[Federal Register Volume 63, Number 90 (Monday, May 11, 1998)]
[Notices]
[Pages 25867-25869]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-12587]
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INTERNATIONAL TRADE COMMISSION
[Inv. No. 337-TA-395]
Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller
Semiconductor Devices, and Products Containing Same; Notice of
Commission Decision to Review Portions of an Initial Determination and
Schedule for the Filing of Written Submissions on the Issues Under
Review and on 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 review certain portions of the initial
determination (ID) issued by the presiding administrative law judge
(ALJ) on March 19, 1998, in the above-captioned investigation.
FOR FURTHER INFORMATION CONTACT: John A. Wasleff, Esq., Office of the
General Counsel, U.S. International Trade Commission, telephone 202-
205-3094.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on March 18, 1997, based on a complaint filed by Atmel Corporation. 62
FR 13706. The complaint named five respondents: Sanyo Electric Co.,
Ltd., Winbond Electronics Corporation and Winbond Electronics North
America Corporation (collectively ``Winbond''), Macronix International
Co., Ltd. and Macronix America, Inc. (collectively ``Macronix'').
Silicon Storage Technology, Inc. (``SST'') was permitted to intervene.
In its complaint, Atmel alleged that respondents violated section
337 by importing into the United States, selling for importation, and/
or selling in the United States after importation electronic products
and/or components that infringe one or more of claim 1 of U.S. Letters
Patent 4,511,811, claim 1 of U.S. Letters Patent 4,673,829, claim 1 of
U.S. Letters Patent 4,974,565 (``the `565 patent'') and claims 1-9 of
U.S. Letters Patent 4,451,903. The `565 patent was subsequently removed
from the case. The presiding ALJ held an evidentiary hearing from
December 8 to December 19, 1997.
On March 19, 1998, the ALJ issued his final ID finding that there
was no violation of section 337. He found that neither claim 1 of U.S.
Letters Patent 4,511,811 (``the `811 patent''), nor claim 1 of U.S.
Letters Patent 4,673,829 (``the `829 patent''), nor claim 1 or claim 9
of
[[Page 25868]]
U.S. Letters Patent 4,451,903 (``the `903 patent'') was infringed by
any product of the respondents or intervenor. He further found that the
`903 patent was unenforceable because of waiver and implied license by
legal estoppel, and that claims 2 through 8 of this patent are invalid
for indefiniteness. He found that respondents and the intervenor had
not demonstrated that any other claim at issue was invalid in view of
any prior art before him, or that the `903 patent is void for failure
to name a co-inventor. He found that complainant had not demonstrated
that the `811 patent was entitled to an earlier date of invention than
that appearing on the face of the patent. Finally, the ALJ found that
there was a domestic industry with respect to all patents at issue.
On March 31, 1998, complainant Atmel filed a petition for review of
the ALJ's final ID. On April 1, 1998, respondent Winbond filed a
petition for review of the ALJ's ID. The other respondents and
intervenor SST filed contingent petitions for review, raising issues to
be considered in the event that the Commission determined to review
certain of the ALJ's findings.
Having examined the record in this investigation, including the ID,
the petitions for review, and the responses thereto, the Commission has
determined not to review the issue of the validity of claims 2-8 of the
`903 patent. The Commission has determined to review the remainder of
the ID.
On review, the Commission is particularly interested in receiving
answers to the following questions:
(1) What effect, if any, does the decision in Atmel Corp. v.
Information Storage Devices, Inc., No. C 95-1987 FMS, slip op. (N.D.
Cal. April 14, 1998), have on the Commission's consideration of the
`811 and `829 patents? In view of Lannom Mfg. Co., Inc. v. USITC, 799
F.2d 1572 (Fed. Cir. 1986), can the Commission consider the theory of
invalidity relied upon by the court in Information Storage Devices with
respect to the `811 and/or `829 patents?
(2) Under the ALJ's construction of claim 1 of the `811 and `829
patents:
(a) What evidence of record bears on the issue of whether the
insertion of a source follower between the conductive line that
receives increments of charge in the accused cpl2 circuit and the
relevant long conductive line (word line or source line) is a
substantial change?
(b) What evidence of record bears on the issue of whether the
substitution of a two stage charge pump for a single stage charge pump
is a substantial change?
(3) Discuss whether the following is an appropriate construction of
the disputed terms of claim 1 of the `811 and `829 patents:
(a) Conductive lines having inherent distributed capacitance means
every conductive line on a semiconductor chip positioned over the
insulating layer. In discussing this term, please comment on the
significance of the following testimony: Hearing Tr. at 1593 (12/13/98)
(b) Means * * * for selecting one or more of said conductive lines
means that some circuitry must select one or more conductive lines (as
defined in part (a)), one of which receives the increments of charge
from the charge pump.
(c) Transfer means responsive to said selection means and connected
to said voltage node for transferring increments of charge means any
circuitry connected at some point to the voltage node receiving the
capacitively coupled voltage pulses, and delivering increments of
charge to the conductive line to be charged. Further assume that the
transfer means must respond to the selection means at some point in the
charging operation, and increments of charge refers simply to a
periodic increase in the charge, without necessarily returning to zero.
(d) Said transfer means including switching means * * * for
blocking substantially all of the flow of current means any circuit
device that prevents current from flowing from the high voltage supply
to unselected lines.
(4) Assuming that the disputed claim terms are interpreted as set
forth in question 3, would the accused devices of respondents and
intervenor contain circuit means that perform the identical specified
functions? Each respondent and intervenor is requested to answer this
part of the question with regard to its own accused devices.
(5) If the disputed claim terms are interpreted as set forth in
question 3, what evidence of record bears on the question of whether
the circuit means for each element of the `811 and `829 patents is the
equivalent for purposes of 35 U.S.C. 112para.6 of the putative circuit
means employed in the accused devices? If you conclude that the circuit
means are not 112para.6 equivalents, what evidence of record bears on
the question of whether the distinguishing differences are substantial
changes?
(6) What evidence of record bears on the question of whether the
Amrany patent is prior art to the `811 and `829 patents? More
specifically:
(a) What evidence of record corroborates the inventor's testimony
that conception of the invention disclosed in the `811 and `829 patents
occurred in May or June 1981?
(b) What evidence of record bears on the issue of when the
invention disclosed in the `811 and `829 patents was reduced to
practice?
(c) What evidence of record bears on the issue of due diligence
from June 1981 until January 15, 1982?
(7) If the disputed claim terms are interpreted as set forth in
question 3, are claim 1 of the `811 patent and claim 1 of the `829
patent valid in view of the prior art of record, including the Amrany
reference?
(8) If the disputed claim terms are interpreted as set forth in
question 3, do the Atmel AT45 and AT49 parts and the SEEQ parts
practice the `811 and `829 patents?
(9) In what way would any agreement between SEEQ and JEDEC redound
to the benefit of intervenor and respondents? Is there any evidence of
record that intervenor or any of the respondents are third party
beneficiaries?
(10) Assuming that the interaction of SEEQ with JEDEC resulted in a
standing offer to every company in the industry to negotiate a royalty
free license to the technology embodied in the `903 patent, is there
any evidence of record that intervenor or any of the respondents
accepted this offer before the filing of the complaint in this
investigation?
(11) What evidence of record might establish an implied license by
equitable estoppel with respect to the intervenor or any of the
respondents?
(12) Given the facts of this case, can Mr. Jordan be the sole
inventor of a patent with claim elements drafted in means plus function
form?
(13) Discuss whether the following is an appropriate construction
of the disputed terms of claim 1 of the `903 patent:
(a) Primary circuit means all circuitry that would be present on a
semiconductor chip before the addition of circuitry needed to implement
the invention disclosed in the `903 patent.
(b) Product information array disposed on the semiconductor chip
adjacent said primary circuit means that the memory devices necessary
to contain the claimed product information are fabricated on the same
integrated circuit chip as the primary circuit, as defined in part (a)
above, but not interspersed with the primary circuit.
(c) Access means for receiving first and second signals and for
selecting said primary circuit . . . [and] selecting said product
information array means the circuitry needed to make the logic decision
whether the normal output of the primary circuit or the information in
the product information array is being
[[Page 25869]]
requested by the user. Further assume that zero volts or the absence of
any input are included in the universe of inputs that may be first and
second signals.
(d) Output means for providing output signals representative of the
information stored means the circuitry needed to translate internal
logic signal(s) representative of the stored information into a signal
suitable to drive devices external to the chip, according to the output
drive specifications of the chip in question.
(14) If the disputed claim terms are interpreted as assumed in
question 13, do the accused devices of respondents and intervenor
infringe this claim? Each respondent and intervenor is requested to
answer this part of the question with regard to its own accused
devices.
(15) If the disputed claim terms are interpreted as set forth in
question 13, is claim 1 of the `903 patent valid in view of the prior
art of record?
(16) If the disputed claim terms are interpreted as set forth in
question 13, do the Atmel AT27, AT29, and AT49 parts practice the `903
patent?
In connection with the final disposition of this investigation, the
Commission may issue (1) an order that could result in the exclusion of
the subject articles from entry into the United States, and/or (2)
cease and desist orders that could result in 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 that either
are adversely affecting it or are likely to do so. For background
information, see the Commission Opinion, In the Matter of Certain
Devices for Connecting Computers via Telephone Lines, Inv. No. 337-TA-
360.
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.
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 a bond, in an amount to be 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 under review. The submissions should be
concise and thoroughly referenced to the record in this investigation,
including references to exhibits and testimony. Additionally, the
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 March 19, 1998 recommended determination
of the ALJ. Complainant and the Commission investigative attorney are
also requested to submit proposed remedial orders for the Commission's
consideration. The written submissions and proposed remedial orders
must be filed no later than the close of business on May 20, 1998.
Reply submissions must be filed no later than May 28, 1998. No further
submissions will be permitted unless otherwise ordered by the
Commission.
Persons filing written submissions must file with the Office of the
Secretary the original and 14 true copies thereof on or before the
deadlines stated above. Any person desiring to submit a document (or
portion thereof) to the Commission in confidence must request
confidential treatment unless the information has already been granted
such treatment during the proceedings. All such requests should be
directed to the Secretary of 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
is granted by the Commission will be treated accordingly. All
nonconfidential written submissions will be available for public
inspection at the Office of the Secretary.
This action is taken under the authority of section 337 of the
Tariff Act of 1930 (19 U.S.C. 1337) and Sec. 210.42-.45 of the
Commission's Rules of Practice and Procedure (19 CFR 210.42-.45).
Copies of the public version of the ID and all other
nonconfidential 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, S.W., Washington, D.C.
20436, telephone 202-205-2000. Hearing-impaired persons are advised
that information on this matter can be obtained by contacting the
Commission's TDD terminal on 202-205-1810. General information
concerning the Commission may also be obtained by accessing its
Internet server (http://www.usitc.gov).
Issued: May 6, 1998.
By order of the Commission.
Donna R. Koehnke,
Secretary.
[FR Doc. 98-12587 Filed 5-8-98; 8:45 am]
BILLING CODE 7020-02-P
