By Eric Schweibenz
On October 22, 2010, ALJ Charles E. Bullock issued a notice regarding the Initial Determination and Recommended Determination on Remedy and Bond (“ID”) in Certain Flash Memory Chips and Products Containing Same (Inv. No. 337-TA-664).

The Complainants in this investigation are Spansion, Inc. and Spansion LLP (collectively, “Spansion”).  The Respondents are Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung International Inc., Samsung Semiconductor, Inc., Samsung Telecommunications America, LLC (collectively, “Samsung”), Shanghai Lenovo Electronic Co. Ltd., Asustek Computer Inc., Asus Computer International Inc., Apple, Inc. (“Apple”), Transcend Information Inc., Transcend Information, Inc. (US), Transcend Information Inc. (Shanghai Factory), Kingston Technology Company, Inc., Kingston Technology (Shanghai) Co. Ltd., Kingston Technology Far East Co., Kingston Technology Far East (Malaysia), PNY Technologies, Inc., Sony Corporation, Sony Corporation of America, Sony Ericsson Mobile Communications AB NYA Vattentornet, Sony Ericsson Mobile Communications (USA), Inc. Beijing Se Putian Mobile Communications Co., Hon Hai Precision Industry Co., Ltd., Verbatim Americas LLC, Verbatim Corp., Research In Motion, Ltd., and Research In Motion Corporation (collectively, “Respondents”).

According to the notice, ALJ Bullock determined that no violation of Section 337 had occurred by the Respondents in this matter.

Specifically, ALJ Bullock found that (1) Respondents’ accused products did not infringe claims 1-8 of U.S. Patent No. 6,376,877 (the ‘877 patent), (2) “Samsung’s accused 63 nm, 51 nm, 42 nm, 32 nm, and 27 nm MLC NAND devices do not infringe claims 13, 15, 18, and 20-22 of U.S. Patent No. 5,715,194”, and (3) “Samsung’s accused 42 nm OneNAND, 42 nm Flex-OneNAND, and 51 nm OneNAND flash memory devices infringe claims 13, 15, 18, and 20-22 of U.S. Patent No. 5,715,194.”

ALJ Bullock also determined that claims 1-8 of the ‘877 patent were valid.  Further, with regard to claims 13, 15-18, and 20-22 of the ‘194 patent, ALJ Bullock found these claims were not invalid under 35 U.S.C. § 103, but were invalid under 35 U.S.C. §102(e).

ALJ Bullock further determined that Apple does not have an express license to the ‘877 and ‘194 patents.  Also, ALJ Bullock held that Spanison was not equitably estopped from asserting the ‘877 and ‘194 patents.

Regarding domestic industry, ALJ Bullock determined that an industry does not exist that practices or exploits, nor was an industry in the process of being established that will practice or exploit, the ‘877 and ‘194 patents.

Lastly, the notice issued by ALJ Bullock released only page one and the conclusions of law from the ID.  We will provide additional information after the public version of the ID issues in its entirety.