On May 28, 2009, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 20 (dated April 13, 2009) and Order No. 31 (dated May 4, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (Inv. No. 337-TA-665).  In Order No. 20, ALJ Rogers granted-in-part and denied-in-part respondents LSI Corp., Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corp., Seagate Technologies International (Singapore), and Seagate (US) LLC’s (collectively “Respondents”) motion to preclude complainant Qimonda AG (“Qimonda”) from relying on licensees or licenses to establish standing or meet the domestic industry requirement.  Subsequently, in Order No. 31, ALJ Rogers granted-in-part and denied-in-part Qimonda’s motion to amend its complaint.

As to Order No. 20, Respondents argued that Qimonda had failed to comply with Commission Rules 210.12(a)(9)(iii)-(iv) and thus should be precluded from relying on any licensees or license agreements to show standing or meet the domestic industry requirement.  Rule 210.12(a)(9)(iii) requires that a 337 complaint include “[t]he identification of each licensee under each involved U.S. patent.”  Rule 210.12(a)(9)(iv) requires that the complaint include “[a] copy of each license agreement (if any) for each involved U.S. patent that complainant relies upon to establish its standing or to support its contention that a domestic industry…exists…”  Respondents argued that (1) Qimonda merely provided a list of companies that “may” be parties to licensing agreements that cover the asserted patents, and (2) Qimonda had not attached a single license agreement to its complaint.

Qimonda responded that its list of licensees was sufficient to comply with Rule 210.12(a)(9)(iii).  As to Rule 210.12(a)(9)(iv), Qimonda stated that it was the valid owner of the asserted patents and therefore did not intend to rely on any licenses to show standing.  However, with respect to domestic industry, Qimonda explained that although it had not intended to rely on licenses to show domestic industry at the time it filed the complaint, it had later been required to idle its domestic manufacturing operations due to bankruptcy, and therefore now sought to rely at least in part on its licensing activities to meet the domestic industry requirement.  Qimonda argued that Respondents would not be prejudiced because they had already received the licenses during discovery.

ALJ Rogers found that Qimonda had met the requirement of Rule 210.12(a)(9)(iii) but had failed to meet the requirement of Rule 210.12(a)(9)(iv).  Nevertheless, ALJ Rogers decided that, “based on the facts and procedural history of this matter, it is reasonable and proper to provide Qimonda with a limited opportunity to correct its procedural error.”  Accordingly, ALJ Rogers issued Order No. 20, giving Qimonda 7 days to amend its complaint to include the licenses required by Rule 210.12(a)(9)(iv), as long as the attached licenses had already been produced to Respondents during discovery and listed in accordance with Rule 210.12(a)(9)(iii) in the original complaint.

Three weeks later, ALJ Rogers issued Order No. 31.  According to Order No. 31, Qimonda had complied with Order No. 20 and filed an amended complaint.  However, Qimonda had also filed a motion for leave to further amend its complaint to (1) add an additional license that had not been listed in the original complaint in accordance with Rule 210.12(a)(9)(iii) and (2) to remove Seagate Technologies International (Singapore) from the investigation because it had discovered during discovery that Seagate Technologies International (Singapore) did not actually exist.

Qimonda argued that there was good cause to add the additional license because the license in question had not been finalized until November 26, 2008, which was after the filing of the original complaint on November 20, 2008 and therefore could not have been included in the original complaint.  Respondents countered that Qimonda’s attempt to add the additional license violated the clear terms of Order No. 20, and that in any event the attempt to add the new license was not timely because Qimonda could have moved to amend its list of licenses shortly after the new license was finalized on November 26, 2008, and was not justified in waiting until after ALJ Rogers issued Order No. 20 on April 13, 2009.  ALJ Rogers agreed with Respondents’ arguments and denied the portion of Qimonda’s motion that dealt with adding the additional license.  However, ALJ Rogers granted Qimonda’s request to remove Seagate Technologies International (Singapore) from the investigation.