[Federal Register Volume 79, Number 121 (Tuesday, June 24, 2014)]
[Notices]
[Pages 35796-35797]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-14672]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-501 (Rescission)]
Certain Encapsulated Integrated Circuit Devices and Products
Containing Same; Commission Determination To Rescind the Limited
Exclusion Order Based on a Settlement and License Agreement
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 rescind the limited exclusion order issued
in the above-captioned investigation based on a settlement and license
agreement.
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.
Sec. 1337, on December 19, 2003, based on a complaint filed by Amkor
Technology Inc. (``Amkor''). See 68 Fed. Reg. 70836 (Dec. 19, 2003).
Amkor alleged a violation of section 337 of the Tariff Act of 1930, as
amended (19 U.S.C. Sec. 1337), 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
concerned 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 constructions.'' 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 the 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 '277 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 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. Sec. 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.
[[Page 35797]]
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'') ordering 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 U.S. Court of Appeals for the
Federal Circuit (``the Court'') in Amkor Technology.
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 providing
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).
On April 4, 2014, the Commission determined that there is a
violation of Section 337 in the unlawful importation, sale for
importation, and sale after importation by Respondents Carsem of
certain encapsulated integrated circuit devices covered by one or more
of claims 2-4 and 21-23 of the '277 patent. The Commission determined
that the appropriate form of relief was a limited exclusion order
prohibiting the unlicensed entry of covered encapsulated integrated
circuit devices manufactured abroad by or on behalf of, or imported by
or on behalf of, Respondents or any of their affiliated companies,
parents, subsidiaries, or other related business entities, or their
successors or assigns.
On May 23, 2014, both private parties jointly petitioned that the
limited exclusion order issued by the Commission in the above-captioned
proceeding on April 4, 2014, be rescinded pursuant to 19 U.S.C. 1337(k)
and 19 CFR 210.76(a). The petitioners submit that rescission is
warranted on the basis of changed conditions of fact or law stemming
from a settlement between Amkor and Carsem, which provides that all
articles currently covered by the Commission's remedial order are now
licensed. On May 29, 2014, the Commission investigative attorney filed
his response in support of the petition.
The Commission has granted the petition. The authority for the
Commission's determination is contained in section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. Sec. 1337), and Part 210 of the
Commission's Rules of Practice and Procedure (19 CFR part 210).
By order of the Commission.
Issued: June 19, 2014.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2014-14672 Filed 6-23-14; 8:45 am]
BILLING CODE 7020-02-P