E6-9972. In the Matter of Certain Audio Processing Integrated Circuits and Products Containing Same; Notice of Commission Decision To Remand a Portion of an Initial Determination Finding a Violation of Section 337, and To Extend the Target Date for ...

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined to remand a portion of the investigation to the presiding administrative law judge (“ALJ”). The Commission has also determined to extend the target date for completion of the investigation until September 15, 2006.

FOR FURTHER INFORMATION CONTACT:

Steven W. Crabb, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone [phone]. Copies of the public version of the ALJ's initial determination (“ID”) and all other nonproprietary 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 [phone].

General information concerning the Commission may also be obtained by accessing its Internet server (http://www.usitc.gov). The public record for this investigation may be viewed on the Commission's electronic docket (EDIS-ON-LINE) at http://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 April 18, 2005, based on a complaint filed on behalf of SigmaTel, Inc. (“complainant”) of Austin, Texas. 70 FR 20172. The complaint alleged violations of section 337 in the importation into the United States, sale for importation, and sale within the United States after importation of certain audio processing integrated circuits and products containing same by reason of infringement of claim 10 of U.S. Patent No. 6,137,279 (“the '279 patent”), which was subsequently terminated pursuant to complainant's motion, and claim 13 of U.S. Patent No. 6,633,187 (“the '187 patent”). Id. The notice of investigation named Actions Semiconductor Co. of Guangdong, China (“Actions”) as the only respondent.

On June 9, 2005, the ALJ issued an ID (Order No. 5) granting complainant's motion to amend the complaint and notice of investigation to add allegations of infringement of the previously asserted patents and to add an allegation of a violation of section 337 by reason of infringement of claims 1, 6, 9, and 13 of U.S. Patent No. 6,366,522 (“the '522 patent”). That ID was not reviewed by the Commission.

On October 13, 2005, the ALJ issued an ID (Order No. 9) granting complainant's motion to terminate the investigation as to the '279 patent. On October 31, 2005, the Commission determined not to review the ID.

On October 31, 2005, the ALJ issued an ID (Order No. 14) granting complainant's motion for summary determination that the importation requirement of section 337 has been satisfied. On November 1, 2005, the ALJ issued an ID (Order No. 15) granting complainant's motion for summary determination that complainant has satisfied the economic prong of the domestic industry requirement of section 337 for the patents in issue. Those IDs were not reviewed by the Commission.

On March 20, 2006, the ALJ issued his final ID and recommended determination on remedy and bonding. The ALJ concluded that there was a violation of section 337. Specifically, he found that claim 13 of the '187 patent was valid and infringed by Actions' accused product families 207X, 208X, and 209X. The ALJ also determined that claims 1, 6, 9, and 13 of the '522 patent were valid and infringed by Actions' accused product families 208X and 209X.

On April 3, 2006, respondent Actions petitioned for review of portions of the final ID. On April 10, 2006, complainant SigmaTel and the Commission investigative attorney (“IA”) filed responses in opposition to the petition for review.

On April 17, 2006, respondent Actions filed a motion for leave to file a reply to complainant SigmaTel's response to Actions' petition for review. On April 19, 2006, complainant SigmaTel filed a motion in opposition to Actions' motion. The Commission determined to deny Actions' motion for leave to file a reply.

On May 5, 2006, the Commission determined to review the ALJ's construction of a claim limitation of the '522 patent, infringement of the '522 patent, and whether SigmaTel met the technical prong of the domestic industry requirement in regard to the '522 patent. 71 FR 27512 (May 11, 2006). The Commission also determined to review the ALJ's claim construction of the term “memory” in claim 13 of the '187 patent. Id. The Commission declined to review the remainder of the ID. Id.

On May 15, 2006, the IA filed its brief on the issues under review and on remedy, the public interest, and bonding. On May 16, 2006, both SigmaTel and Actions filed briefs on the issues under review and on remedy, the public interest, and bonding.

On May 17, 2006, SigmaTel filed a motion to strike portions of Actions' initial brief concerning the issues under review or in the alternative for an extension of two days to respond. On May 19, 2006, Actions filed an opposition to SigmaTel's motion to strike. Also on May 19, 2006, the Chairman of the Commission granted the motion for the two-day extension, thus rendering the motion to strike moot.

On May 24, 2006, all parties filed responses to the initial briefs concerning the issues under review and on remedy, the public interest, and bonding.

Having examined the record of this investigation, including the ALJ's final ID and the submissions of the parties, the Commission has (1) determined to reverse the ALJ's construction of the claim phrase “produce the system clock control signal and power supply control signal based on a processing transfer characteristic of the computation engine” and provide as its own construction that both the system clock control signal and the power supply control signal are required to be produced during operation of the integrated circuit such that the voltage and the frequency of the integrated circuit are adjusted based on a processing transfer characteristic, but that the processing transfer characteristic is not determined in any particular manner; (2) determined to remand this investigation in part to the ALJ for the purpose of determining whether the accused products utilizing the version 952436 firmware infringe the '522 patent under the Commission's claim construction; (3) determined with respect to the accused products that do not use the version 952436 firmware, that the ALJ made sufficient findings to find infringement of the asserted claims of the '522 patent under our claim construction, and to adopt his findings with respect to those products; (4) determined that SigmaTel's 35XX products satisfy the technical prong of the domestic industry requirement with regard to the '522 patent under the Commission's claim construction; (5) determined to delete the term “firmware” from the ALJ's construction of the claim term “memory” in claim 13 of the '187 patent; (6) determined to defer addressing issues relating to remedy, public interest, and bonding, for both the '187 patent and the '522 patent until after the ALJ issues his initial determination on remand regarding the '522 patent; and (7) determined to extend the target date in the investigation until September 15, 2006.

Further, the Commission has determined not to consider Actions' discussion in its submissions on the issues under review with respect to the '187 patent because this discussion is outside the scope of the Commission's review.

This action is taken under the authority of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and in sections 210.45 and 210.51 of the Commission's Rules of Practice and Procedure (19 CFR 210.45, 210.51).

Issued: June 19, 2006.

By order of the Commission.

Marilyn R. Abbott,

Secretary to the Commission.