By Eric Schweibenz and Alex Englehart
On December 6, 2016, Memory Technologies, LLC of Las Vegas, Nevada (“MTL”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that SanDisk Corp. of Milpitas, California, SanDisk LLC of Milpitas, California, Western Digital Corp. of Irvine, California, Western Digital Technologies, Inc. of Milpitas, California, SanDisk Limited of Japan, San Disk Storage Malaysia Sdn. Bhd. of Malaysia, and SanDisk SemiConductor (Shanghai) Co., Ltd. of China (collectively, “SanDisk”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain flash memory devices and components thereof that infringe MTL’s U.S. Patent Nos. RE45,542 (the ’542 patent), RE45,486 (the ’486 patent), 7,565,469 (the ’469 patent), 9,063,850 (the ’850 patent), and 8,307,180 (the ’180 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to flash memory technology. In particular, the ’542 patent relates to allowing a host device such as a smartphone or camera to control the power consumption of a peripheral device such as an SD or microSD card within ranges defined by the peripheral device using values programmed into the peripheral device. The ’486 patent relates to how to address locations within a memory when the number of memory locations is too large to allow each address to be assigned to a single memory location. The ’469 patent relates to improving the efficiency of communications between a host device and a flash memory device (such as an SD card or microSD card) by enabling a single data line busy signal to convey different meanings at different times. The ’850 patent relates to the configuration of a memory device to suit the access needs of a host system using the memory device. Lastly, the ’180 patent relates to the configuration of a memory device to suit the access needs of a host system using the memory device.

In the complaint, MTL states that SanDisk imports and sells products that infringe the asserted patents. The complaint specifically refers to various SanDisk SD cards and microSD cards as infringing products.

Regarding domestic industry, MTL states that its licensees—including Samsung, Toshiba, and SK Hynix—maintain significant domestic industries in the U.S. relating to products that practice the asserted patents. MTL also states that a domestic industry exists by virtue of MTL’s substantial investments in the exploitation of the asserted patents through its domestic licensing activities. MTL states that it has made substantial domestic investments including, e.g., with respect to employee salaries and benefits, office space, office telecommunication and computer supplies, domestic travel expenses to meet with potential licensees, and market research.

As to related litigation, MTL states that, contemporaneously with the filing of the instant ITC complaint, it is also filing an action against certain of the proposed respondents in the U.S. District Court for the Central District of California, alleging infringement of the asserted patents.

With respect to potential remedy, MTL requests that the Commission issue a permanent limited exclusion order and a permanent cease and desist order directed at SanDisk and related entities.