By Eric Schweibenz
On April 29, 2014, Spansion LLC of Sunnyvale, California (“Spansion”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain non-volatile memory chips and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,246,611 (the ‘611 patent), 6,744,666 (the ‘666 patent), 6,399,446 (the ‘446 patent), and 6,436,766 (the ‘766 patent) (collectively, the “asserted patents”):

  • Macronix International Co., Ltd. of Taiwan

  • Macronix America, Inc. of Milpitas, California

  • Macronix Asia Ltd. of Japan

  • Macronix (Hong Kong) Co., Ltd. of Hong Kong

  • Acer Inc. of Taiwan

  • Acer America Corp. of San Jose, California

  • ADT Corp. of Boca Raton, Florida

  • Amazon.com, Inc. of Seattle, Washington

  • ASRock Inc. of Taiwan

  • ASRock America, Inc. of Chino, California

  • ASUSTek Computer Inc. of Taiwan

  • Asus Computer International of Fremont, California

  • Belkin International, Inc. of Playa Vista, California

  • D-Link Corp. of Taiwan

  • Leap Motion, Inc. of San Francisco, California

  • Lowe’s Companies, Inc. of Mooresville, North Carolina

  • Lowe’s Home Centers, Inc. of Wilkesboro, North Carolina

  • Microsoft Corp. of Redmond, Washington

  • Nintendo Co., Ltd. of Japan

  • Nintendo of America, Inc. of Redmond, Washington

  • Sercomm Corp. of Taiwan

  • Vonage Holdings Corp. of Holmdel, New Jersey

  • Vonage America Inc. of Holmdel, New Jersey

  • Vonage Marketing LLC of Holmdel, New Jersey

According to the complaint, the asserted patents generally relate to non-volatile memory technology.  In particular, the ‘611 patent relates to a system for erasing non-volatile memory cells by periodically checking to see whether certain memory cells have been successfully erased, and applying an increased erase voltage upon verifying that the previous erase voltage did not successfully erase the memory cell.  The ‘666 patent relates to reducing the programming time of a page mode memory device.  Lastly, the ‘446 and ‘766 patents relate to a process for fabricating a memory cell that includes depositing and patterning a hard mask, and using the hard mask to implant different ions in the semiconductor.

In the complaint, Spansion states that the Proposed Respondents import and sell products that infringe the asserted patents.  Spansion specifically names certain non-volatile memory chips manufactured and sold by the Macronix entities as infringing products.  Spansion also names various downstream products containing the Macronix memory chips as infringing products.

Regarding domestic industry, Spansion states that it has made significant investments in plant, equipment, labor, and capital in the U.S. relating to products that are, or will be, covered by the ‘666, ‘446, and ‘766 patents.  Spansion further states that it has made substantial and ongoing domestic investments in research and development and engineering dedicated to the exploitation of the ‘666, ‘446, and ‘766 patents.  In addition, Spansion states that an industry is currently in the process of being established in the U.S. with respect to the ‘611 patent.  Spansion specifically refers to its facility in Austin, Texas, where it manufactures and tests wafers used to make chips covered by the asserted patents.

As to related litigation, Spansion states that on April 28, 2014, it filed a complaint against the Proposed Respondents in the U.S. District Court for the Northern District of California alleging infringement of the asserted patents.  Spansion also refers to additional patent litigation between itself and the Macronix entities (not involving the asserted patents) in the U.S. District Court for the Northern District of California and the ITC (Inv. Nos. 337-TA-893 and 337-TA-909).  See our September 9, 2013 and January 30, 2014 posts for more details on these investigations.

With respect to potential remedy, Spansion requests that the Commission issue a general exclusion order, a limited exclusion order, and cease and desist orders directed at the Proposed Respondents.  Spansion states that a general exclusion order is warranted because a limited exclusion order could be circumvented, there is a pattern of violation of Section 337, and it is difficult to identify the source of infringing downstream products.