On December 29, 2009, the International Trade Commission issued a notice determining that there has been no violation of Section 337 in Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-630).

By way of background, this investigation was instituted on January 14, 2008, based on the complaint of Tessera, Inc. of San Jose, California.  Eighteen respondents were named in the complaint, and several of the named respondents either settled out of the investigation or defaulted.  According to the December 29 notice, the following Respondents remained in the investigation:  Acer, Inc., Acer America Corporation, Nanya Technology Corporation, Nanya Technology Corporation U.S.A., Powerchip Semiconductor Corporation, Elpida Memory, Inc., Elpida Memory (USA), Inc., ProMOS Technologies, Inc., Kingston Technology Co., Inc., Ramaxel Technology Ltd., Centon Electronics, Inc., and SMART Modular Technologies, Inc.  On August 28, 2009, ALJ Theodore R. Essex issued his initial determination (“ID”), finding no violation of Section 337 had occurred based on the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain semiconductor chips with minimized chip package size and products containing same in connection with certain claims of U.S. Patent No. 5,663,106 (the ‘106 patent), U.S. Patent No. 5,679,977 (the ‘977 patent), and U.S. Patent No. 6,133,627.  Further, ALJ Essex determined that a domestic industry exists that practices the patents-in-suit.  See our September 1 and October 1 posts for more details.  On October 30, 2009, the Commission issued a notice determining to review in part the ID.  See our November 2 post for more details.

According to the December 29 notice, the Commission determined to: “(1) modify the ALJ’s construction of the claim terms ‘top layer’ and ‘thereon’ recited in claim 1 of the ‘106 patent; (2) reverse the ALJ’s finding that the accused μBGA products do not meet all of the limitations of the asserted claims of the ‘106 patent but affirm his finding that there is no infringement due to patent exhaustion; (3) affirm the ALJ’s finding that the accused wBGA products do not infringe the asserted claims of the ‘106 patent; (4) affirm the ALJ’s validity and domestic industry analyses pertaining to the asserted claims of the ‘106 patent; (5) affirm the ALJ’s finding that the Direct Loading testing methodology employed by Tessera’s expert fails to prove infringement; and (6) affirm the ALJ’s finding that the 1989 Motorola OMPAC 68-pin chip package fails to anticipate claims 17 and 18 of the ‘977 patent under the on-sale bar provision of 35 U.S.C. § 102(b), but modify a portion of the ID.”

Finally, the Commission determined that there has been no violation of Section 337 and terminated the investigation.