By Eric Schweibenz
On February 25, 2010, ALJ Robert K. Rogers, Jr. issued the public version of the 629 page Initial Determination On Violation of Section 337 and Recommended Determination on Remedy and Bond (“ID”) (dated October 14, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (Inv. No. 337-TA-665).  Due to its large size, the ID has been broken into two parts: Part 1 and Part 2.

By way of background, the Complainant in this investigation is Qimonda AG (“Qimonda”) and the Respondents are LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings, Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, and Seagate (US) LLC (collectively, “Respondents”).

ALJ Rogers issued the ID in this investigation on October 14, 2009, finding no violation of Section 337 in the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain semiconductor integrated circuits and products containing same in connection with United States Patent Nos. 5,213,670 (“the ‘670 patent”), 5,646,434 (“the ‘434 patent”), 5,851,899 (“the ‘899 patent”), and 6,495,918 (“the ‘918 patent”).  In addition, ALJ Rogers determined that certain claims of the ‘918 and ‘434 patents were invalid, while the ‘670 and ‘899 patents are valid and enforceable.  Finally, ALJ Rogers determined that no industries existed in the United States for any of the patents-in-suit.

The asserted patents relate to semiconductor devices and methods of manufacturing the same.  The accused products included certain LSI semiconductor integrated circuits and Seagate’s hard disk drives.


In the ID, ALJ Rogers determined that Qimonda had standing to pursue the investigation based upon its ownership of the patents-in-suit.  In particular, ALJ Rogers rejected Respondents’ argument that German insolvency proceedings “resulted in the dissolution of Qimonda as a corporation and loss of control of its assets,” and noted that “[t]here was no evidence, or even assertion, that ownership of the patents-in-suit has been transferred from Qimonda to another person or entity.”

Claim Construction

Regarding the ‘670 patent, ALJ Rogers construed four claim terms. 

  • First, the claim term “amorphous silicon layer” was construed to mean “a silicon layer lacking a crystalline or polycrystalline structure.” 

  • Second, the claim term “substrate” was construed to mean “the supporting material on which an integrated circuit is fabricated or to which an integrated circuit is attached.”

  • Third, the claim term “depositing an amorphous silicon layer” was construed to mean “depositing a layer of silicon under conditions that result in the silicon layer having amorphous structure.” 

  • Fourth, the claim term “a polycrystalline layer having a defined grain size and texture” was construed to mean “a layer of semiconductor material in polycrystalline form with clearly characterized or delimited grain size and texture.”

Regarding the ‘434 patent, ALJ Rogers construed five claim terms. 

  • First, claim terms “first supply line” and “second supply line” were construed to mean “conductor track that carries a supply potential.” 

  • Second, the claim term “electrically conductively connected” was construed to mean “connected to allow the passage of electricity.” 

  • Third, the claim term “protective element” was construed to mean “a circuit element for protecting against electrostatic discharge.” 

  • Fourth, the claim term “immediate spatial vicinity” was construed to mean “connected to the connecting line at a point in the connecting line that corresponds to the portion of the first supply line that is between (1) the connection of the first and second supply lines; and (2) the connection of the semiconductor function element to the first supply line.”

Regarding the ‘899 patent, ALJ Rogers construed five terms. 

  • First, the claim term “HDP-CVD insulating material of silicon oxide” was construed to mean “an insulating material of silicon oxide deposited using a high density plasma-enhanced chemical vapor deposition process.” 

  • Second, the claim term “removing the exposed portion of the insulating material over the active regions” was construed to mean “removing the insulating material from those areas not covered by the photoresist layer to expose the surface of the semiconductor substrate.” 

  • Third, the claim term “leaving unexposed portions of the insulating materials” was construed to mean “leaving insulated material protected by the photoresist mask.”

  • Fourth, the claim term “inverse active area mask” was construed to mean “a mask that is negative of the mask used to create the active areas.” 

  • Fifth, the claim term “biased so that the mask layer after patterning covers the non-active regions and at least a portion of the active regions” was construed to mean “dimensionally adjusted so that the mask layer after patterning covers the non-active regions and at least a portion of the active regions.”

Regarding the ‘918 patent, ALJ Rogers construed three terms. 

  • First, the claim term “at least two first contacts connected to the substrate and to the first conductive line” was construed to mean “a direct physical connection between the first contacts and the substrate, and a direct physical connection between the first contacts and the first conductive line.” 

  • Second, the claim term “crack stop structure” was construed to mean “structure for reducing crack propagation.” 

  • Third, the claim term “the first metal line” was construed to mean “the first conductive line.”

Domestic Industry

Although ALJ Rogers found that Qimonda satisfied the economic prong requirement by maintaining “significant investment in plant equipment and significant employment of labor, related to maintaining its Richmond [fabrication facilities] in warm idle status,” he nevertheless determined that Qimonda did not prove that “an industry, relating to articles protected by any of the asserted patents, exists or is being established in the United States,” because Qimonda failed to demonstrate “that it practices one claim of a valid patent pursuant to the technical prong requirement.”


ALJ Rogers found the ‘434 and ‘918 patents invalid on various grounds, but found the ‘670 and ‘899 patents valid.  In particular, asserted claims 1-3 and 5 of the ‘434 patent were found to be anticipated by the Maloney reference under 35 U.S.C. § 102, and claims 2 and 3, if not anticipated by the Maloney reference, were otherwise found to be obvious in view of Maloney in combination with the Ito reference under 35 U.S.C. § 103.  The asserted claims of the ‘918 patent were found anticipated by both the Nye and Shinogi references under 35 U.S.C. § 102.  Regarding the ‘670 and ‘899 patents, ALJ Rogers found that the asserted claims of these patents were not anticipated by any of the prior art introduced by the Respondents, and further that the asserted claims of the ‘899 were not rendered obvious, because Respondents failed to include their arguments regarding obviousness in their pre-hearing brief and statement.


The details of the infringement analysis are largely redacted from the public version of the ID.  However, as we noted in our October 19, 2009 post, ALJ Rogers determined that none of the accused products literally infringed the ‘670, ‘434 and ‘899 patents, and also determined that while certain claims the ‘918 patent were literally infringed by certain products of Respondent LSI, no industry exists in the U.S. that exploits the ‘918 patent (or any of the asserted patents), as required by 19 U.S.C. § 1337(a)(2).

Remedy and Bond

With respect to remedy, ALJ Rogers recommended that if the Commission reversed his initial determination and found a violation of Section 337, it should issue a limited exclusion order directed to “any products manufactured by or on behalf of [Respondents] which contain a semiconductor integrated circuit found to infringe the asserted Qimonda patents.”  Additionally, ALJ Rogers determined that Respondents maintained a commercially significant inventory of allegedly infringing products in the United States, and accordingly, a cease and desist order directed to Respondents would also be appropriate if the Commission were to find a violation of Section 337.  Finally, ALJ Rogers recommended, if necessary, “no bond during the Presidential review period” and “that any remedy issued by the Commission include a quarterly reporting requirement to ensure Qimonda still meets the domestic industry requirement.”