Further to our October 30 post, on November 20, 2009, ALJ Charles E. Bullock issued the public version of the Supplemental Initial Determination (“Supplemental ID”) in connection with remand proceedings in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501).

By way of background, the Complainant in this investigation is Amkor Technology, Inc. and the Respondents are Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively “Carsem”).  On November 9, 2005, ALJ Bullock issued a Remand Initial Determination, 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) no violation of Section 337 had occurred in connection with U.S. Patent No. 6,630,728 (the ‘728 patent) and U.S. Patent No. 6,455,356 (the ‘356 patent).  In particular, ALJ Bullock found that certain of Carsem’s accused products infringe valid claims 2, 3, 21 and 22 of the ‘277 patent.

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 non-party ASAT.  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 Initial Determination as appropriate, in light of the supplemental evidence, making all necessary findings concerning Carsem’s invalidity defenses for which the subpoena was obtained.  At a September 10-11, 2009 hearing, Carsem’s invalidity arguments were limited to 35 U.S.C. § 102(g) and 35 U.S.C. § 103(a).  Accordingly, the Supplemental ID is confined to Carsem’s anticipation and obviousness arguments under 35 U.S.C. § 102(g) and 35 U.S.C. § 103(a), respectively.

Carsem argued that an ASAT invention was entitled to a date of invention prior to the ‘277, ‘728 and ‘356 patents, but ALJ Bullock determined that Carsem failed to prove by clear and convincing evidence that the date of the ASAT invention is prior to the date of invention accorded the asserted claims of the patents-in-suit.  In other words, ALJ Bullock found that Carsem failed to prove that the ASAT invention is prior art against the patents-in-suit, a fact that proved fatal to Carsem’s invalidity arguments.

According to the Supplemental ID, ALJ Bullock reaffirmed that (1) there was a violation of Section 337 in connection with U.S. Patent No. 6,433,277 (the ‘277 patent); and (2) no violation of Section 337 had occurred in connection with U.S. Patent No. 6,630,728 (the ‘728 patent) and U.S. Patent No. 6,455,356 (the ‘356 patent).  In particular, ALJ Bullock determined in the Supplemental ID that (1) certain claims of the ‘277 patent are not invalid under 35 U.S.C. § 102(g) and 35 U.S.C. § 103(a); (2) certain claims of the ‘728 patent are not invalid under 35 U.S.C. § 102(g) and 35 U.S.C. § 103(a); and (3) certain claims of the ‘356 patent are not invalid under 35 U.S.C. § 103(a).