01-19013. Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller Semiconductor Devices, and Products Containing Same; Notice of Decision To Deny Complainant Atmel's Petition for Reconsideration of the Commission's Final Determination of No ...

AGENCY:

International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined to deny complainant Atmel's petition for reconsideration of the Commission's final determination of no violation of section 337 of the Tariff Act of 1930 by respondent Macronix in the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT:

Timothy P. Monaghan, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone [phone].

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation on March 18, 1997, based upon a complaint filed by Atmel Corporation (“Atmel”) alleging that Sanyo Electric Co., Ltd. (“Sanyo”), Winbond Electronics Corporation of Taiwan and Winbond Electronics North America Corporation of California (collectively “Winbond”), and Macronix International Co., Ltd. and Macronix America, Inc. (collectively “Macronix”) had violated section 337 in the sale for importation, the importation, and the sale within the United States after importation of certain erasable programmable read only memory (“EPROM ”), electrically erasable programmable read only memory (“EEPROM”), flash memory, and flash microcontroller semiconductor devices thereof, by reason of infringement of one or more claims of U.S. Letters Patent 4,511,811 (“the '811 patent”), U.S. Letters Patent 4,673,829 (“the '829 patent”), and U.S. Letters Patent 4,451,903 (“the '903 patent”) assigned to Atmel. 62 Fed. Reg. 13706 (March 21, 1997). Silicon Storage Technology, Inc. (“SST”) intervened in the investigation.

On October 27, 2000, the Commission determined that there was a violation of section 337. The Commission found that the claims in issue of the '903 patent are valid, enforceable, and infringed by the imports of respondents Sanyo and Winbond (but not respondent Macronix), and found a violation of section 337 with regard to the '903 patent as to Sanyo and Winbond. As to the '811 and '829 patents, the Commission found that the claims in issue of those patents are valid and enforceable, but not infringed by the imports of respondents Sanyo, Winbond, or Macronix, and found no violation of section 337 with regard to the '811 and '829 patents.

The Commission determined that the appropriate form of relief was a limited exclusion order prohibiting the importation of EPROMs, EEPROMs, flash memories, and flash microcontroller semiconductor devices, and circuit boards containing those semiconductor memory devices, that infringe claims 1 or 9 of the '903 patent and that are manufactured and/or imported by or on behalf of Sanyo and Winbond. The Commission also determined that the public interest factors enumerated in section 337(d) do not preclude the issuance of the limited exclusion order and that the bond during the Presidential review period should be set at $0.78 per device.

Winbond appealed these findings to the U.S. Court of Appeals for the Federal Circuit regarding the '903 patent, as well as the Commission's claim construction and infringement findings, Winbond Electronics Corp. v. U.S. International Trade Commission, Case Nos. 01-1031-1032-1034 (the Winbond appeal). Atmel appealed to the Federal Circuit the Commission's finding that respondent Macronix did not infringe the asserted claims of the '903 patent and the Commission's findings of no violation with respect to the '811 and '829 patents, Atmel Corp. v. U.S. International Trade Commission, Case No. 01-1128 (the Atmel appeal). Atmel also appealed the temporal scope of the Commission's order finding that Atmel had waived its attorney client privilege and work product protections.

On January 30, 2001, the Federal Circuit issued an order on all issues raised in the Winbond appeal and on two issues raised in the Atmel appeal. The Court also issued an unpublished opinion on the issues of claim construction and infringement of the '903 patent.

In the Atmel appeal, the Court disagreed with some of the Commission's claim construction, and vacated the Commission's finding that Macronix does not infringe the asserted claims of the '903 patent. The Court remanded the case to the Commission to determine whether Macronix infringes under the claim construction found by the Court to be correct. On March 23, 2001, the Federal Circuit issued its mandate formally remanding this matter to the Commission for further fact finding and a determination on whether the Macronix devices infringe the '903 patent under the Federal Circuit's claim construction.

On June 1, 2001, the Commission determined that under the Federal Circuit's claim construction the accused Macronix devices do not infringe the claims at issue of the '903 patent, and terminated the remand investigation with a finding of no violation of section 337 by Macronix.

On June 18, 2001, Atmel filed a petition pursuant to rule 210.47 for reconsideration of the Commission's June 1, 2001, determination of no violation by Macronix. On June 25, 2001, Macronix filed a response to Atmel's petition for reconsideration. No other responses were filed.

This action is taken under the authority of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and rule 210.47 of the Commission's Rules of Practice and Procedure, 19 CFR 210.47.

Copies of the Commission Order 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, SW., Washington, DC 20436, telephone [phone]. 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). The public record for this investigation may be viewed on the Commission's electronic docket (EDIS-ON-LINE) at http://dockets.usitc.gov/​eol/​public.

Issued: July 26, 2001.

By order of the Commission.

Donna R. Koehnke,

Secretary.