By Eric Schweibenz
On June 23, 2010, STC.UNM of Albuquerque, New Mexico (“STC”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

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.