[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
[[Page 41080]]
(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