Certain Integrated Circuit Chips and Products Containing the Same Commission's Determination To Review in Part the Final Initial Determination; Request for Submissions, 30878-30880 [2014-12410]

Agencies

• INTERNATIONAL TRADE COMMISSION

[Federal Register Volume 79, Number 103 (Thursday, May 29, 2014)]
[Notices]
[Pages 30878-30880]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-12410]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-859]


Certain Integrated Circuit Chips and Products Containing the Same 
Commission's Determination To Review in Part the Final Initial 
Determination; Request for Submissions

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 review in part the final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ'') on March 21, 2014, finding no violation of section 337 of the 
Tariff Act of 1930, as amended, 19 U.S.C. 1337, in this investigation.

FOR FURTHER INFORMATION CONTACT: Amanda Pitcher Fisherow, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 205-2737. 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 October 23, 2012, based on a complaint filed by Realtek 
Semiconductor Corporation (``Realtek'') of Hsinchu, Taiwan alleging 
violations of section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), 
as amended, by reason of infringement of certain claims of U.S. Patent 
Nos. 6,787,928 (``the '928 patent'') and 6,963,226 (``the '226 
patent''). 77 FR 64826. The notice of investigation named as 
respondents LSI Corporation of Milpitas, California; and Seagate 
Technology of Cupertino, California (collectively ``Respondents''). The 
'226 patent was terminated from the investigation.
    On March 21, 2014, the ALJ issued the subject final ID finding no 
violation of section 337. The ALJ held that no violation occurred in 
the importation into the United States, the sale for importation, or 
the sale within the United States after importation of certain 
integrated circuit chips and products containing the same that infringe 
one or more of claims 1-10 of the '928 patent. Although the ALJ found 
that the asserted claims were infringed, the ALJ held claims 1-10 of 
the '928

[[Page 30879]]

patent invalid and found that no domestic industry exists.
    The final ID also included the ALJ's recommended determination on 
remedy. The ALJ recommended that if the Commission finds a violation, 
that the Commission issue a limited exclusion order that includes a six 
month waiting period to permit only Respondent Seagate to replace the 
accused chips with non-infringing chips. Id. The ALJ further 
recommended that Realtek be required to submit quarterly reports 
certifying that it continues to maintain a domestic industry with 
respect to the domestic industry products and to specify the nature of 
the activities that constitute the domestic industry. The ALJ also 
recommend that the Commission not issue cease and desist orders. 
Further, the ALJ recommended that the Commission set a zero bond.
    On April 4, 2014, Realtek filed a petition for review and on April 
7, 2014 Respondents filed a contingent petition for review. The parties 
timely responded to each other's petitions for review. The Commission 
has determined to review the ID with the exception of the following: 
(1) Construction of the term ``second pad layer,'' (2) findings on 
jurisdiction, and (3) level of one of ordinary skill in the art.
    The parties are requested to brief their positions on the issues 
under review with reference to the applicable law and the evidentiary 
record. In connection with its review, the Commission is particularly 
interested in responses to the following questions:

    (1) Does the evidence of record show that a person of ordinary 
skill in the art would understand the ``lower electric-conduction 
layer'' to be composed of a single layer or that it could be 
composed of one or more layers? Does the evidence of record (e.g., 
intrinsic evidence, expert testimony, etc.) preclude the ``lower 
electric-conduction layer'' from being composed of more than one 
planar layer? Please also cite and/or discuss any relevant case law.
    (2) If the ``lower electric-conduction layer'' may be composed 
of more than a single planar layer, what impact would that have, if 
any, on the ALJ's invalidity findings?
    (3) If the ``lower electric-conduction layer'' may be composed 
of more than a single planar layer, do the accused products infringe 
the asserted claims?
    (4) If the ``lower electric-conduction layer'' may be composed 
of more than a single planar layer, what impact would that have, if 
any, on the ALJ's domestic industry findings?
    (5) Discuss whether Realtek waived its argument that the term 
``wherein a noise from the substrate is kept away from the first pad 
layer by the lower electric-conduction layer'' should be construed 
to require a significant or substantial reduction of noise.
    (6) In light of the specification's stated goals, what would a 
person of ordinary skill in the art understand as the amount of 
reduction in noise required by the wherein clause of claim 10? See 
e.g., '928 patent at 1:7-14, 2:20-26, 29-34. Please provide 
citations to the evidentiary record and discuss relevant case law 
pertaining to this issue.
    (7) Is the limitation ``wherein a noise from the substrate is 
kept away from the first pad layer by the lower electric-conduction 
layer'' of claim 10 indefinite? Would one of ordinary skill in the 
art understand the scope of the limitation, and if so what is that 
scope? Please cite to record evidence.
    (8) If the ``wherein a noise from the substrate is kept away 
from the first pad layer by the lower electric-conduction layer'' 
limitation requires significant or substantial reduction of noise, 
is claim 10 invalid?
    (9) If the ``wherein a noise from the substrate is kept away 
from the first pad layer by the lower electric-conduction layer'' 
limitation of claim 10 requires a significant or substantial 
reduction of noise, do the accused products infringe claim 10?
    (10) If the ``wherein a noise from the substrate is kept away 
from the first pad layer by the lower electric-conduction layer'' 
limitation of claim 10 requires significant or substantial reduction 
of noise, do the domestic industry products practice claim 10?
    (11) Discuss whether or not the evidence of record shows the 
metal layers 53 and 54 of the Ker application are ``necessarily'' 
coupled to a ``second pad layer'' that provides a bonding zone to an 
external power source or potential. Please cite record evidence to 
support your position.
    (12) Discuss whether there is clear and convincing evidence that 
the metal layer 53 of the Ker application is not coupled to the bond 
pad.
    (13) Discuss whether and how Realtek's research and development 
investment in the United States is investment in the asserted 
patent's exploitation pursuant to 19 U.S.C. 1337(a)(3)(C). See 
Certain Computers and Computer Peripheral Devices, and Components 
Thereof, and Products Containing Same, Inv. No. 337-TA-841, Comm'n 
Op. 27 (Jan. 9, 2014) (``The Commission has established that the 
`its' in `substantial investment in its exploitation' of 
subparagraph (a)(3)(C) refers to `the patent, copyright, trademark, 
mask work, or design.'); InterDigital Commc'ns, LLC v. ITC, 707 F.3d 
1295, 1297 (Fed. Cir. 2013) (``The parties agree that the word `its' 
in the last clause of paragraph 337(a)(3) refers to the intellectual 
property at issue.'').
    (14) Discuss whether and how Realtek's domestic-industry 
research and development in the United States involves or relates to 
articles protected by the asserted patent pursuant to 19 U.S.C. 
1337(a)(3)(C). See Microsoft Corp. v. ITC, 731 F.3d 1354, 1362 (Fed. 
Cir. 2013) (explaining that a complainant must ``provide evidence 
that its substantial domestic investment--e.g., in research and 
development--relates to an actual article that practices the 
patent'').
    (15) If Realtek has demonstrated investment in the United States 
in exploitation of the asserted patent pursuant to 19 U.S.C. 
1337(a)(3)(C), identify each investment specifically and explain why 
the investments, as a whole, are substantial.
    (16) Discuss whether Realtek presented and preserved theories of 
domestic industry based upon 19 U.S.C. 1337(a)(3)(A) or (a)(3)(B), 
and if so, whether Realtek demonstrated the existence of a domestic 
industry on those bases.
    (17) Please comment on whether a six month delay in enforcing a 
limited exclusion order against Seagate is or is not appropriate.

    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 
respondent(s) 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. When 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.
    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 
likely to do so. For background, see Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 
(December 1994) (Commission Opinion).
    If the Commission orders some form of remedy, the U.S. Trade 
Representative, as delegated by the President, has 60 days to approve 
or disapprove the Commission's action. See Presidential Memorandum of 
July 21, 2005, 70 FR 43251 (July 26, 2005). During this period, the 
subject articles would be entitled to enter the United States under 
bond, in an amount determined by the Commission and

[[Page 30880]]

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 if a remedy is ordered.
    Written Submissions: The parties to the investigation are requested 
to file written submissions on the issues identified in this notice. 
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, as well as 
respond to the questions posed herein relating to remedy and the public 
interest. Such submissions should address the recommended determination 
by the ALJ on remedy and bonding. Complainant is also requested to 
submit proposed remedial orders for the Commission's consideration.
    Complainant is also requested to state the date that the '928 
patent expires and the HTSUS numbers under which the accused products 
are imported. The written submissions and proposed remedial orders must 
be filed no later than close of business on Thursday, June 5, 2014. 
Reply submissions must be filed no later than the close of business on 
Monday, June 16, 2014. No further submissions on these issues will be 
permitted unless otherwise ordered by the Commission. The page limit 
for the parties' initial submissions on the questions posed by the 
Commission is 75 pages. The parties' reply submissions, if any, are 
limited to 35 pages.
    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-859'') 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 Part 210 of the Commission's Rules of Practice and Procedure (19 CFR 
Part 210).

    By order of the Commission.

    Issued: May 22, 2014.
 Lisa R. Barton,
 Secretary to the Commission.
[FR Doc. 2014-12410 Filed 5-28-14; 8:45 am]
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