On July 1, 2009, the Commission issued a Notice and Order remanding the investigation to the presiding ALJ and extending the target date in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (337-TA-501).

Complainant Amkor Technology, Inc. accused respondents Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (“Carsem”) of infringing claims of two patents.  The Commission has been unable to complete the investigation due to an ongoing effort to enforce a non-party subpoena. 

The Commission issued a subpoena to non-party ASAT, Inc. for documents Carsem alleged were vital to its defense.  On August 11, 2004 the Commission petitioned the United States District Court for the District of Columbia for enforcement of the subpoena.  ASAT opposed the petition.  The district court granted the petition, but the United States Court of Appeals for the D.C. Circuit reversed.  Eventually, another petition was filed after further fact-finding by the ALJ.  Again, the district court granted the petition.  ASAT appealed, but eventually withdrew the appeal on December 31, 2008.  The appeal was dismissed January 9, 2009.

While the subpoena enforcement issue was being litigated, the underlying case continued.  On November 18, 2004 the ALJ issued a final initial determination finding no violation.  The Commission modified the ALJ’s claim construction and remanded.  On November 9, 2005, the ALJ found a violation with respect to four claims of one patent but found no violation for two claims of another patent.

On January 9, 2006, Carsem filed a motion to extend the target date.  This motion was granted on February 9, 2006, with the Commission stating that the new target date would be three months after completion of the pending ASAT subpoena enforcement proceeding.

On April 20, 2009, after final disposition of the subpoena enforcement issue, Carsem filed a motion to extend the target date and remand the investigation to the ALJ.  Amkor filed a response and Carsem filed a motion for leave to reply to Amkor’s response.

The Commission ordered that (1) the investigation is to be remanded to the ALJ to admit new evidence discovered as a result of the ASAT subpoena; (2) the ALJ is to revise or supplement his November 9 Remand Initial Determination in light of the supplemented record to make appropriate findings concerning Carsem’s invalidity defenses; (3) the ALJ is to issue a revised or supplemental Initial Determination no later than three months prior to the target date for completion of the investigation (which was moved to September 1, 2009); (4) the ALJ shall have the authority to address any issues that may arise regarding enforcement of the subpoena; (5) Carsem’s motion for leave to reply is granted; and (6) Carsem’s motion for leave to file a supplemental motion in support of its motion to remand is denied.