On April 29, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review an Initial Determination (“ID”) issued by ALJ Carl C. Charneski on February 28, 2011 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685).

By way of background, the Complainant in this investigation is Samsung Electronics, Co., Ltd. (“Samsung”) and the Respondents are Spansion, Inc. and Spansion LLC and D-Link Corp. and D-Link Systems, Inc. (collectively, “Respondents”).  In the ID, ALJ Charneski determined there is a violation of Section 337, and more specifically determined that (i) Respondents’ accused products infringe asserted claims 8 and 12 of U.S. Patent No. 5,740,065 (the ’065 patent); (ii) Respondents did not show by clear and convincing evidence that any claim of the ‘065 patent is invalid due to anticipation, indefiniteness, or lack or written description; and (iii) Samsung satisfied the domestic industry requirement with respect to the ‘065 patent.  See our April 1, 2011 post for more details.

According to the April 29 notice, Respondents and the Commission Investigative Staff each filed petitions on March 14, 2011, for review of the ALJ’s findings on claim construction, infringement, invalidity, and domestic industry.   On March 22, 2011, Samsung filed responses to the petitions.

After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the following aspects of the ID: (1) the construction of the term “extracting an optimal working condition by accumulatively averaging working conditions of lots previously processed” of claim 8 of the ‘065 patent; (2) the finding that Spansion’s accused run-to-run alignment and exposure controllers infringe claims 8 and 12 of the ‘065 patent; (3) that Japanese Unexamined Patent Application Publication H5-47893, entitled “Adjustment Method for Semiconductor Manufacturing Apparatus” does not anticipate claim 8 of the ‘065 patent; (4) that claim 8 is not invalid for failing to satisfy the written description requirement; (5) that claims 1, 8, and 12 of the ‘065 patent are not invalid as indefinite; and (6) that Samsung’s Exposure Parameter Optimization System practices claim 1 of the ‘065 patent.

The notice further requested the parties to submit briefing on the issues under review and on remedy, the public interest, and bonding.  The notice also stated that the Commission is particularly interested in responses to the following questions:

1.  Please address whether it is appropriate to apply a plain, ordinary meaning analysis in construing the claim term “accumulatively averaging” even though this term is admittedly a “coined term.” In discussing this issue, please address the following questions: 

  • If an ordinary meaning analysis of “accumulatively averaging” is appropriate, does the experts’ testimony concerning the understanding of one of ordinary skill in the art in any way conflict with the meaning of the claim language as informed by the intrinsic evidence? 

  • If an ordinary meaning analysis is appropriate, what is the definition of the word “accumulatively” and how does the meaning of the word “accumulatively” affect the correct construction of “accumulatively averaging?” 

  • If an ordinary meaning analysis is appropriate, how does the definition of “accumulatively” fit into the context of the purpose of the ‘065 invention in terms of effective automatic process control? 

  • If “accumulatively averaging” should be construed according to its ordinary meaning, how would such an analysis affect the validity of claim 1?

2.  Please address Samsung’s expert, Dr. Watts’ admission that, under Samsung’s broad interpretation of “accumulatively averaging” as encompassing all types of averaging, the limitation could read on averaging operations that are not useful for the process control procedure disclosed in the ’065 patent. See Watts, Tr. 861:16 - 862:3.

3.  With respect to the claim construction of the “working conditions” limitation, please address the following questions:

  • Should the “process parameter values” recited in claim 11 be read into claim 8?

  • How does the meaning of the phrase “according to” in col. 5, ln. 46 of the ‘065 specification inform the interpretation of the phrase “based on” recited in claim 8?

  • Are there any specific examples available from the evidence of record that may shed light on when a process parameter variable that is not specifically a machine setting may be used in a semiconductor manufacturing process as disclosed in the ‘065 patent?  In considering this question, please also address how such a parameter might then be converted to the proper units or axis for a particular piece of processing equipment.

4.  Please address in depth whether the particular type of averaging used in Spansion’s accused process satisfies the “accumulative1y averaging” limitation under the doctrine of equivalents.

5.  Please address whether claim 8 satisfies the written description requirement if the claim limitation “extracting an optimal working condition by accumulatively averaging” is limited to Equation (1) disclosed in the ‘065 patent, where Equation (1) may represent to one of ordinary skill in the art a moving average or a weighted or unweighted average.

6.  Please address whether claims 1, 8, and 12 of the ‘065 patent are indefinite if the “accumulatively averaging” limitation is construed to include a moving average or a weighted or unweighted average.

Written submissions are due by May 16, 2011, with reply submissions due by May 23, 2011.