[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