2013-14011. Certain Static Random Access Memories and Products Containing Same; Commission Determination Affirming a Final Initial Determination Finding No Violation of Section 337; Termination of the Investigation

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined to affirm the initial determination issued by the presiding administrative law judge (“ALJ”) finding no violation of section 337 of the Tariff Act of 1930, 19 U.S.C. 1337, (“section 337”) in the above identified investigation. The investigation is terminated.

FOR FURTHER INFORMATION CONTACT:

Panyin A. Hughes, Office of the General Counsel, U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436, telephone [phone]. 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 [phone]. General information concerning the Commission may also be obtained by accessing its Internet server at http://www.usitc.gov. The public record for this investigation may be viewed on the Commission's electronic docket (EDIS) 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 [phone].

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation on July 28, 2011, based on a complaint filed by Cypress Semiconductor Corporation of San Jose, California (“Cypress”). 76 FR 45295 (July 28, 2011). The complaint 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 static random access memories and products containing the same by reason of infringement of various claims of United States Patent Nos. 6,534,805; 6,651,134; 6,262,937 and 7,142,477. The notice of investigation named the following entities as respondents: GSI Technology, Inc. of Sunnyvale, California (“GSI”); Alcatel-Lucent of Paris, France (“Alcatel-Lucent”); Alcatel-Lucent USA, Inc. of Murray Hill, New Jersey (“Alcatel-Lucent USA”); Telefonaktiebolaget LM Ericsson of Stockholm, Sweden (“Ericsson LM”); Ericsson, Inc. of Plano, Texas (“Ericsson”); Motorola Solutions, Inc. of Schaumburg, Illinois (“Motorola”); Motorola Mobility, Inc. of Libertyville, Illinois (“MMI”); Arrow Electronics, Inc. of Melville, New York (“Arrow”); Nu Horizons Electronics Corp. of Melville, New York (“Nu Horizons”); Cisco Systems, Inc. of San Jose, California (“Cisco”); Hewlett Packard Company/Tipping Point of Palo Alto, California (“HP”); Avnet, Inc. of Phoenix, Arizona (“Avnet”); Nokia Siemens Networks US, LLC of Irving, Texas (“Nokia US”); Nokia Siemens Networks B.V. of Zoetermeer, Netherlands (“Nokia”); and Tellabs of Naperville, Illinois (“Tellabs”). The Office of Unfair Import Investigations is not a party to this investigation.

The following respondents were terminated from the investigation based on settlement agreements, consent orders, or withdrawal of allegations from the complaint: Alcatel-Lucent, Alcatel-Lucent USA, Ericsson, Arrow, Nu Horizons, Nokia US, and Nokia. The following respondents were terminated from the investigation based upon grant of summary determination of no violation of section 337: MMI, HP, Motorola, Tellabs, and Ericsson LM. The following respondents remain in the investigation: GSI, Cisco, and Avnet (collectively, “Respondents”).

On October 25, 2012, the ALJ issued his final ID (“ID”), finding no violation of section 337 by the Respondents. Specifically, the ALJ found that the Commission has subject matter jurisdiction, in rem jurisdiction over the accused products, and in personam jurisdiction over the Respondents. The ALJ also found that the importation requirement of section 337 (19 U.S.C. 1337(a)(1)(B)) has been satisfied. The ALJ, however, found that the accused products do not infringe the asserted patent claims. The ALJ also found that Cypress failed to establish the existence of a domestic industry that practices the asserted patents under 19 U.S.C. 1337(a)(2) for failure to establish the technical prong of the domestic industry requirement. The ALJ did not consider the validity or enforceability of the asserted patents.

On November 7, 2012, Cypress filed a petition for review of the ID. That same day, Respondents filed a contingent petition for review. On November 15, 2012, the parties filed responses to the petition and contingent petition for review.

On December 21, 2012, the Commission determined to review the ID in its entirety and remanded the investigation to the ALJ to make findings on invalidity and unenforceability, issues litigated by the parties but not addressed in the final ID. On February 25, 2013, the ALJ issued his Remand ID (“RID”), finding that the asserted patents are enforceable and not invalid.

On March 11, 2013, Respondents filed a petition for review of the RID, challenging the ALJ's findings that the asserted patents are enforceable and not invalid. On March 19, 2013, Cypress filed a response to the petition for review.

On April 26, 2013, the Commission determined to review the RID in part, i.e., with respect to invalidity. See 78 FR 25767 (May 2, 2013). The Commission declined Respondents' request to take judicial notice of the on-going reexamination proceedings at the United States Patent and Trademark Office regarding the '805 patent and admit filings in that case into evidence in this investigation.

Having examined the record of this investigation, including the ALJ's final ID and RID, the petitions for review, and the responses thereto, the Commission has determined to affirm the ALJ's finding of no violation of section 337 with the modifications set forth in the Commission opinion issued herewith. Specifically, with respect to the '805 patent, the Commission affirms the following findings: (1) Cypress failed to prove that the accused products infringe the asserted claims; (2) Cypress failed to establish the technical prong of the domestic industry requirement; and (3) Respondents failed to establish by clear and convincing evidence that U.S. Patent No. 6,677,649 to Osada et al. or U.S. Patent No. 6,445,041 to Ishida et al. anticipate the asserted claims. The Commission reverses the ALJ's finding that the publication by Ishida, entitled “Novel 6T-SRAM Cell Technology Designed with Rectangular Patterns Scalable beyond 0.18 µm Generation and Desirable for Ultra High Speed Operation” does not anticipate the asserted claims of the '805 patent. Regarding the '134, '937, and '477 patents, the Commission affirms the following findings: (1) Cypress failed to prove that the accused products infringe the asserted claims; (2) Cypress failed to establish the technical prong of the domestic industry requirement; and (3) Respondents failed to establish by clear and convincing evidence that the cited prior art references anticipate the asserted claims. The Commission adopts the ID and RID in their entirety as modified and/or supplemented by the Commission opinion. The investigation is terminated.

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 sections 210.42-46 and 210.50 of the Commission's Rules of Practice and Procedure (19 CFR 210.42-46 and 210.50).

By order of the Commission.

Issued: June 7, 2013.

Lisa R. Barton,

Acting Secretary to the Commission.