct. 15, 2018); 
Order. No. 27 (Dec. 6, 2018), not reviewed, Notice (Dec. 21, 2018). 
Accordingly, at the time of the Final ID, the remaining asserted claims 
were claims 1-8, 10, 12, 14, and 15 of the '907 patent and claims 1-5 
and 7-11 of the '623 patent.
    On October 19, 2019, the ALJ issued a final initial determination 
(``Final ID'') finding a violation of section 337 with respect to 
claims 6 and 12 of the '907 patent. Final ID at 164-65. The ALJ found 
that Netlist showed that SK hynix infringes claims 1-8, 10, 12, 14, and 
15 of the '907 patent, but failed to show

[[Page 6972]]

that SK hynix infringed any claim of the '623 patent. The ALJ also 
found that SK hynix showed that claims 1-5, 7, 8, 10, 14, and 15 of the 
'907 patent are invalid as obvious, but failed to show the invalidity 
of claims 6 and 12. Finally, the ALJ found that Netlist satisfied the 
domestic industry requirement with respect to the '907 patent, but did 
not satisfy the domestic industry requirement with respect to the '623 
patent.
    On November 4, 2019, SK hynix and OUII petitioned for review of the 
Final ID with respect to many issues involved in the finding of 
violation with respect to the '907 patent. Also on November 4, 2019, 
Netlist contingently petitioned for review of the Final ID with respect 
to certain issues related to the '907 patent. On November 12, 2019, the 
parties filed responses to each other's petitions. Because Netlist did 
not petition for review of the Final ID's finding that SK hynix did not 
violate section 337 with respect to the '623 patent, the Commission 
finds that Netlist has abandoned that contention and that there is no 
violation of section 337 with respect to the '623 patent. See 19 CFR 
210.43(b)(2) (stating that ``[a]ny issue not raised in petition for 
review will be deemed to have been abandoned by the petitioning 
party'').
    Having examined the record of this investigation, including the 
ALJ's final ID, the petition for review, and the responses thereto, the 
Commission has determined to review the final ID in part. Specifically, 
the Commission has determined to review the following issues: (1) The 
construction of the limitation ``receive'' in the asserted claims of 
the '907 patent, as well as related issues of infringement and 
invalidity; (2) the construction of the limitation ``produce first 
module control signals and second module control signals in response to 
the set of input address and control signals'' in the asserted claims 
of the '907 patent, as well as related issues of infringement and 
invalidity; (3) the domestic industry requirement with respect to both 
of the '623 and '907 patents; and (4) the findings with respect to both 
of the '623 and '907 patents regarding whether SK hynix showed that 
Netlist violated its obligations, if any, to offer a license on 
reasonable and non-discriminatory (RAND) terms. The Commission has 
determined not to review any other findings presented in the Final ID.
    The Commission has also determined to extend the target date for 
the completion of the investigation until April 7, 2020.
    In connection with its review, the Commission is interested in 
briefing on certain issues. The Commission is not requesting new 
argument, so for each response, the parties are to identify where they 
previously made such an argument in their pre- and post-hearing briefs. 
The Commission is interested in briefing on the following issues:

    1. If the Commission were to view the limitation ``set of input 
address and control signals'' as referring to a group of input 
address and control signals, what evidence is there in the record 
regarding whether or not the accused products and domestic industry 
products satisfy the limitation ``produce first module control 
signals and second module control signals in response to the set of 
input address and control signals''?
    2. Please explain, with reference to supporting evidence in the 
record, whether the '907 and '623 patents are essential to any JEDEC 
standard.
    3. Please explain, with reference to supporting evidence in the 
record, whether the alleged domestic industry products' compliance 
with JEDEC standards is sufficient to satisfy each and every 
limitation of a claim of the '907 patent.
    4. Please describe the status of Netlist's activities and 
investments with respect to the articles protected by the '907 and 
'623 patents at the time of Netlist's filing of the complaint in 
this investigation. Additionally, please describe the current status 
of Netlist's domestic industry investments and activities with 
respect to the articles protected by the '907 and '623 patents.

The parties are invited to brief only the discrete issues described 
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 
statute authorizes issuance of (1) an order that could result in the 
exclusion of the subject articles from entry into the United States, 
and/or (2) cease and desist orders that could result in the respondents 
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 Certain Devices for Connecting Computers via Telephone Lines, Inv. 
No. 337-TA-360, USITC Pub. No. 2843, Comm'n Op. at 7-10 (December 
1994).
    The statute requires the Commission to consider the effects of that 
remedy upon the public interest. The public interest factors the 
Commission will consider include the effect that an exclusion order 
and/or a cease and desist order 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. The Commission is particularly interested in 
briefing on the following issues:

    1. Please discuss whether the market demand in the United States 
for memory modules and components thereof would be satisfied if the 
Commission issued remedial relief against SK hynix regarding the 
'907 patent. Please address whether that that demand could be 
satisfied by non-infringing RDIMMs, Netlist licensees, or others.
    2. Please discuss the types of U.S. consumers that purchase and 
use the accused products, and discuss the potential impact on those 
consumers if the Commission were to issue remedial relief against SK 
hynix regarding the '907 patent.
    3. Please explain whether and to what extent servers require 
uniform memory modules, so the operator of a server would have to 
replace the whole server system based on the failure of a single 
memory module if that specific memory module was no longer 
available. Please explain whether the issuance of remedial relief 
against SK hynix regarding the '907 patent would have such an 
effect, and, if so, the extent of that effect.

    If the Commission orders some form of remedy, the U.S. Trade 
Representative, as delegated by the President, has 60 days to approve, 
disapprove, or take no action on the Commission's determination. 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 Commission requests that the parties to 
the investigation file written submissions on the issues identified in 
this notice. The Commission encourages parties to the investigation, 
interested government agencies, and any other

[[Page 6973]]

interested parties to file written submissions on the issues of remedy, 
the public interest, and bonding. Such initial written submissions 
should include views on the recommended determination by the ALJ on 
remedy, the public interest, and bonding, which issued in the same 
document as the Final ID on October 21, 2019. Netlist and the 
Commission Investigative Attorney are also requested to identify the 
form of the remedy sought and to submit proposed remedial orders for 
the Commission's consideration in their initial written submissions. 
Netlist is further requested to state the date when the '907 patent 
expires, provide the HTSUS numbers under which the subject articles are 
imported, and supply a list of known importers of the subject article. 
The written submissions, exclusive of any exhibits, must not exceed 50 
pages, and must be filed no later than close of business on February 
14, 2020. Reply submissions must not exceed 25 pages, and must be filed 
no later than the close of business on February 21, 2020. 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-1089'') 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 201.6. Documents for which confidential treatment 
by the Commission is properly sought will be treated accordingly. All 
information, including confidential business information and documents 
for which confidential treatment is properly sought, submitted to the 
Commission for purposes of this Investigation may be disclosed to and 
used: (i) By the Commission, its employees and Offices, and contract 
personnel (a) for developing or maintaining the records of this or a 
related proceeding, or (b) in internal investigations, audits, reviews, 
and evaluations relating to the programs, personnel, and operations of 
the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S. 
government employees and contract personnel,\1\ solely for 
cybersecurity purposes. All nonconfidential written submissions will be 
available for public inspection at the Office of the Secretary and on 
EDIS.
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    \1\ All contract personnel will sign appropriate nondisclosure 
agreements.
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    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 part 210 of the Commission's Rules of Practice and Procedure (19 CFR 
part 210).

    By order of the Commission.

    Issued: January 31, 2020.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2020-02336 Filed 2-5-20; 8:45 am]
 BILLING CODE 7020-02-P