By Eric Schweibenz
On December 16, 2009, the International Trade Commission issued a notice determining to review ALJ Charles E. Bullock’s October 30, 2009 Supplemental Initial Determination (“Supplemental ID”) in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501).

By way of background, the Complainant in this investigation is Amkor Technology, Inc. (“Amkor”) and the Respondents are Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively “Carsem”).  On November 9, 2005, ALJ Bullock issued a Remand Initial Determination, finding that (1) there was a violation of Section 337 in connection with U.S. Patent No. 6,433,277 (the ‘277 patent); and (2) no violation of Section 337 had occurred in connection with U.S. Patent No. 6,630,728 and U.S. Patent No. 6,455,356.  In particular, ALJ Bullock found that certain of Carsem’s accused products infringe valid claims 2, 3, 21, and 22 of the ‘277 patent.  On July 1, 2008, the U.S. District Court for the District of Columbia granted the Commission’s petition to enforce subpoenas duces tecum and ad testificandum to non-party ASAT.  In response, Carsem renewed its motion to remand the investigation and reopen the record to include any new evidence obtained as a result of the enforcement of the subpoenas.  The Commission issued a Remand Order on July 1, 2009, ordering that (1) the investigation be remanded to reopen the record to admit any new evidence obtained as a result of the enforcement of the subpoena duces tecum to ASAT, and (2) the ALJ revise or supplement the Initial Determination as appropriate, in light of the supplemental evidence, making all necessary findings concerning Carsem’s invalidity defenses for which the subpoena was obtained.  At a September 10-11, 2009 hearing, Carsem’s invalidity arguments were limited to 35 U.S.C. §§ 102(g) and 103(a).  On October 30, 2009, ALJ Bullock issued the Supplemental ID reaffirming his finding of a violation of Section 337.  See our November 27, 2009 post for more details.

On November 12, 2009, Carsem filed a petition for review of the Supplemental ID.  On November 19, 2009, Amkor and the Commission Investigative Staff filed responses opposing Carsem’s petition for review.

After examining the record of the investigation, including the Supplemental ID, the petition for review, and the responses thereto, the Commission decided to review the Supplemental ID in its entirety.  In the December 16 notice, the Commission noted its particular interest in receiving responses to the following two questions: (1) “What is the earliest possible priority date that can be established for the inventions embodied in Amkor’s patents-in-suit based on the ALJ’s finding that the evidence presented by Amkor is sufficient to establish a priority date no earlier than mid-1997 and no later than December 10, 1997, in light of Oka v. Youssefyeh, 849 F.2d 581 (Fed. Cir. 1988) and other applicable Federal Circuit and Commission precedent?”, and (2) “Is the ALJ’s use of an assumed priority date rather than determining an actual priority date to make his validity finding under 35 U.S.C. § 102(g) supported by the Federal Circuit and Commission precedent?”

Written submissions in response to the Commission’s December 16 notice are due by December 30, 2009, with reply submissions due by January 8, 2010.