By way of background, the Complainant in this investigation is Amkor Technology, Inc. (“Amkor”) and the Respondents are Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively, “Carsem”).  The Commission instituted the investigation on December 19, 2003.  On November 9, 2005, ALJ Bullock issued the Remand ID finding that (1) there was a violation of Section 337 in connection with U.S. Patent No. 6,433,277 (the ‘277 patent); and (2) there was no violation of Section 337 in connection with U.S. Patent Nos. 6,630,728 and 6,455,356.

After ALJ Bullock issued the Remand ID, the investigation was delayed in connection with obtaining certain alleged prior art documents from non-party ASAT, Inc. (“ASAT”).  On July 1, 2008, the U.S. District Court for the District of Columbia granted the Commission’s petition to enforce subpoenas duces tecum and ad testificandum to ASAT in connection with the alleged prior art.  In response, Carsem renewed its motion to remand the investigation and reopen the record to include any new evidence obtained as a result of the enforcement of the subpoenas.

The Commission issued a Remand Order on July 1, 2009, ordering that (1) the investigation be remanded to reopen the record to admit any new evidence obtained as a result of the enforcement of the subpoena duces tecum to ASAT, and (2) the ALJ revise or supplement the Remand ID as appropriate, in light of the supplemental evidence, making all necessary findings concerning Carsem’s invalidity defenses.  On October 30, 2009, ALJ Bullock issued a First Supplemental Initial Determination (“First Supplemental ID”) reaffirming his finding of a violation of Section 337 despite the new evidence obtained from ASAT.  See our November 27, 2009 post for more details.

On February 18, 2010, the Commission issued an order reversing ALJ Bullock’s First Supplemental ID and remanding the investigation to the ALJ to make necessary findings on anticipation and obviousness in view of the Commission’s determination that the ASAT disclosures included additional prior art to Amkor’s asserted patents.  See our February 22, 2010 post for more details.  On March 22, 2010, ALJ Bullock issued the Second Supplemental ID finding no violation of Section 337 due to the anticipation and obviousness of various claims of the asserted patents in view of the ASAT prior art.  See our March 23, 2010 and April 9, 2010 posts for more details.

According to the July 20 notice, Amkor and Carsem filed initial comments seeking review of various portions of the Second Supplemental ID, and all parties filed response comments.

After examining the record of the investigation, including the Remand ID, the Second Supplemental ID, the comments, and the response comments, the Commission determined not to review the findings made in the Remand ID and Second Supplemental ID.  Accordingly, the Commission determined that there has been no violation of Section 337, and terminated the investigation.  Lastly, the notice states that “an opinion supporting the Commission’s determination will be issued.”

By way of background, the Complainant in this investigation is Eastman Kodak Company and the Respondents are Research In Motion, Ltd., Research In Motion Corporation, and Apple Inc. (collectively, “Respondents”).  The Commission instituted the investigation on February 17, 2010.  On April 26, 2010, ALJ Luckern issued an order granting Respondents’ motion requesting a Markman hearing, and a Markman hearing was conducted on May 24–25, 2010.  The ALJ issued the ID construing claim terms on June 22, 2010.  See our July 21, 2010 post for more details.

According to the July 22 notice, the parties each filed petitions for review of various portions of the ID.

After examining the record of the investigation, including the ID and petitions for review, the Commission determined to review the ID in its entirety and to solicit briefing with respect to the issues on review.  The Commission stated that it was “particularly interested in briefing on the question of the legal authority for addressing the issue of claim construction as a matter for summary determination and treating the claim construction ruling as an initial determination under the Commission’s rules of practice and procedure as currently written.”

In this connection, the Commission requested that the parties respond to a hypothetical analysis of Commission Rule 210.18(a) whereby that rule’s restriction on motions for summary determination to “issues to be determined in the investigation” or parts thereof is interpreted so as to exclude claim construction from the universe of questions that can form the subject of a motion for summary determination.  In particular, the Commission stated in its hypothetical analysis that “[c]laim construction may be a necessary underpinning to the resolution of certain issues or elements, and may be part of a summary determination that addresses an issue or element.  On its own, however, claim construction might not be viewed as constituting such an issue or element.”

Written submissions in response to the Commission’s July 22 notice are due on August 5, 2010, with reply submissions due on August 16, 2010.

In the Order, ALJ Luckern set the procedural schedule for the investigation and included provisions for the early exchange of claim construction terms and proposed constructions.  ALJ Luckern did not include a separate Markman hearing in the procedural schedule but indicated that he remains open to considering motions for such a hearing.

In stating his view on whether a Markman hearing should be held, ALJ Luckern quoted extensively from the transcript of the July 12, 2010 preliminary conference in the investigation.  At that conference, ALJ Luckern had explained how he was doubtful as to the value of Markman hearings due to the fact that the Commission has the ability to overturn an ALJ’s claim construction findings at any time during the proceeding.

In particular, ALJ Luckern pointed to his recent initial determination on claim construction in Inv. No. 337-TA-703 (see our July 21, 2010 post for more details) and explained how the Commission’s delay in reviewing that determination could potentially cause some difficulty.  “I think that it would be helpful to know, but I have no idea what the Commission is going to do…And until I know what they are doing, and there has only been one Markman decision that I have issued so far, but the Commission may have good reasons not to do anything about it…And if that is the case, then I really don’t see much value in Markman hearings here, because I can’t see bringing parties here for a hearing, and turning away claims undetermined, and not know what the Commission is going to do.”

The ALJ further explained that “as you all know, this is an administrative procedure type of hearing, and the Commission can make new findings of fact based on the record, and send it back to me, and we could start all over again…And you can imagine what the expenses would be for the parties if we have to have a second evidentiary hearing based on the fact that the Commission would not agree with me.”

Accordingly, ALJ Luckern stated at the preliminary conference that “I am not going to do anything with respect to a Markman hearing.  If the Commission decides something to what I have filed [in the 703 investigation], then I may do it.”  Thus, while the procedural schedule does not currently include a date for a Markman hearing, it appears that ALJ Luckern has not completely foreclosed the possibility of conducting one, particularly if the Commission moves quickly in reviewing his Markman determination in the 703 investigation.

Lastly, according to the Order, the evidentiary hearing in the 720 investigation will commence on March 7, 2011.

According to the Order, Analog argued that Respondents’ rebuttal expert reports were improper because those reports were directed exclusively to the issue of commercial success in connection with Respondents’ invalidity arguments.  Analog took the position that since Analog’s initial expert reports dealt only with infringement and domestic industry, it was improper for Respondents’ experts to address an invalidity issue in their rebuttal expert reports.  According to Analog, Respondents should have addressed all invalidity issues — including secondary considerations of nonobviousness — in their initial expert reports.  In support of its argument, Analog pointed to deposition testimony by Dr. Wallace where Dr. Wallace stated that he had started his commercial success analysis prior to the initial expert report deadline, but that he could not finish in time.

Respondents opposed Analog’s motion, arguing that whether information should go into an initial expert report as opposed to a rebuttal expert report depends on which party bears the burden of proof.  While Respondents bore the burden of proof on invalidity as a whole, they argued that showing commercial success was Analog’s burden, and that therefore it was proper for Respondents to wait and not address commercial success in their initial expert reports.

The Commission Investigative Staff (“OUII”) did not file a timely response to Analog’s motion.  OUII did seek leave to file a response to the motion one day after the due date, but ALJ Rogers denied the motion for leave and did not consider OUII’s proposed response.

ALJ Rogers struck both of Respondents’ rebuttal expert reports, finding that the reports “are not proper rebuttals, because they raise new issues rather than addressing issues raised by Analog’s initial expert reports.”  The ALJ determined that “Respondents’ experts should have addressed all issues of invalidity, including secondary considerations, in their initial expert reports.”  Regardless of the ultimate burden of production with respect to secondary considerations of nonobviousness, “it was Respondents’ responsibility to treat all relevant issues regarding invalidity in their initial expert reports.”

Lastly, with respect to Analog’s request to strike the “errata” to Dr. Wallace’s initial expert report, ALJ Rogers stated that “[t]hat issue was already fully addressed in Order No. 6, and will not be addressed here.”

According to the Order, Analog sought an order compelling Knowles to produce documents and things related to the following categories: “(1) the SOIC8 and DIP packages that Dr. Loeppert developed prior to 2003 that Analog claims are prior art to the asserted patents; (2) Knowles’ interactions with the Institute of Microelectronics (‘IME’); and (3) Mr. Minervini’s and Dr. Loeppert’s participation in the prosecution of the asserted patents.”  Analog argued that Knowles had refused to produce the information based on Knowles’s belief that the information is not relevant to the investigation.

Knowles opposed the motion and denied Analog’s assertion that Knowles was withholding production based on a belief that the requested documents and things were not relevant.  According to the Order, Analog stated unequivocally that it had already produced the requested discovery that was in its possession, custody, or control.  The Commission Investigative Staff did not file a response to Analog’s motion.

ALJ Rogers determined that “in light of Knowles’ unconditional representation that it has produced all discovery responsive to Analog’s requests regarding the categories identified supra, Analog’s motion to compel shall be denied.”

According to the Order, Rambus’s licensing activities are based in Los Altos, California, and allegedly include promoting Rambus technology, negotiating and drafting license agreements, ensuring compliance with those agreements, conducting market analysis, providing licensing and patent strategy, and providing technical licensing support.  The Order states that Rambus has multiple license agreements for its Concurrent Interface Technology and its XDR Technology, each of which includes several of the patents asserted in the investigation.  Rambus argued that it had demonstrated that the asserted patents were highlighted during actual licensing negotiations and, as such, were part of the portfolios ultimately licensed.  Accordingly, Rambus argued that the appropriate nexus exists between its licensing activities and the asserted patents and that it has therefore satisfied the domestic industry requirement.

According to the Order, Respondents opposed Rambus’s motion and argued that (1) Rambus’s dilatory production and poor testimony prevented Respondents from examining Rambus’s evidence of domestic industry and (2) Rambus failed to establish a nexus between its license agreements and the asserted patents.  The Commission Investigative Staff supported Rambus’s motion.

ALJ Essex determined that Rambus has satisfied the domestic industry requirement through its licensing activities in the U.S. and that there is a sufficient nexus between Rambus’s licensing activities and the asserted patents.  Importantly, the ALJ determined that “[t]he fact that other patents may be included in the portfolio does not detract from the fact that the asserted patents are licensed.”  ALJ Essex also rejected Respondents’ argument that Rambus’s dilatory production should prevent him from granting summary determination because “[w]hile it is clear that Respondents would have had more time to review the evidence had Rambus produced it earlier, the fact remains that Rambus did, in fact, produce evidence prior to the close of fact discovery and Respondents have had an opportunity to review the evidence.”

The complaint alleges that Taiwan Semiconductor Manufacturing Company Limited of Taiwan (“TSMC”) and Samsung Electronics Company Limited of South Korea (“Samsung”) unlawfully import into the U.S., sell for importation, and sell within the U.S. after importation certain semiconductor products made by advanced lithography techniques and products containing the same that infringe STC’s U.S. Patent No. 6,042,998 (the ‘998 patent).

According to the complaint, the ‘998 patent generally relates to lithographic methods known as “double patterning” that are used for manufacturing small feature sizes during semiconductor fabrication.  In particular, the patented invention uses two layers of “photoresist” to form features in the same device layer.  The complaint alleges that the combination of spatial frequencies obtained from each layer of developed photoresist layers achieves high spatial frequencies that are not possible with only one layer of resist material.  The high spatial frequencies that are obtained correlate to smaller device features and spaces, in particular to features and spaces smaller than 38nm in dimension.

In the complaint, STC alleges that TSMC and Samsung import and sell semiconductor chips that practice the asserted claims of the ‘998 patent.  In particular, the complaint alleges that TSMC has imported and sold 28nm prototype semiconductor chips to Altera Corporation (“Altera”) and Xilinx, Inc. (“Xilinx”) and that “[b]ecause the prototype and test chips are below 38nm in dimension, the 28nm devices that Altera and Xilinx received in the United States from TSMC necessarily infringe the ‘998 patent.”  The complaint further alleges that Samsung has sold for importation 34nm semiconductor devices, including at least a 34nm NAND flash memory chip found in Apple Inc.’s (“Apple”) iPad.  The complaint states that “[b]ecause the [Samsung] chips are below 38nm in dimension, the Samsung NAND flash devices in the Apple iPad necessarily infringe the ‘998 patent.”

Regarding domestic industry, STC states that the ‘998 patent “is a significant part of STC’s overall intellectual property portfolio,” and that STC “negotiates approximately 28 technology transfer contracts per year.”  STC further states that it has 12 employees “devoted to the licensing of technology on behalf of [the University of New Mexico], including the ‘998 patent.”

Moreover, as to related litigation, STC notes that it brought a patent infringement suit against Toshiba Corporation (“Toshiba”) in the U.S. District Court for the District of New Mexico in March 2009 but that STC dismissed its case against Toshiba in October 2009 after Toshiba licensed the ‘998 patent from STC.  In the complaint, STC claims that the Toshiba litigation was “part of its licensing efforts” and cites the litigation as additional support for its having satisfied the domestic industry requirement.

With respect to potential remedy, STC requests that the Commission issue a permanent exclusion order and permanent cease-and-desist orders directed at TSMC and Samsung.

By way of background, the Complainant in this investigation is Rambus Inc. (“Rambus”) and the Respondents are NVIDIA Corp. (“NVIDIA”); Asustek Computer Inc.; ASUS Computer International, Inc.; BFG Technologies, Inc.; Biostar Microtech (U.S.A.) Corp.; Biostar Microtech International Corp.; Diablotek Inc.; EVGA Corp.; G.B.T. Inc.; Giga-byte Technology Co., Ltd.; Hewlett-Packard Co.; MSI Computer Corp.; Micro-star International Co., Ltd.; Palit Multimedia Inc.; Palit Microsystems Ltd.; Pine Technology Holdings, Ltd.; and Sparkle Computer Co., Ltd (collectively, “Respondents”).  On January 22, 2010, ALJ Theodore R. Essex issued an Initial Determination (“ID”) finding a violation of Section 337 through the importation, sale for importation, or sale within the U.S. after importation of certain semiconductor chips having synchronous dynamic random access memory controllers and products containing same that infringe one or more claims of U.S. Patent Nos. 6,470,405; 6,591,353 and 7,287,109.  The ALJ further found no infringement of the asserted claims of U.S. Patent Nos. 7,177,998 and 7,210,016.  See our May 4, 2010 post for more details.

On March 25, 2010, the Commission issued a notice determining to review the ID in part.  See our March 26, 2010 post for more details.  On May 26, 2010, the Commission issued an additional notice requesting further briefing on the impact of a license between Rambus and Samsung on the ALJ’s finding and conclusions.  In particular, in the May 26 notice, the Commission stated that it “is particularly interested in briefing on the issue of patent exhaustion that Respondents raised in their petition for review and remedy submissions as it relates to the license.”

In the June 22 notice, the Commission notes that it received the additional briefing requested in the May 26 notice, but that in that additional briefing, “no party includes a discussion or citation to Fujifilm Corp. v. Benum [(2009-1487)], which was issued by the United States Court of Appeals for the Federal Circuit on May 27, 2010, which includes a discussion of patent exhaustion.”  Accordingly, the Commission determined “to allow additional briefing to discuss the relevance and effect of the Fujifilm case, if any, on the arguments and analysis provided in the briefing on patent exhaustion.”

The notice states that the briefing shall be limited to a single brief per party, shall be no more than 8 pages in length, and that “[a]ny briefing responsive to this notice shall be submitted by Friday, June 25, 2010.”

By way of background, the Complainants in this investigation are O2 Micro International Ltd. and O2 Micro Inc. (collectively, “O2 Micro”).  The Respondents are Monolithic Power Systems Inc. (“MPS”), ASUSTek Computer Inc. and ASUS Computer International America (collectively, “ASUS”), and Microsemi Corporation (“Microsemi”).  On April 19, 2010, ALJ Gildea issued the ID finding no violation of Section 337 by reason of infringement of the asserted claims of U.S. Patent No. 7,417,382 (the ‘382 patent).  In particular, ALJ Gildea determined, inter alia, that Microsemi’s LX1691 and LX1693 products infringe the asserted claims of the ‘382 patent but that O2 Micro has not satisfied the domestic industry requirement with respect to the ‘382 patent.  See our May 24, 2010 post for more details.

According to the June 18 notice, O2 Micro, MPS and ASUS, Microsemi, and the Commission Investigative Staff (“OUII”) each filed petitions for review of the ID on May 3, 2010.  On May 11, 2010, O2 Micro, MPS and ASUS, Microsemi, and OUII each filed responses to the petitions for review.

After examining the record of the investigation, including the ID, the petitions for review, and the responses to the petitions for review, the Commission determined to review the ID in part.  In particular, the Commission determined to review:  (1) the ID’s findings that Microsemi’s LX1691 and LX1693 products infringe the asserted claims of the ‘382 patent; and (2) the ID’s finding that O2 Micro has not satisfied the domestic industry requirement.

The notice states that upon review, the Commission determined to reverse ALJ Gildea’s findings that the LX1691 and LX1693 products infringe the asserted claims of the ‘382 patent but also to reverse the ALJ’s determination that O2 Micro has not satisfied the domestic industry requirement.  Accordingly, the Commission upheld ALJ Gildea’s ultimate finding of no violation of Section 337 — albeit on modified grounds — and terminated the investigation.  Lastly, the notice states that an “opinion will issue shortly.”

OUII can trace its origins back to the Trade Act of 1974 (the “Trade Act”), which instituted significant changes in the procedures for Section 337 actions.  Prior to the passage of the Trade Act, the provisions of the Administrative Procedure Act (“APA”) did not apply to Section 337 actions, and there was therefore very limited participation by the private parties after institution of an investigation — the Commission investigated complaints directly.  This changed drastically after the enactment of the Trade Act.  The private parties suddenly had substantial new rights to participate directly in Section 337 proceedings.  The problem, however, was that now the Commission could not directly communicate with the private parties ex parte because it was serving as an administrative fact-finder.  To remedy this situation, OUII (originally known as the Unfair Import Investigations Division or “UIID”) was created so as to represent the public interest in the proceeding and help the Commission reach a correct and fully informed determination.

OUII plays a number of critical roles in Section 337 investigations, beginning even before a complaint is filed.  Complainants typically consult with OUII before filing in order to ensure the technical sufficiency of the draft complaint and to improve the likelihood of having the Commission institute an investigation based on the complaint.  During the 30-day period following the filing of the complaint, OUII consults with the Complainant and proposed Respondents and then makes a recommendation to the Commission on whether to institute an investigation.

Once the Commission institutes an investigation, OUII’s primary role is to aid in the creation of a complete record in order to support the public’s interest in a correct and fully-informed decision by the Commission.  To this end, OUII can propound written discovery and participate in depositions just like the private parties.  OUII independently briefs the issues relevant to the public interest and will generally take a position on most of the critical legal issues in the investigation.

After an ALJ issues an Initial Determination, OUII remains an independent third party to the investigation and participates in briefing during review by the Commission.  If the Commission’s Final Determination is appealed to the Federal Circuit, however, it is the job of the Office of the General Counsel to represent the Commission on appeal.  OUII continues to play a role in the enforcement of the Commission’s determination, and participates in any formal enforcement proceedings.