Certain Encapsulated Integrated Circuit Devices and Products Containing Same; Commission Determination To Request Briefing and Set a Schedule for Filing Written Submissions on the Issues of Economic Prong of the Domestic Industry Requirement, and Remedy, the Public Interest, and Bonding, 35051-35052 [2013-13747]

Agencies

• INTERNATIONAL TRADE COMMISSION

[Federal Register Volume 78, Number 112 (Tuesday, June 11, 2013)]
[Notices]
[Pages 35051-35052]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2013-13747]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-501]


Certain Encapsulated Integrated Circuit Devices and Products 
Containing Same; Commission Determination To Request Briefing and Set a 
Schedule for Filing Written Submissions on the Issues of Economic Prong 
of the Domestic Industry Requirement, and Remedy, the Public Interest, 
and Bonding

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to request briefing on the economic prong of 
the domestic industry requirement, and on remedy, bonding and the 
public interest in the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT: Michael Liberman, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 205-3115. 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 
under section 337 of the Tariff Act of 1930, 19 U.S.C. 1337, on 
December 19, 2003, based on a complaint filed by Amkor Technology Inc. 
(``Amkor''). See 68 FR 70836 (Dec. 19, 2003). Amkor alleged a violation 
of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), 
by respondents Carsem (M) Sdn Bhd; Carsem Semiconductor Sdn Bhd; and 
Carsem, Inc. (collectively, ``Carsem,'' or respondents) in the 
importation, sale for importation, and sale within the United States 
after importation of certain encapsulated integrated circuit devices 
and products containing same in connection with claims 1-4, 7, 17, 18 
and 20-23 of U.S. Patent No. 6,433,277 (``the `277 patent''); claims 1-
4, 7 and 8 of U.S. Patent No. 6,630,728 (``the `728 patent''); and 
claims 1, 2, 13 and 14 of U.S. Patent No. 6,455,356 (``the `356 
patent'').
    On November 18, 2004, the ALJ issued a final initial determination 
(``Final ID'') finding no violation of section 337. After reviewing the 
Final ID in its entirety, the Commission on March 31, 2005, modified 
the ALJ's claim construction and remanded the investigation to the ALJ 
with instructions ``to conduct further proceedings and make any new 
findings or changes to his original findings that are necessitated by 
the Commission's new claim construction.'' Commission Order ] 8 (March 
31, 2005). On November 9, 2005, the ALJ issued a remand initial 
determination (``Remand ID''). The Remand ID made certain findings as 
to the remanded issues. Specifically, with respect to the issue of 
infringement, the Remand ID found that (1) claims 1-4, 7, 17, 18 and 
20-23 of the `277 patent are infringed by some or all of Carsem's 
accused imported ``Micro Leadframe Packages'' (``MLPs'') products; (2) 
claims 1, 2 and 7 of the `728 patent are infringed by some or all of 
Carsem's accused imported MLP products; and (3) claims 1, 2, 13 and 14 
of the `356 patent are not infringed by any of Carsem's accused 
imported MLP products. Furthermore, with respect to the issue of 
validity, the Remand ID found that claims 1, 7, 17, 18 and 20 of the 
`277 patent are invalid under 35 U.S.C. 102(b) as anticipated by 
certain prior art references, but claims 2-4 and 21-23 of the `277 
patent are not; (2) claims 1-4, 7 and 8 of the `728 patent are invalid 
under 35 U.S.C. 102(b) as anticipated by certain prior art references; 
(3) claims 1, 2, 13 and 14 of the '356 patent are not invalid under 35 
U.S.C. 102(b) as anticipated by certain prior art references; (4) claim 
1 of the `277 patent is invalid under 35 U.S.C. 103(a) as obvious in 
view of a combination of certain prior art references; (5) claims 2-4, 
7, 17, 18 and 20-23 of the `277 patent are not invalid under 35 U.S.C. 
103(a); (6) claims 3, 4 and 8 of the `728 patent are invalid under 35 
U.S.C. 103(a) as obvious in view of a combination of certain prior art 
references; (7) claims 1, 2 and 7 of the `728 patent are not invalid 
under 35 U.S.C. 103(a); and (8) claims 1, 2, 13 and 14 of the `356 
patent are not invalid under 35 U.S.C. 103(a). Finally, with respect to 
the issue of the technical prong of the domestic industry requirement, 
the Remand ID found that Amkor satisfied the technical prong for both 
the `277 patent and the `728 patent, but did not meet the technical 
prong for the `356 patent.
    Completion of this investigation was delayed because of difficulty 
in obtaining from third-party ASAT Inc. certain documents relating to 
ASAT's invention (``ASAT invention'') that Carsem asserted were 
critical for its affirmative invalidity defenses. The Commission's 
efforts to enforce a February 11, 2004, subpoena duces tecum and ad 
testificandum directed to ASAT resulted in a July 1, 2008, order and 
opinion of the U.S. District Court for the District of Columbia 
granting the Commission's second enforcement petition. On July 1, 2009, 
after ASAT had complied with the subpoena, the Commission issued a 
notice and order remanding this investigation to the ALJ so that the 
ASAT documents could be considered. On October 30, 2009, the ALJ issued 
a supplemental ID (``First Supplemental ID''), finding that the ASAT 
invention was not prior art.
    On February 18, 2010, the Commission reversed the ALJ's finding 
that ASAT invention is not prior art to Amkor's asserted patents, and 
remanded the investigation to the ALJ to make necessary findings with 
respect to the issue of validity of the asserted patents in light of 
the Commission's determination that the ASAT invention is prior art. On 
March 22, 2010, the ALJ issued a Supplemental ID (``Second Supplemental 
ID'') in which he found that the `277 and `728 patents were invalid in 
view of ASAT prior art. On July 20, 2010, the Commission determined not 
to review the ALJ's Remand ID and Second Supplemental ID. As a result, 
the Commission determined that there is no violation of section 337 in 
this investigation. Amkor appealed the Commission's decision to the 
Court of Appeals for the Federal Circuit.
    On August 22, 2012, the Federal Circuit ruled on Amkor's appeal 
reversing the Commission's determination that the `277 Patent is 
invalid under 35 U.S.C. 102(g)(2), declining to affirm the Commission's 
invalidity determination on the alternative grounds raised by Carsem, 
and remanding for further proceedings consistent with its opinion. 
Amkor Technology Inc. v. Int'l Trade Comm'n, 692 F.3d 1250 (Fed. Cir. 
2012) (``Amkor Technology''). On October 5, 2012,

[[Page 35052]]

Carsem filed a combined petition for panel rehearing and for rehearing 
en banc. The Court denied Carsem's petition on December 7, 2012, and 
issued its mandate on December 19, 2012, returning jurisdiction to the 
Commission.
    On January 14, 2013, the Commission issued an Order (``Commission's 
Order'') requesting the parties to the investigation to submit initial 
comments regarding what further proceedings must be conducted to comply 
with the Federal Circuit's August 22, 2012, judgment in Amkor 
Technology. The parties filed their initial and responsive submissions.
    Having examined the record in this investigation, including the 
parties' submissions filed in response to the Commission's Order, the 
Commission has determined to request briefing from the parties on only 
the following issues, with reference to the applicable law and the 
evidentiary record:

    Whether there is any intervening legal precedent since the 
issuance of the 2004 Final ID that precludes or warrants the ALJ's 
determination that Amkor satisfied the economic prong of the 
domestic industry requirement under section 337(a)(3)(A), and did 
not satisfy the economic prong under section 337(a)(3)(B). See 19 
U.S.C. 1337(a)(3)(A) and (B).

    In connection with the final disposition of this investigation, the 
Commission may (1) issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue one or more cease and desist orders that could result in the 
respondents being required to cease and desist from engaging in unfair 
acts in the importation and sale of such articles. Accordingly, the 
Commission is interested in receiving written submissions that address 
the form of remedy, if any, that should be ordered. If a party seeks 
exclusion of an article from entry into the United States for purposes 
other than entry for consumption, the party should so indicate and 
provide information establishing that activities involving other types 
of entry either are adversely affecting it or are likely to do so. For 
background, see Certain Devices for Connecting Computers via Telephone 
Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 Comm'n Op. (Dec. 1994).
    If the Commission contemplates some form of remedy, it must 
consider the effects of that remedy upon the public interest. The 
factors the Commission will consider include the effect that an 
exclusion order and/or cease and desist orders would have on (1) the 
public health and welfare, (2) competitive conditions in the U.S. 
economy, (3) U.S. production of articles that are like or directly 
competitive with those that are subject to investigation, and (4) U.S. 
consumers. The Commission is therefore interested in receiving written 
submissions that address the aforementioned public interest factors in 
the context of this investigation. The Commission also requests 
briefing as to the following question:

    Whether for purposes of our public interest analysis, there are 
products comparable to the subject articles that are noninfringing 
products in the U.S. market.

    If the Commission orders some form of remedy, the President has 60 
days to approve or disapprove the Commission's action. During this 
period, the subject articles would be entitled to enter the United 
States under bond, in an amount determined by the Commission and 
prescribed by the Secretary of the Treasury. The Commission is 
therefore interested in receiving submissions concerning the amount of 
the bond that should be imposed.
    Written Submissions: The parties to the investigation are requested 
to file written submissions on the issues specified in this Notice. The 
submissions should be concise and thoroughly referenced to the record 
in this investigation. Parties to the investigation, interested 
government agencies, and any other interested persons are encouraged to 
file written submissions on the issues of remedy, the public interest, 
and bonding. Such submissions should address the recommended 
determination by the ALJ on remedy and bonding issued on November 18, 
2004. Complainant and the Commission investigative attorney are also 
requested to submit proposed remedial orders for the Commission's 
consideration. Complainant is further requested to provide the 
expiration dates of the asserted patents at issue in this investigation 
and state the HTSUS number under which the accused articles are 
imported. The written submissions and proposed remedial orders must be 
filed no later than the close of business on Wednesday, June 19, 2013. 
Reply submissions must be filed no later than the close of business on 
Wednesday, June 26, 2013. No further submissions on these issues will 
be permitted unless otherwise ordered by the Commission.
    Persons filing written submissions must file the original document 
electronically on or before the deadlines stated above and submit 8 
true paper copies to the Office of the Secretary by noon the next day 
pursuant to section 210.4(f) of the Commission's Rules of Practice and 
Procedure (19 CFR 210.4(f)). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-501'') in a prominent place on 
the cover page and/or the first page. (See Handbook for Electronic 
Filing Procedures, https://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf). Persons with questions 
regarding filing should contact the Secretary (202-205-2000).
    Any person desiring to submit a document to the Commission in 
confidence must request confidential treatment. All such requests 
should be directed to the Secretary to the Commission and must include 
a full statement of the reasons why the Commission should grant such 
treatment. See 19 CFR 201.6. Documents for which confidential treatment 
by the Commission is properly sought will be treated accordingly. A 
redacted non-confidential version of the document must also be filed 
simultaneously with the any confidential filing. All non-confidential 
written submissions will be available for public inspection at the 
Office of the Secretary and on EDIS.
    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-.46 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.42-.46).

    Issued: June 5, 2013.

    By order of the Commission.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-13747 Filed 6-10-13; 8:45 am]
BILLING CODE 7020-02-P