In the Matter of Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same; Notice of Commission Final Determination of Violation of Section 337; Termination of Investigation; Issuance of Limited Exclusion Order and Cease and Desist Orders, 25579-25581 [E9-12371]
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Federal Register / Vol. 74, No. 101 / Thursday, May 28, 2009 / Notices
SUMMARY: Bureau of Land Management
(BLM), Colorado State Office,
Lakewood, Colorado, hereby gives
notice that the public meeting will be
held to receive comments on the
Environmental Analysis (EA), Finding
of No Significant Impact (FONSI),
Maximum Economic Recovery (MER),
and Fair Market Value (FMV) of federal
coal to be offered for a competitive lease
sale. Coal Lease By Application (LBA)
COC–70615 was filed by Oxbow
Mining, LLC. The BLM plans to offer for
competitive lease 789.79 acres of
Federal coal in Gunnison County,
Colorado.
DATES: The public meeting will be held
at 7 p.m., Wednesday, July 8, 2009.
Written comments should be received
no later than July 22, 2009.
The public meeting will be
held in the Paonia Town Hall located at
214 Grand Avenue, Paonia, Colorado.
Written comments should be addressed
to the Uncompahgre Field Office
Manager, Uncompahgre Field Office,
2505 South Townsend Avenue,
Montrose, Colorado 81401.
FOR FURTHER INFORMATION CONTACT:
Field Office Manager, Uncompahgre
Field Office at the address above, or by
telephone at 970–240–5300.
SUPPLEMENTARY INFORMATION: BLM
hereby gives notice that a public
meeting will be held on Wednesday,
July 8, 2009, at 7 p.m., at the Paonia
Town Hall at the address given above.
An LBA was filed by Oxbow Mining,
LLC. The BLM offers for competitive
lease federal coal in the lands outside
established coal production regions
described as:
T. 13 S., R. 90 NW., 6th P.M., Sections
3, 4, 5, more particularly described
as follows:
Beginning at a point on the North
Section line at the Section Corner
common to Sections 4 and 5; thence S.
87°22′08″ E. 5765.75 feet; thence S.
87°32′05″ E. 1604.94 feet; thence S.
0°04′31″ W. 4246.44 feet; thence N.
86°45′23″ W. 1558.38 feet; thence N.
84°12′17″ W. 5148.60 feet; thence N.
86°44′37″ W. 1321.91 feet; to the
existing lease line for Coal lease COC–
61357; thence along said existing lease
line N. 10°00′13″ W. 1382.68 feet;
thence N. 86°08′20″ W. 390.65 feet;
thence N. 00°1135.85 feet; to the
southeasterly boundary of Tract 4;
thence N. 14°36′45″ E. 1463.19 feet;
along said southeasterly boundary of
Tract 4; thence S. 87°18′59″ E. 902.22
feet; along the north section line of
section 5 to the Point of beginning.
Containing approximately 789.79
acres in Gunnison County, Colorado.
ADDRESSES:
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20:16 May 27, 2009
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The coal resource to be offered is
limited to coal recoverable by
underground mining methods. One
purpose of the meeting is to obtain
public comments on the following
items:
(1) The method of mining to be
employed to obtain maximum economic
recovery of the coal,
(2) The impact that mining the coal in
the proposed leasehold may have on the
area, and
(3) The methods of determining the
fair market value of the coal to be
offered.
(4) EA and the FONSI.
In addition, the public is invited to
submit written comments concerning
the MER and FMV of the coal resource.
Public comments will be utilized in
establishing FMV for the coal resource
in the described lands. Comments
should address specific factors related
to fair market value including, but not
limited to:
1. The quality and quantity of the coal
resource.
2. The price that the mined coal
would bring in the market place.
3. The cost of producing the coal.
4. The interest rate at which
anticipated income streams would be
discounted.
5. Depreciation and other accounting
factors.
6. The mining method or methods
which would achieve maximum
economic recovery of the coal.
7. Documented information on the
terms and conditions of recent and
similar coal land transactions in the
lease area, and
8. Any comparable sales data of
similar coal lands in the lease area.
Written requests to testify orally at the
July 8, 2009, public meeting should be
received at the Uncompahgre Field
Office prior to the close of business July
8, 2009. Those who indicate they wish
to testify when they register at the
meeting may have an opportunity if
time is available. If any information
submitted as comments are considered
to be proprietary by the commenter, the
information should be labeled as such
and stated in the first page of the
submission. Written comments on the
MER, and FMV should be sent to the
Uncompahgre Field Office at the above
address prior to the close of business on
July 22, 2009, the end of the 30 day
public comment period.
Substantive comments, whether
written or oral, will receive equal
consideration prior to any lease offering.
The MER Report is available from the
Uncompahgre Field Office upon
request. A copy of the MER Report, the
case file, and the comments submitted
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25579
by the public, except those portions
identified as proprietary by the
commenter and meeting exemptions
stated in the Freedom of Information
Act, will be available for public
inspection after July 22, 2009, at the
Colorado State Office, 2850 Youngfield,
Lakewood, Colorado 80215.
Before including your address, phone
number, e-mail address, or other
personal identifying information in your
comment, you should be aware that
your entire comment—including your
personal identifying information—may
be made publicly available at any time.
While you can ask us in your comment
to withhold your personal identifying
information from public review, we
cannot guarantee that we will be able to
do so.
Dated: May 21, 2009.
Kurt M. Barton,
Solid Minerals LLE, Division of Energy, Lands
and Minerals.
[FR Doc. E9–12333 Filed 5–27–09; 8:45 am]
BILLING CODE 4310–JB–P
INTERNATIONAL TRADE
COMMISSION
[Investigation No. 337–TA–605]
In the Matter of Certain Semiconductor
Chips With Minimized Chip Package
Size and Products Containing Same;
Notice of Commission Final
Determination of Violation of Section
337; Termination of Investigation;
Issuance of Limited Exclusion Order
and Cease and Desist Orders
AGENCY: U.S. International Trade
Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that
the U.S. International Trade
Commission has determined that there
is a violation of 19 U.S.C. 1337 by
Spansion, Inc. and Spansion, LLC, both
of Sunnyvale, California (collectively
‘‘Spansion’’); QUALCOMM, Inc. of San
Diego, California (‘‘Qualcomm’’); ATI
Technologies of Thornhill, Ontario,
Canada (‘‘ATI’’); Motorola, Inc. of
Schaumburg, Illinois (‘‘Motorola’’);
STMicroelectronics N.V. of Geneva,
Switzerland (‘‘ST–NV’’); and Freescale
Semiconductor, Inc. of Austin, Texas
(‘‘Freescale’’) (collectively,
‘‘Respondents’’) in the above-captioned
investigation. The investigation is
terminated.
FOR FURTHER INFORMATION CONTACT:
Megan M. Valentine, Office of the
General Counsel, U.S. International
Trade Commission, 500 E Street, SW.,
Washington, DC 20436, telephone (202)
E:\FR\FM\28MYN1.SGM
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25580
Federal Register / Vol. 74, No. 101 / Thursday, May 28, 2009 / Notices
708–2301. Copies of non-confidential
documents filed in connection with this
investigation are or will be available for
inspection during official business
hours (8:45 a.m. to 5:15 p.m.) in the
Office of the Secretary, U.S.
International Trade Commission, 500 E
Street, SW., Washington, DC 20436,
telephone (202) 205–2000. General
information concerning the Commission
may also be obtained by accessing its
Internet server at https://www.usitc.gov.
The public record for this investigation
may be viewed on the Commission’s
electronic docket (EDIS) at https://
edis.usitc.gov. Hearing-impaired
persons are advised that information on
this matter can be obtained by
contacting the Commission’s TDD
terminal on (202) 205–1810.
SUPPLEMENTARY INFORMATION: The
Commission instituted this investigation
on May 21, 2007, based on a complaint
filed by Tessera against Spansion,
Qualcomm, ATI, Motorola, ST–NV, and
Freescale. 72 FR 28522 (May 21, 2007).
The complaint alleges violations of
Section 337 of the Tariff Act of 1930, as
amended, 19 U.S.C. 1337, in the
importation into the United States, the
sale for importation, and the sale within
the United States after importation of
certain semiconductor chips with
minimized chip package size or
products containing same by reason of
infringement of one or more claims of
U.S. Patent Nos. 5,852,326, and
6,433,419.
On December 1, 2008, the presiding
administrative law judge (‘‘ALJ’’) issued
his final ID finding no violation of
Section 337 by Respondents. The ID
included the ALJ’s recommended
determination (‘‘RD’’) on remedy and
bonding. In his ID, the ALJ found that
Respondents’ accused products do not
infringe the asserted claims the ‘326
patent or the asserted claims of the ‘419
patent. The ALJ additionally found that
the asserted claims of the ‘326 and ‘419
patents are not invalid for failing to
satisfy the enablement requirement or
the written description requirement of
35 U.S.C. 112 ¶ 1. The ALJ further found
that the asserted claims of the ‘326 and
‘419 patents are not invalid as indefinite
of 35 U.S.C. 112 ¶ 2. The ALJ also found
that the asserted claims of the ‘326 and
‘419 patents are not invalid under 35
U.S.C. § 102 for anticipation or under 35
U.S.C. 103 for obviousness. Finally, the
ALJ found that an industry in the
United States exists with respect to the
‘326 and ‘419 patents as required by 19
U.S.C. 1337(a)(2) and (3). In his RD, the
ALJ recommended that, should the
Commission determine that a violation
exists, a limited exclusion order
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17:11 May 27, 2009
Jkt 217001
(‘‘LEO’’) would be properly directed to
Respondents’ accused chip packages
and to the downstream products of
Motorola, a named respondent.
On December 15, 2008, Tessera and
the Commission investigative attorney
(‘‘IA’’) filed separate petitions seeking
review of the ALJ’s determination
concerning non-infringement of the
asserted claims of the ‘326 and ‘419
patents. Also on December 15, 2008,
Respondents filed various contingent
petitions seeking review of certain
aspects of the ALJ’s findings as concern
both the ‘326 and ‘419 patents in the
event that the Commission determined
to review the ID’s findings concerning
non-infringement. On December 23,
2008, Respondents filed an opposition
to Tessera’s and the IA’s petitions for
review, and Tessera and the IA filed
separate responses to Respondents’
various contingent petitions for review.
On January 30, 2009, the Commission
determined to review the final ID in part
and requested briefing on the issues it
determined to review, remedy, the
public interest, and bonding. 74 FR
6175–6 (Feb. 5, 2009). The Commission
determined to review: (1) The ALJ’s
finding that Respondents’ accused
devices do not infringe the asserted
claims the ‘326 and ‘419 patents; (2) the
ALJ’s finding that Tessera has waived
any argument that the accused products
indirectly infringe the ‘419 patent; (3)
the ALJ’s finding that Motorola’s
invention of the 1989 68HC11 OMPAC
chip (‘‘OMPAC’’) does not anticipate the
asserted patents under 35 U.S.C. 102(b);
and (4) the ALJ’s finding that the
Motorola’s OMPAC invention does not
anticipate the asserted patents under 35
U.S.C. 102(g). Id. The Commission
determined not to review the remaining
issues decided in the ID. On February 6,
2009, Respondents filed a motion to
extend the briefing schedule. On
February 10, 2009, the Commission
issued a Notice extending the deadline
for receiving initial submissions and
reply submissions in light of the fact
that the ALJ did not issue the public
version of the final ID until February 9,
2009. The Commission also extended
the target date to April 14, 2009. The
Commission issued a corrected version
of the Notice on February 18, 2009,
clarifying the deadline for reply
submissions of issues relating to
violation of Section 337.
On February 23, 2009, the parties
filed initial written submissions
regarding the issues on review, remedy,
the public interest, and bonding. On
March 5, 2009, the parties filed response
submissions. Several respondents (‘‘the
649 Respondents) in co-pending
investigation Certain Semiconductor
PO 00000
Frm 00102
Fmt 4703
Sfmt 4703
Chips with Minimized Chip Package
Size and Products Containing Same,
Inv. No. 337–TA–649 (‘‘the 649
Investigation’’), also filed reply briefs on
remedy, the public interest, and
bonding. In its initial submission on
remedy, Tessera requested that the
Commission issue a ‘‘tailored’’ general
exclusion order (‘‘GEO’’) should the
Commission determine that there is a
violation of Section 337. Tessera also
requested that, should the Commission
determine that the current record is not
adequate to support issuance of a GEO,
the Commission should issue the LEO
recommended by the ALJ immediately,
and then conduct further proceedings
regarding the availability of a tailored
GEO. The IA concurred. Respondents in
this investigation and the 649
Respondents opposed Tessera’s request
for a ‘‘tailored’’ GEO. On March 9, 2009,
Siliconware Precision Industries Co.,
Ltd. and Siliconware U.S.A., Inc.
(collectively ‘‘SPIL Respondents’’), who
are respondents in the 649 Investigation,
filed a motion to extend the date for
filing reply submissions to the
Commission’s Notice of Review of the
final ID and to compel the production
of Tessera’s initial confidential briefing
in response to the Commission’s Notice.
In support its February 23, 2009, brief
on Remedy, the Public Interest and
Bonding, Tessera submitted an affidavit
from Dr. Stephen Prowse and a
statement from Mr. Bernard Cassidy. On
March 5, 2009, Respondents filed a
motion to strike Dr. Prowse’s affidavit
and Mr. Cassidy’s statement. On March
16, 2009, the IA filed a response in
support of Respondents’ Motion to
Strike.
On March 11, 2009, Spansion filed a
Notice of Commencement of Bankruptcy
Proceedings and of Automatic Stay,
requesting a stay of the investigation
because it and certain of its subsidiaries
had filed for relief under Chapter 11 of
the United States Bankruptcy Code, 11
U.S.C. 101 et seq. Tessera filed an
opposition to Spansion’s request on
March 18, 2009, and the IA filed an
opposition on March 23, 2009.
On March 26, 2009, the Commission
issued a Notice requesting additional
briefing on remedy and extending the
target date. 74 FR 14820–1 (April 1,
2009). In the Notice, the Commission
asked the parties and any interested
non-parties to address whether Tessera
is entitled to a GEO under 19 U.S.C.
1337(d)(2), whether the Commission has
the authority to issue a ‘‘tailored’’ GEO,
which would ostensibly reach only
specified downstream products, and
whether the Commission has the
authority to issue an LEO immediately
and then issue a GEO at a later date
E:\FR\FM\28MYN1.SGM
28MYN1
Federal Register / Vol. 74, No. 101 / Thursday, May 28, 2009 / Notices
when the Commission concludes the
investigation. On April 10, 2009,
Tessera, the IA, Respondents, and
several interested non-parties filed
initial written submissions in response
to the Commission’s request for
additional briefing on remedy.
Respondent Spansion did not submit
any briefing in response to the
Commission’s request. On April 20,
2009, Tessera, the IA, Respondents, and
the SPIL Respondents filed reply
submissions in response to the
Commission’s request for additional
briefing on remedy. On April 20, 2009,
the Commission issued a Notice in
response to a motion from Broadcom
extending the due date for reply
submissions from interested non-parties
to April 29, 2009, since the public
versions of the parties’ initial
submissions were not due to be filed
until April 22, 2009. Notice of
Commission Determination to Extend
the Deadline for Receiving Reply
Submission from Interested Parties in
Response to the Commission’s Request
for Additional Briefing on Remedy
(April 20, 2009). On April 29, 2009, the
interested non-parties submitted their
reply briefs.
On April 24, 2009, respondent
Qualcomm filed a motion for leave to
file a petition for reconsideration
pursuant to 19 CFR 210.47 of the
Commission’s determination not to
review the ID’s finding that the asserted
claims of the patents-in-suit are not
indefinite. Qualcomm argued that the
United States Patent and Trademark
Office rejected as ‘‘indefinite’’ under 35
U.S.C. 112, ¶ 2, new claims submitted
by Tessera in connection with the
reexamination of U.S. Patent No.
6,133,627, one of the parent patents of
the ‘419 patent. Tessera filed an
opposition to Qualcomm’s motion on
April 30, 2009. The IA filed an
opposition on May 4, 2009. Qualcomm
filed a reply to Tessera’s and the IA’s
oppositions on May 5, 2009.
Having examined the record of this
investigation, including the ALJ’s final
ID, the Commission has determined to
reverse the ID’s determination of no
violation of the ‘326 patent and ‘419
patent. Specifically, the Commission
reverses the ID’s finding that
Respondents’ accused devices do not
infringe asserted claims 1, 2, 6, 12, 16–
19, 21, 24–26, and 29 of the ‘326 patent
and asserted claims 1–11, 14, 15, 19,
and 22–24 of the ‘419 patent. The
Commission further reverses the ID’s
conclusion regarding waiver with
respect to any claims that the accused
chip packages indirectly infringe the
asserted claims of the ‘419 patent.
Moreover, the Commission finds that
VerDate Nov<24>2008
17:11 May 27, 2009
Jkt 217001
Respondents have contributorily
infringed the asserted claims of the ‘419
patent. The Commission also modifies
the ID’s analysis concerning its finding
that the ‘326 and ‘419 patents are not
invalid under 35 U.S.C. 102(b) to clarify
that the statute requires comparing the
on-sale date of alleged prior art against
the priority date of the asserted patents,
not against the conception date of the
asserted patents.
The Commission has determined that
the appropriate form of relief is (1) a
limited exclusion order under 19 U.S.C.
1337(d)(1) prohibiting the unlicensed
entry of semiconductor chips with
minimized chip package size and
products incorporating these chips that
infringe one or more of claims 1, 2, 6,
12, 16–19, 21, 24–26, and 29 of the ‘326
patent and claims 1–11, 14, 15, 19, and
22–24 of the ’419 patent, and are
manufactured abroad by or on behalf of,
or imported by or on behalf of,
Spansion, Qualcomm, ATI, Motorola,
ST–NV, and Freescale; and (2) cease and
desist orders directed to Motorola,
Qualcomm, Freescale, and Spansion.
The Commission has further
determined that the public interest
factors enumerated in Section 337(d)
and (f) (19 U.S.C. 1337(d), (f)) do not
preclude issuance of the limited
exclusion order and the cease and desist
orders. The Commission has determined
that the bond for temporary importation
during the period of Presidential review
(19 U.S.C. 1337(j)) shall be in the
amount of 3.5% of the value of the
imported articles that are subject to the
order. The Commission’s order was
delivered to the President and the
United States Trade Representative on
the day of its issuance.
Additionally, the Commission denies
the motion by the SPIL Respondents to
extend the date for reply submissions to
the Commission’s Notice of Review of
the final ID and to compel the
production of Tessera’s initial
confidential briefing in response to the
Commission’s Notice of Review. The
Commission further denies Spansion’s
motion for a stay of the investigation in
light of the commencement of
bankruptcy proceedings involving it.
The Commission also denies respondent
Qualcomm’s motion for leave to file a
petition for reconsideration of the
Commission’s determination not to
review the ID’s finding that the asserted
claims of the patents-in-suit are not
indefinite. Finally, the Commission
denies Respondents’ motion to strike
the Prowse Affidavit and the Cassidy
Statement.
The authority for the Commission’s
determination is contained in Section
337 of the Tariff Act of 1930, as
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Frm 00103
Fmt 4703
Sfmt 4703
25581
amended (19 U.S.C. 1337), and in
sections 210.42–50 of the Commission’s
Rules of Practice and Procedure (19 CFR
210.42–50).
Issued: May 20, 2009.
By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. E9–12371 Filed 5–27–09; 8:45 am]
BILLING CODE 7020–02–P
NATIONAL AERONAUTICS AND
SPACE ADMINISTRATION
[Notice: (09–044)]
Notice of Centennial Challenges—2009
Power Beaming Challenge
AGENCY: National Aeronautics and
Space Administration (NASA).
ACTION: Notice of Centennial
Challenges—2009 Power Beaming
Challenge.
SUMMARY: This notice is issued in
accordance with 42 U.S.C. 2459f–1(d).
This is an update to a previous notice
(09–12) on the 2009 Power Beaming and
Tether Challenges. The 2009 Power
Beaming Challenge is now scheduled
and teams that wish to compete may
register. A notice on the Tether
Challenge will be issued at a later time.
The NASA Centennial Challenges is a
program of prize contests to stimulate
innovation and competition in
technologies of interest and value to
NASA and the nation. The 2009 Power
Beaming Challenge is a prize
competition designed to promote the
development of new power
transmission technologies with
applications in energy systems,
transportation and emergency
operations. Significant improvements in
power beaming could contribute to
revolutionary advances in space
transportation as well as other areas.
The Spaceward Foundation
administers the Power Beaming
Challenge for NASA. The prize purse is
funded by NASA.
DATES: The 2009 Power Beaming
Challenge will be held on July 14–16,
2009.
Location: The 2009 Power Beaming
Challenge will be held at the Dryden
Flight Research Center, Edwards,
California.
FOR FURTHER INFORMATION CONTACT: To
register for and get additional
information regarding the 2009 Power
Beaming Challenge including rules,
team agreements, eligibility and prize
criteria, visit: https://www.spaceward.org
or contact Mr. Ben Shelef at the
E:\FR\FM\28MYN1.SGM
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Agencies
[Federal Register Volume 74, Number 101 (Thursday, May 28, 2009)]
[Notices]
[Pages 25579-25581]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E9-12371]
=======================================================================
-----------------------------------------------------------------------
INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-605]
In the Matter of Certain Semiconductor Chips With Minimized Chip
Package Size and Products Containing Same; Notice of Commission Final
Determination of Violation of Section 337; Termination of
Investigation; Issuance of Limited Exclusion Order and Cease and Desist
Orders
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: Notice is hereby given that the U.S. International Trade
Commission has determined that there is a violation of 19 U.S.C. 1337
by Spansion, Inc. and Spansion, LLC, both of Sunnyvale, California
(collectively ``Spansion''); QUALCOMM, Inc. of San Diego, California
(``Qualcomm''); ATI Technologies of Thornhill, Ontario, Canada
(``ATI''); Motorola, Inc. of Schaumburg, Illinois (``Motorola'');
STMicroelectronics N.V. of Geneva, Switzerland (``ST-NV''); and
Freescale Semiconductor, Inc. of Austin, Texas (``Freescale'')
(collectively, ``Respondents'') in the above-captioned investigation.
The investigation is terminated.
FOR FURTHER INFORMATION CONTACT: Megan M. Valentine, Office of the
General Counsel, U.S. International Trade Commission, 500 E Street,
SW., Washington, DC 20436, telephone (202)
[[Page 25580]]
708-2301. Copies of non-confidential documents filed in connection with
this investigation are or will be available for inspection during
official business hours (8:45 a.m. to 5:15 p.m.) in the Office of the
Secretary, U.S. International Trade Commission, 500 E Street, SW.,
Washington, DC 20436, telephone (202) 205-2000. General information
concerning the Commission may also be obtained by accessing its
Internet server at https://www.usitc.gov. The public record for this
investigation may be viewed on the Commission's electronic docket
(EDIS) at https://edis.usitc.gov. Hearing-impaired persons are advised
that information on this matter can be obtained by contacting the
Commission's TDD terminal on (202) 205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on May 21, 2007, based on a complaint filed by Tessera against
Spansion, Qualcomm, ATI, Motorola, ST-NV, and Freescale. 72 FR 28522
(May 21, 2007). The complaint alleges violations of Section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337, in the importation into
the United States, the sale for importation, and the sale within the
United States after importation of certain semiconductor chips with
minimized chip package size or products containing same by reason of
infringement of one or more claims of U.S. Patent Nos. 5,852,326, and
6,433,419.
On December 1, 2008, the presiding administrative law judge
(``ALJ'') issued his final ID finding no violation of Section 337 by
Respondents. The ID included the ALJ's recommended determination
(``RD'') on remedy and bonding. In his ID, the ALJ found that
Respondents' accused products do not infringe the asserted claims the
`326 patent or the asserted claims of the `419 patent. The ALJ
additionally found that the asserted claims of the `326 and `419
patents are not invalid for failing to satisfy the enablement
requirement or the written description requirement of 35 U.S.C. 112 ]
1. The ALJ further found that the asserted claims of the `326 and `419
patents are not invalid as indefinite of 35 U.S.C. 112 ] 2. The ALJ
also found that the asserted claims of the `326 and `419 patents are
not invalid under 35 U.S.C. Sec. 102 for anticipation or under 35
U.S.C. 103 for obviousness. Finally, the ALJ found that an industry in
the United States exists with respect to the `326 and `419 patents as
required by 19 U.S.C. 1337(a)(2) and (3). In his RD, the ALJ
recommended that, should the Commission determine that a violation
exists, a limited exclusion order (``LEO'') would be properly directed
to Respondents' accused chip packages and to the downstream products of
Motorola, a named respondent.
On December 15, 2008, Tessera and the Commission investigative
attorney (``IA'') filed separate petitions seeking review of the ALJ's
determination concerning non-infringement of the asserted claims of the
`326 and `419 patents. Also on December 15, 2008, Respondents filed
various contingent petitions seeking review of certain aspects of the
ALJ's findings as concern both the `326 and `419 patents in the event
that the Commission determined to review the ID's findings concerning
non-infringement. On December 23, 2008, Respondents filed an opposition
to Tessera's and the IA's petitions for review, and Tessera and the IA
filed separate responses to Respondents' various contingent petitions
for review.
On January 30, 2009, the Commission determined to review the final
ID in part and requested briefing on the issues it determined to
review, remedy, the public interest, and bonding. 74 FR 6175-6 (Feb. 5,
2009). The Commission determined to review: (1) The ALJ's finding that
Respondents' accused devices do not infringe the asserted claims the
`326 and `419 patents; (2) the ALJ's finding that Tessera has waived
any argument that the accused products indirectly infringe the `419
patent; (3) the ALJ's finding that Motorola's invention of the 1989
68HC11 OMPAC chip (``OMPAC'') does not anticipate the asserted patents
under 35 U.S.C. 102(b); and (4) the ALJ's finding that the Motorola's
OMPAC invention does not anticipate the asserted patents under 35
U.S.C. 102(g). Id. The Commission determined not to review the
remaining issues decided in the ID. On February 6, 2009, Respondents
filed a motion to extend the briefing schedule. On February 10, 2009,
the Commission issued a Notice extending the deadline for receiving
initial submissions and reply submissions in light of the fact that the
ALJ did not issue the public version of the final ID until February 9,
2009. The Commission also extended the target date to April 14, 2009.
The Commission issued a corrected version of the Notice on February 18,
2009, clarifying the deadline for reply submissions of issues relating
to violation of Section 337.
On February 23, 2009, the parties filed initial written submissions
regarding the issues on review, remedy, the public interest, and
bonding. On March 5, 2009, the parties filed response submissions.
Several respondents (``the 649 Respondents) in co-pending investigation
Certain Semiconductor Chips with Minimized Chip Package Size and
Products Containing Same, Inv. No. 337-TA-649 (``the 649
Investigation''), also filed reply briefs on remedy, the public
interest, and bonding. In its initial submission on remedy, Tessera
requested that the Commission issue a ``tailored'' general exclusion
order (``GEO'') should the Commission determine that there is a
violation of Section 337. Tessera also requested that, should the
Commission determine that the current record is not adequate to support
issuance of a GEO, the Commission should issue the LEO recommended by
the ALJ immediately, and then conduct further proceedings regarding the
availability of a tailored GEO. The IA concurred. Respondents in this
investigation and the 649 Respondents opposed Tessera's request for a
``tailored'' GEO. On March 9, 2009, Siliconware Precision Industries
Co., Ltd. and Siliconware U.S.A., Inc. (collectively ``SPIL
Respondents''), who are respondents in the 649 Investigation, filed a
motion to extend the date for filing reply submissions to the
Commission's Notice of Review of the final ID and to compel the
production of Tessera's initial confidential briefing in response to
the Commission's Notice.
In support its February 23, 2009, brief on Remedy, the Public
Interest and Bonding, Tessera submitted an affidavit from Dr. Stephen
Prowse and a statement from Mr. Bernard Cassidy. On March 5, 2009,
Respondents filed a motion to strike Dr. Prowse's affidavit and Mr.
Cassidy's statement. On March 16, 2009, the IA filed a response in
support of Respondents' Motion to Strike.
On March 11, 2009, Spansion filed a Notice of Commencement of
Bankruptcy Proceedings and of Automatic Stay, requesting a stay of the
investigation because it and certain of its subsidiaries had filed for
relief under Chapter 11 of the United States Bankruptcy Code, 11 U.S.C.
101 et seq. Tessera filed an opposition to Spansion's request on March
18, 2009, and the IA filed an opposition on March 23, 2009.
On March 26, 2009, the Commission issued a Notice requesting
additional briefing on remedy and extending the target date. 74 FR
14820-1 (April 1, 2009). In the Notice, the Commission asked the
parties and any interested non-parties to address whether Tessera is
entitled to a GEO under 19 U.S.C. 1337(d)(2), whether the Commission
has the authority to issue a ``tailored'' GEO, which would ostensibly
reach only specified downstream products, and whether the Commission
has the authority to issue an LEO immediately and then issue a GEO at a
later date
[[Page 25581]]
when the Commission concludes the investigation. On April 10, 2009,
Tessera, the IA, Respondents, and several interested non-parties filed
initial written submissions in response to the Commission's request for
additional briefing on remedy. Respondent Spansion did not submit any
briefing in response to the Commission's request. On April 20, 2009,
Tessera, the IA, Respondents, and the SPIL Respondents filed reply
submissions in response to the Commission's request for additional
briefing on remedy. On April 20, 2009, the Commission issued a Notice
in response to a motion from Broadcom extending the due date for reply
submissions from interested non-parties to April 29, 2009, since the
public versions of the parties' initial submissions were not due to be
filed until April 22, 2009. Notice of Commission Determination to
Extend the Deadline for Receiving Reply Submission from Interested
Parties in Response to the Commission's Request for Additional Briefing
on Remedy (April 20, 2009). On April 29, 2009, the interested non-
parties submitted their reply briefs.
On April 24, 2009, respondent Qualcomm filed a motion for leave to
file a petition for reconsideration pursuant to 19 CFR 210.47 of the
Commission's determination not to review the ID's finding that the
asserted claims of the patents-in-suit are not indefinite. Qualcomm
argued that the United States Patent and Trademark Office rejected as
``indefinite'' under 35 U.S.C. 112, ] 2, new claims submitted by
Tessera in connection with the reexamination of U.S. Patent No.
6,133,627, one of the parent patents of the `419 patent. Tessera filed
an opposition to Qualcomm's motion on April 30, 2009. The IA filed an
opposition on May 4, 2009. Qualcomm filed a reply to Tessera's and the
IA's oppositions on May 5, 2009.
Having examined the record of this investigation, including the
ALJ's final ID, the Commission has determined to reverse the ID's
determination of no violation of the `326 patent and `419 patent.
Specifically, the Commission reverses the ID's finding that
Respondents' accused devices do not infringe asserted claims 1, 2, 6,
12, 16-19, 21, 24-26, and 29 of the `326 patent and asserted claims 1-
11, 14, 15, 19, and 22-24 of the `419 patent. The Commission further
reverses the ID's conclusion regarding waiver with respect to any
claims that the accused chip packages indirectly infringe the asserted
claims of the `419 patent. Moreover, the Commission finds that
Respondents have contributorily infringed the asserted claims of the
`419 patent. The Commission also modifies the ID's analysis concerning
its finding that the `326 and `419 patents are not invalid under 35
U.S.C. 102(b) to clarify that the statute requires comparing the on-
sale date of alleged prior art against the priority date of the
asserted patents, not against the conception date of the asserted
patents.
The Commission has determined that the appropriate form of relief
is (1) a limited exclusion order under 19 U.S.C. 1337(d)(1) prohibiting
the unlicensed entry of semiconductor chips with minimized chip package
size and products incorporating these chips that infringe one or more
of claims 1, 2, 6, 12, 16-19, 21, 24-26, and 29 of the `326 patent and
claims 1-11, 14, 15, 19, and 22-24 of the '419 patent, and are
manufactured abroad by or on behalf of, or imported by or on behalf of,
Spansion, Qualcomm, ATI, Motorola, ST-NV, and Freescale; and (2) cease
and desist orders directed to Motorola, Qualcomm, Freescale, and
Spansion.
The Commission has further determined that the public interest
factors enumerated in Section 337(d) and (f) (19 U.S.C. 1337(d), (f))
do not preclude issuance of the limited exclusion order and the cease
and desist orders. The Commission has determined that the bond for
temporary importation during the period of Presidential review (19
U.S.C. 1337(j)) shall be in the amount of 3.5% of the value of the
imported articles that are subject to the order. The Commission's order
was delivered to the President and the United States Trade
Representative on the day of its issuance.
Additionally, the Commission denies the motion by the SPIL
Respondents to extend the date for reply submissions to the
Commission's Notice of Review of the final ID and to compel the
production of Tessera's initial confidential briefing in response to
the Commission's Notice of Review. The Commission further denies
Spansion's motion for a stay of the investigation in light of the
commencement of bankruptcy proceedings involving it. The Commission
also denies respondent Qualcomm's motion for leave to file a petition
for reconsideration of the Commission's determination not to review the
ID's finding that the asserted claims of the patents-in-suit are not
indefinite. Finally, the Commission denies Respondents' motion to
strike the Prowse Affidavit and the Cassidy Statement.
The authority for the Commission's determination is contained in
Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and
in sections 210.42-50 of the Commission's Rules of Practice and
Procedure (19 CFR 210.42-50).
Issued: May 20, 2009.
By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. E9-12371 Filed 5-27-09; 8:45 am]
BILLING CODE 7020-02-P