By Eric Schweibenz
On January 22, 2010, the International Trade Commission issued a notice determining not to review an initial determination (“ID”) issued by ALJ Theodore R. Essex denying Complainant Tessera, Inc.’s (“Tessera”) motion for forfeiture of Respondents’ bonds, limited discovery, and evidentiary hearing in Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-605).

By way of background, this investigation was instituted in May 2007 based on Tessera’s complaint against Respondents Spansion, Inc., Spansion, LLC, Qualcomm, Inc., ATI Technologies, Motorola, Inc., STMicroelectronics N.V., and Freescale Semiconductor, Inc. (collectively “Respondents”) alleging violation of Section 337 in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain semiconductor chips with minimized chip package size or products containing same by reason of infringement of certain claims of U.S. Patent Nos. 5,852,326 and 6,433,419.  On May 20, 2009, the Commission issued its final disposition of the investigation, finding a violation of Section 337 and issuing a limited exclusion order against the Respondents and cease and desist orders against several domestic Respondents.  See our May 22, 2009 and June 11, 2009 posts for more details.  On October 16, 2009, Tessera filed a motion for forfeiture of Respondents’ bonds, limited discovery, and an evidentiary hearing pursuant to Commission Rule 210.50(d).  On December 20, 2009, ALJ Essex issued the ID denying the motion as premature in light of the pending appeal of the Commission’s final determination to the Federal Circuit.

In the January 22 notice, the Commission determined “not to review the subject ID” and further determined that “Tessera may re-file its motion for forfeiture of bonds, if appropriate, after the conclusion of the pending appeal.”