02
Nov
By Tom Fisher
On October 30, 2009, the International Trade Commission issued a notice determining to review in part the final Initial Determination (“ID”) issued by ALJ Theodore R. Essex on August 28, 2009, in Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-630).

This investigation was instituted on January 14, 2008, based on the complaint of Tessera, Inc. (Tessera) of San Jose, California.  Eighteen respondents were named in the complaint, and several of the named respondents either settled out of the investigation or defaulted.

As indicated in our September 1 and October 1 posts, on August 28, 2009, ALJ Essex issued his ID, finding no violation of Section 337 had occurred based on the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain semiconductor chips with minimized chip package size and products containing same in connection with certain claims of U.S. Patent No. 5,663,106 (the ‘106 patent), U.S. Patent No. 5,679,977 (the ‘977 patent), and U.S. Patent No. 6,133,627 (the ‘627 patent).  Further, ALJ Essex determined that a domestic industry exists that practices the patents-in-suit.

On September 17, 2009, Tessera and the Commission Investigative Staff filed petitions for review of the ID, and the remaining respondents in the investigation filed contingent petitions for review of the ID.  On October 1, 2009, the parties filed responses to the various petitions and contingent petitions for review.

After examining the record of the investigation, including the ID, the petitions for review, and the responses to the petitions for review, the Commission decided to review the ID in part.  In particular, the Commission determined to review:  (i) ALJ Essex’s construction of the claim term “top layer” in claim 1 of the ‘106 patent, and its effect on the findings relating to infringement, invalidity, and domestic industry; (ii) ALJ Essex’s construction of the claim term “thereon” in claim 1 of the ‘106 patent, and its effect on the findings relating to infringement, invalidity, and domestic industry; (iii) ALJ Essex’s finding that the Direct Loading testing methodology employed by Tessera’s expert to prove infringement is unreliable; and (iv) ALJ Essex’s finding that the 1989 Motorola OMPAC 68-pin chip package fails to anticipate claims 17 and 18 of the ‘977 patent.  In addition, the notice requests briefing on four questions of particular interest to the Commission.

The parties’ briefs to the Commission are due by November 13, 2009, with reply submissions due by November 20, 2009.
Share