By Eric SchweibenzOn July 21, 2011, Richtek Technology Corp. of Taiwan and Richtek USA, Inc. of San Jose, California (collectively, “Richtek”) filed an enforcement complaint in Certain DC-DC Controllers and Products Containing the Same (Inv. No. 337-TA-698) against uPI Semiconductor Corp. of Taiwan (“uPI”) and Sapphire Technology Limited of Hong Kong (“Sapphire”) (collectively, the “Proposed Enforcement Respondents”) for alleged violations of consent orders that had been issued by the International Trade Commission (the “Commission”) on August 13, 2010.
By way of background, the Commission instituted the underlying investigation on December 29, 2009 based on Richtek’s complaint of December 2, 2009 and subsequent filings. See our December 30, 2009 post for more details. According to the enforcement complaint, on July 20, 2010 — a week before the scheduled evidentiary hearing in the underlying investigation — the Proposed Enforcement Respondents unilaterally moved to terminate the investigation as to them on the basis of stipulated consent orders. On July 21, 2010, Richtek opposed the Proposed Enforcement Respondents’ motion because the stipulated consent order failed to include customary language requiring not only uPI but also “their affiliated companies, parents, subsidiaries or other related business entities, or their successors or assigns” as well as their “officers, directors, and agents” to abide by the consent order. On July 21, 2010, Chief ALJ Paul J. Luckern issued an Initial Determination (“ID”) granting the Proposed Enforcement Respondents’ motion. On August 13, 2010, the Commission issued a notice determining not to review the ID, and issued consent orders to the Proposed Enforcement Respondents.
According to the enforcement complaint, uPI’s consent order requires it to “not import into the United States, sell for importation into the United States, or sell or offer for sale in the United States after importation, or knowingly aid, abet, encourage, participate in, or induce importation into the United States, the sale for importation into the United States, or the sale, offer for sale, or use in the United States after importation, without the consent or agreement of Richtek, any DC-DC controllers or products containing same which infringe claims 1-11, 26, or 27 of U.S. Patent No. 7,315,190 , claims 29 or 34 of U.S. Patent No. 6,414,470 , or claims 1-3 or 6-9 of U.S. Patent No. 7,132,717 , or which are produced using or which contain Richtek’s asserted trade secrets.” Sapphire’s consent order is substantially similar to uPI’s.
In the enforcement complaint, Richtek alleges that uPi has violated its consent order by continuing to import, offer for sale, or sell for importation DC-DC controllers or products containing the same into the United States that use or contain Richtek’s trade secrets and infringe Richtek’s patents. The enforcement complaint further alleges that uPI has violated the consent order by encouraging customers to purchase products that violate Richtek’s trade secrets and patents after the consent order was issued, by continuing to supply the accused DC-DC controllers, and by participating in the importation of products that violate Richtek’s trade secrets and infringe Richtek’s patents by the design-in of its DC-DC controllers. The enforcement complaint also alleges that Sapphire has violated its consent order by continuing to approve and purchase uPI DC-DC controllers knowing that they use or contain Richtek’s trade secrets and infringe Richtek’s patents, and by continuing to import and sell products containing the accused DC-DC controllers in the United States.
In view of these alleged violations of the Commission’s consent orders, Richtek requests that the Commission institute a formal enforcement proceeding pursuant to 19 C.F.R. § 210.75.
With respect to potential remedy, Richtek requests that the Commission revoke the consent orders and issue a permanent general exclusion order, issue a permanent limited exclusion order, or modify the consent orders so that the Proposed Enforcement Respondents’ affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns as well as their officers, directors, and agents must abide by the consent orders. Richtek further requests that the Commission impose civil penalties for violation of the consent orders, and if necessary, bring a civil action in an appropriate U.S. District Court requesting the imposition of such civil penalties or the issuance of such injunctions as the Commission deems necessary to enforce its orders and protect the public interest. Richtek also requests that the Commission issue permanent cease and desist orders directed at the Proposed Enforcement Respondents, their affiliates, and others acting on their behalf. Lastly, Richtek requests that the Commission impose other remedies and sanctions as are appropriate and within the Commission’s authority, including attorneys’ fees.