22
May
By Andrew Beverina
On May 20, 2009 the International Trade Commission reversed ALJ Theodore R. Essex’s December 1, 2008 Initial Determination (“ID”) finding no violation of the ‘326 and ‘419 patents in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (337-TA-605) and issued a Notice of Commission Final Determination of Violation of Section 337.  The Commission issued a limited exclusion order against respondents Spansion, Qualcomm, ATI, Motorola, STMicroelectronics-NV, and Freescale, and cease and desist orders against Motorola, Qualcomm, Freescale, and Spansion.

In the ID, ALJ Essex found that the respondents did not infringe the asserted claims of the ‘326 and ‘419 patents; that the patents were not invalid under §§ 102, 103, or 112; and that a domestic industry existed with respect to the patents.  The ALJ issued an RD in which he recommended a limited exclusion order if the Commission determined a violation existed.

On December 15, 2008 Complainant Tessera and the Commission Investigative Staff petitioned for review of the ID, and the Commission decided to review: 1) the ALJ’s finding that Respondents’ accused devices do not infringe the asserted claims the ’326 and ’419 patents; 2) the ALJ’s finding that Tessera had waived any argument that the accused products indirectly infringe the ’419 patent; 3) the ALJ’s finding that Motorola’s OMPAC invention does not anticipate the asserted patents under 35 U.S.C. § 102(b); and 4) the ALJ’s finding that Motorola’s OMPAC invention does not anticipate the asserted patents under 35 U.S.C. § 102(g). After reviewing the record, the Commission reversed the finding of no violation.  In particular, the Commission:

  • Reversed the ALJ’s finding that the Respondents did not infringe asserted claims 1, 2, 6, 12, 16-19, 21, 24-26, and 29 of the ’326 patent and claims 1-11, 14, 15, 19, and 22-24 of the ’419 patent;

  • Reversed the ALJ’s determination that Tessera had waived any argument that the accused products indirectly infringe the ‘419 patent;

  • Found the Respondents had contributorily infringed the ‘419 patent; and

  • Modified the ALJ’s analysis holding the patents were not invalid under 35 U.S.C. § 102(b) to clarify that the statute requires comparing on-sale dates against the priority date of the patents, not the conception date of the asserted patents.


The parties in the 605 investigation also filed written submissions on remedy, the public interest, and bonding, as did several respondents from the co-pending investigation Certain Semiconductor Chips with Minimized Chip Package Size (337-TA-649).  Tessera requested that the Commission issue a “tailored” general exclusion order (“GEO”), or that the Commission issue a limited exclusion order (“LEO") immediately, and hold further proceedings regarding a tailored GEO.  The Staff agreed with Tessera, while the respondents in the 605 investigation and the 649 investigation opposed.

The Commission subsequently requested additional briefing on whether it had the authority to issue a “tailored” GEO “which would ostensibly reach only specified downstream products” and whether it had the authority to issue an LEO immediately and issue a GEO at a later date.  The Notice does not address these issues.  As a remedy, the Commission imposed a limited exclusion order prohibiting the unlicensed entry of infringing semiconductor chips with limited chip package size and products incorporating those chips that are manufactured abroad for all of the respondents, and cease and desist orders to Motorola, Qualcomm, Freescale and Spansion.

The Commission allowed the parties to continue the activities barred by the cease and desist order during the 60 days in which the order is under review by the U.S. Trade Representative, subject to posting a bond of 3.5% of the per unit value of the products.
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