ALJ Bullock Issues Public Version Of Remand Initial Determination On Validity And Enforceability In Certain Static Random Access Memories (337-TA-792)

Further to our February 27, 2013 post, on March 15, 2013, Chief ALJ Charles E. Bullock issued the public version of the Remand Initial Determination (“RID”) (dated February 25, 2013) in Certain Static Random Access Memories and Products Containing Same (Inv. No. 337-TA-792). 

By way of background, the Complainant in this matter is Cypress Semiconductor Corporation (“Cypress”) and the remaining Respondents are GSI Technology, Inc. (“GSI”), Cisco Systems, Inc. (“Cisco”); and Avnet, Inc. (“Avnet”) (collectively, “Respondents”).  The patents at issue in the investigation are U.S. Patent Nos. 6,651,134 (the ‘134 patent); 6,262,937 (the ‘937 patent); 7,142,477 (the ‘477 patent); and 6,534,805 (the ‘805 patent).  See our July 26, 2011 post for more information about this investigation.

In his October 25, 2012 Initial Determination (“ID”), ALJ Bullock found that the Respondents’ accused products do not infringe any of the asserted patents.  The ALJ also determined that Cypress failed to meet the technical prong of the domestic industry requirement for any of the asserted patents.  In light of these findings, the ALJ declined to make any findings regarding validity or enforcement of the patents in the interests of judicial economy.  See our December 21, 2012 post for additional details.

As explained in our December 28, 2012 post, the International Trade Commission (“the Commission”) remanded the investigation to the ALJ to consider the parties’ invalidity and unenforceability arguments and make appropriate findings.  We now provide the details of those additional findings.

Invalidity

According to the RID, Respondents argued that the ‘134 patent was invalid as anticipated by each of three references.  For each reference, ALJ Bullock found that Respondents had failed to prove anticipation by clear and convincing evidence.  Specifically, the ALJ noted that Respondents failed to clearly set forth how each and every limitation of the asserted claims was met by the references, and that conclusory statements supported by string cites were “nothing more than an improper attempt to circumvent the page limitations for post-hearing briefs.”

Respondents also argued that the ‘937 patent was invalid as anticipated by two references or obvious over a combination of references (including the primary anticipatory reference).  Again, ALJ Bullock determined that Respondents had failed to clearly set forth how the references met every limitation of the claims.  ALJ Bullock specifically noted that Respondents failed to explain how the noted features of the primary reference achieved the same function as the key limitation of the asserted claims, explaining that conclusory statements and string cites are insufficient to meet Respondents’ burden of proving invalidity.

ALJ Bullock dismissed Respondents’ anticipation and obviousness arguments directed against the ‘477 patent for the same reasons, noting that Respondents focused on “discrediting Cypress’s criticisms” rather than proving invalidity.
Respondents also argued that the ‘805 patent was anticipated by three different references.  ALJ Bullock dismissed arguments based on the the first and second references, determining that the references did not show a “substantially oblong active region.”  The ALJ noted that although the figures of the references illustrated rectangular elements, they are not substantially oblong.  Furthermore, ALJ Bullock found that there was nothing in the references to indicate that the drawings were made to scale or defined the precise proportions of the elements.  The arguments regarding the third reference were discussed at length, and ALJ Bullock finally determined that at least two elements from the asserted claims were absent from the reference.

As such, each of the four patents was determined to be valid.

Unenforceability

According to the RID, Respondents argued that the ‘477 patent is unenforceable due to inequitable conduct based on Cypress allegedly withholding material prior art during prosecution.  The ALJ dismissed Respondents’ argument for failing to prove that the allegedly withheld evidence was material as it would not have anticipated the claims of the ‘477 patent, and for failing to prove that Cypress acted with deceptive intent.

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