On December 1, 2011, Freescale Semiconductor, Inc. of Austin, Texas (“Freescale”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.
The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain integrated circuits, integrated circuit chipsets, and products containing same, including televisions, that infringe one or more claims of U.S. Patent No. 5,467,455 (the ‘455 patent):
- MediaTek Inc. of Taiwan (“MediaTek”)
- Zoran Corporation of Sunnyvale, California (“Zoran”)
- Vizio, Inc. of Irvine, California
- Sanyo Electric Co., Ltd. of Japan
- Sanyo North America Corporation of San Diego, California
- Sanyo Manufacturing Corporation of Forrest City, Arkansas
- TPV Technology Limited of Hong Kong
- TPV International (USA) Inc. of Austin, Texas
- Top Victory Electronics (Taiwan) Co., Ltd. of Taiwan
- Top Victory Electronics (Fujian) Co., Ltd. of China
- AOC International (USA) Ltd. of Fremont, California
- Envision Peripherals, Inc. of Fremont, California
- Amtran Technology Co., Ltd. of Taiwan
- Amtran Logistics, Inc. of Irvine, California
According to the complaint, the ‘455 patent generally relates to on-die termination circuitry of integrated circuit technology. In particular, the ‘455 patent describes circuitry designed to reduce unwanted signal reflection on a bi-directional communication bus between two integrated circuits. The complaint states that the system and method described in the ‘455 patent permit disabling the termination circuitry on one of the integrated circuits when data is not being received from the communication bus. The selective enabling and disabling of the termination circuitry allows the system to reduce unwanted signal reflection, which also typically conserves power.
In the complaint, Freescale states that the Proposed Respondents import and sell products that infringe the ‘455 patent. The complaint specifically identifies a number of allegedly infringing products associated with the various Proposed Respondents.
Regarding domestic industry, Freescale states that it has engaged in the significant employment of labor and capital and/or made substantial investments in engineering, research and development, and/or licensing with respect to the ‘455 patent. Freescale cites to former Chief ALJ Paul J. Luckern’s Order No. 33 in Inv. No. 337-TA-709, which found that Freescale has made a substantial investment in licensing its patents, including the ‘455 patent, within the U.S. See our April 21, 2011 post for more details. Freescale further states that it has at least 22 employees supporting Freescale’s patent licensing activities in the U.S., and that it “has invested substantial sums in enforcement actions of its patents, including the ‘455 patent, resulting in royalty bearing licenses.”
As to related litigation, Freescale states that on December 7, 2006, it filed an infringement suit against ProMOS Technologies in the U.S. District Court for the Eastern District of Texas, alleging infringement of, inter alia, the ‘455 patent. Freescale states that this case settled and was dismissed. Additionally, Freescale refers to Inv. No. 337-TA-656 at the ITC, where it alleged that LSI Corporation (“LSI”) violated Section 337 in connection with the alleged infringement of, inter alia, the ‘455 patent. Freescale states that this investigation was terminated due to a settlement agreement. Freescale also refers to a district court action against LSI in the U.S. District Court for the Eastern District of Texas, which also settled. Freescale additionally refers to Inv. No. 337-TA-709, in which it alleged that various Respondents infringed, inter alia, the ‘455 patent. ALJ Luckern found no violation of Section 337 in that investigation, and the Commission declined review. See our May 20, 2011 post for more details. Freescale also states that on March 1, 2010, it filed an infringement suit against Funai Corporation, Inc. and Funai Electric Co., Ltd. (collectively, “Funai”) in the U.S. District Court for the Western District of Texas. Freescale further states that the ‘455 patent was the subject of reexamination, but that the U.S. Patent and Trademark Office confirmed the patentability of all claims on November 16, 2011. Freescale additionally states that on June 8, 2011, it filed suit in the U.S. District Court for the Western District of Texas against, inter alia, Zoran and Mediatek, alleging infringement of the ‘455 patent. Freescale additionally states that, also on June 8, 2011, it filed a complaint at the ITC naming Funai, MediaTek, and Zoran as Respondents. The Commission instituted an investigation (Inv. No. 337-TA-786) based on that complaint on July 11, 2011. See our July 11, 2011 post for more details. On August 29, 2011, ALJ Robert K. Rogers, Jr. issued an ID granting-in-part Respondents’ motion for summary determination that Freescale’s claims against Funai are precluded based on the final determination in the 709 investigation. On October 13, 2011, the ITC decided to review the ID in part. See our October 14, 2011 post for more details. In the instant complaint, Freescale argues that unlike certain Funai products that were at issue in the 786 investigation, the accused products in the instant ITC complaint were not at issue in the 709 investigation, and therefore Freescale’s instant infringement claims are not precluded. Lastly, Freescale states that on August 16, 2011, it filed an infringement suit in the U.S. District Court for the Western District of Texas against various entities—including all of the Proposed Respondents listed in the instant ITC complaint other than Zoran and MediaTek—alleging infringement of the ‘455 patent.
With respect to potential remedy, Freescale requests that the Commission issue a permanent exclusion order and permanent cease and desist orders directed at the Proposed Respondents, their affiliates, and others acting on their behalf.