E9-4704. In the Matter of Certain Power Supply Controllers and Products Containing Same; Limited Exclusion Order

On June 13, 2005, the Commission instituted this investigation, based on a complaint filed by Power Integrations, Inc. (“PI”) of San Jose, California. 70 FR. 34149 (June 13, 2005). The complaint, as amended and supplemented, alleged violations of section 337 of the Tariff Act of 1930 (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 power supply controllers and products containing the same. The Commission determined that System General Corporation (“SG”) of Taipei, Taiwan, violated section 337 by reason of infringement of claims 1, 3, 5, and 6 of United States Patent No. 6,351,398 (“the ‘398 patent”) and claims 26 and 27 of United States Patent No. 6,538,908 (“the ‘908 patent”).

On October 27, 2008, SG filed a petition for modification of the limited exclusion order in light of Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340 (Fed. Cir. 2008), requesting that the Commission modify the existing exclusion order so it does not exclude downstream products of non-respondents. On November 7, 2008, complainant PI filed an opposition to SG's petition for modification. On the same day, the Commission IA filed a response supporting SG's petition. Finally, on November 26, 2008, SG moved for leave to file a reply in support of its petition and also filed the reply.

Having reviewed the record in this investigation, including the written submissions of the parties, the Commission has made its determination on the petition for modification. The Commission has determined that the appropriate form of relief is a limited exclusion order prohibiting the unlicensed entry of power supply controllers that infringe one or more of claims 1, 3, 5, and 6 of the ‘398 patent or claims 26 and 27 of the ‘908 patent and that are manufactured abroad by or on behalf of, or imported by or on behalf of, SG, its affiliated companies, parents, subsidiaries, licensees, contractors, or other related business entities, or successors or assigns. The Commission has also determined to prohibit the unlicensed entry of liquid crystal display (“LCD”) computer monitors, AC printer adapters, and sample/demonstration boards containing such infringing power supply controllers that are manufactured abroad by or on behalf of, or imported by or on behalf of, SG, its affiliated companies, parents, subsidiaries, licensees, contractors, or other related business entities, or successors or assigns.

The Commission has further determined that the public interest factors enumerated in 19 U.S.C. 1337(d)(1) do not preclude issuance of the limited exclusion order.

Accordingly, the Commission hereby orders that:

1. Power supply controllers that infringe one or more of claims 1, 3, 5, and 6 of United States Patent No. 6,351,398 and that are manufactured abroad by or on behalf of, or imported by or on behalf of, SG, or any of its affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns, and LCD computer monitors, AC printer adapters, and sample/demonstration boards that contain such infringing power supply controllers and that are manufactured abroad by or on behalf of, or imported by or on behalf of, SG, or any of its affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns, are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining term of the patent, except under license of the patent owner or as provided by law.

2. Power supply controllers that infringe one or more of claims 26 and 27 of United States Patent No. 6,538,908 and that are manufactured abroad by or on behalf of, or imported by or on behalf of, SG, or any of its affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns, and LCD computer monitors, AC printer adapters, and sample/demonstration boards that contain such infringing power supply controllers and that are manufactured abroad by or on behalf of, or imported by or on behalf of, SG, or any of its affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns, are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining term of the patent, except under license of the patent owner or as provided by law.

3. In accordance with PI's withdrawal of infringement allegations against certain of SG's products, the provisions of this Order shall not apply to SG's power supply controllers SG6105, SG68501, SG68502, SG38xx, SG5841, SG5848, SG6842J w/HV Start, SG6846, SG6846A, SG6848, SG6848x, SG6849, SG6850, and SG69xx.

4. When the United States Bureau of Customs and Border Protection (“Customs”) is unable to determine by inspection whether power supply controllers, LCD computer monitors, AC printer adapters, or sample/demonstration boards fall within the scope of this Order, it may, in its discretion, accept a certification, pursuant to procedures specified and deemed necessary by Customs, from persons seeking to import said products that they are familiar with the terms of this Order, that they have made appropriate inquiry, and thereupon state that, to the best of their knowledge and belief, the products being imported are not excluded from entry under paragraphs 1 or 2 of this Order. At its discretion, Customs may require persons who have provided the certification described in this paragraph to furnish such records or analyses as are necessary to substantiate the certification.

5. In accordance with 19 U.S.C. 1337(l), the provisions of this Order shall not apply to power supply controllers, LCD computer monitors, AC printer adapters, or sample/demonstration boards containing the same that are imported by and for the use of the United States, or imported for, and to be used for, the United States with the authorization or consent of the Government.

6. The Commission may modify this Order in accordance with the procedures described in section 210.76 of the Commission's Rules of Practice and Procedure, 19 CFR 210.76.

7. The Secretary shall serve copies of this Order upon each party of record in this investigation and upon the Department of Health and Human Services, the Department of Justice, the Federal Trade Commission, and the Bureau of Customs and Border Protection.

8. Notice of this Order shall be published in the Federal Register.

By Order of the Commission.

Issued: February 27, 2009.

Marilyn R. Abbott,

Secretary to the Commission.