[Federal Register Volume 77, Number 90 (Wednesday, May 9, 2012)]
[Notices]
[Pages 27249-27251]
From the Federal Register Online via the Government Printing 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