[Federal Register Volume 74, Number 23 (Thursday, February 5, 2009)]
[Notices]
[Pages 6175-6177]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-2401]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-605]


 In the Matter of Certain Semiconductor Chips With Minimized Chip 
Package Size and Products Containing Same; Notice of Commission 
Decision To Review in Part a Final Determination Finding No Violation 
of Section 337

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 in part the presiding 
administrative law judge's (``ALJ'') final initial determination 
(``ID'') issued on December 1, 2008 finding no violation of section 337 
of the Tariff Act of 1930, 19 U.S.C. 1337 in the above-captioned 
investigation.

FOR FURTHER INFORMATION CONTACT: Megan M. Valentine, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone (202) 708-2301. 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 (202) 205-2000. 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 (202) 205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on May 21, 2007, based on a complaint filed by Tessera, Inc. of San 
Jose, California against Spansion, Inc. and Spansion, LLC, both of 
Sunnyvale, California; QUALCOMM, Inc. of San Diego, California; AT1 
Technologies of Thornhill, Ontario, Canada; Motorola, Inc. of 
Schaumburg, Illinois; STMicroelectronics N.V. of Geneva, Switzerland; 
and Freescale Semiconductor, Inc. of Austin, Texas. 72 FR 28522 (May 
21, 2007). The complaint alleges violations of section 337 in the 
importation into the United States, the sale for importation, and the 
sale within the United States after importation of certain 
semiconductor chips with minimized chip package size or products 
containing same by reason of infringement of one or more claims of U.S. 
Patent Nos. 5,852,326, and 6,433,419.
    On December 1, 2008, the ALJ issued his final ID finding no 
violation of section 337 by Respondents. The ID included the ALJ's 
recommended determination on remedy and bonding. In his ID, the ALJ 
found that Respondents' accused products do not infringe asserted 
claims 1, 2, 6, 12, 16-19, 21, 24-26, and 29 of the `326 patent. The 
ALJ also found that Respondents' accused products do not infringe 
asserted claims 1-11, 14, 15, 19, and 22-24 of the `419 patent. The ALJ 
additionally found that the asserted claims of the `326 and `419 
patents are not invalid for failing to satisfy the enablement 
requirement or the written description requirement of 35 U.S.C. 112 1. 
The ALJ further found that the asserted claims of the `326 and `419 
patents are not invalid as indefinite of 35 U.S.C. 112 2. The ALJ also 
found that the asserted claims of the `326 and `419 patents are not 
invalid under 35 U.S.C. 102 for anticipation or under 35 U.S.C. 103 for 
obviousness. Finally, the ALJ found that an industry in the United 
States exists with respect to the `326 and `419 patents as required by 
19 U.S.C. 1337(a)(2) and (3).
    On December 15, 2008, Tessera and the Commission Investigative 
Attorney (``IA'') filed separate petitions seeking review of the ALJ's 
determination concerning non-infringement of the asserted claims of the 
`326 and `419 patents. Also on December 15, 2008, Respondents filed 
various contingent petitions seeking review of certain aspects of the 
ALJ's findings as concern both the `326 and `419 patents in the event 
that the Commission determines to review the ID's findings concerning 
non-infringement. On December 23, 2008, Respondents filed an opposition 
to Tessera's and the IA's petitions for review and Tessera and the IA 
filed

[[Page 6176]]

separate responses to Respondents' various contingent petitions for 
review.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petitions for review, and the responses thereto, 
the Commission has determined to review the final ID in part. 
Specifically, the Commission has determined to review the ALJ's finding 
that Respondents' accused devices do not infringe asserted claims 1, 2, 
6, 12, 16-19, 21, 24, and 29 of the `326 patent and asserted claims 1-
8, 9-11, 14, 15, 19, and 22-24 of the `419 patent. The Commission has 
further determined to review the ALJ's finding that Tessera has waived 
any argument that the accused products indirectly infringe the asserted 
patents. The Commission has also determined to review the ALJ's finding 
that the Motorola's OMPAC invention does not anticipate the asserted 
patents under 35 U.S.C. 102(b). Finally, the Commission has determined 
to review the ALJ's finding that the Motorola's OMPAC invention does 
not anticipate the asserted patents under 35 U.S.C. 102(g). The 
Commission has determined not to review the remaining issues decided in 
the ID.
    The parties are requested to brief their positions on the issues 
under review with reference to the applicable law and the evidentiary 
record. In connection with its review, the Commission is particularly 
interested in responses to the following questions:
    1. Please address how the absence of the compliant layer affects 
the effective CTE of the baseline packages in the sense of the material 
properties of the structures remaining in the baseline. Specifically, 
to what extent does the CTE of the compliant layer materials affect the 
effective CTE of the actual packages as compared to their corresponding 
baseline packages? Also, how specifically do the substituted materials 
in the baseline packages affect the effective CTE of the baseline 
packages?
    2. Please address whether Dr. Qu's plastic work analysis can be 
isolated to the validated range of the finite element analysis 
(``FEA'') models, and if so, whether the validated results are 
sufficient to satisfy the preponderance of the evidence standard for 
infringement.
    3. Please address whether Tessera may prove infringement by relying 
on multiple tests rather than one test. In his first test, Dr. Qu 
demonstrated the existence of terminal-to-chip displacement and its 
effect on improved reliability in the accused chips by comparing the 
on-board behavior of FEA models of the accused packages to the on-board 
behavior of FEA models of their corresponding baseline packages. In his 
second test, Dr. Qu showed that the accused chips exhibit improved 
reliability under external loads by directly applying simulated 
external loads to the accused packages and their corresponding baseline 
packages. Was it sufficient that Dr. Qu showed the required features of 
the claimed movement terminal-to-chip displacement and improved 
reliability under application of external loads without directly 
showing terminal-to-chip displacement due to external loads?
    4. Please address whether Motorola exercised reasonable diligence 
in reducing the OMPAC invention to practice by filing the applications 
leading to U.S. Patent Nos. 5,241,133 and 5,216,278, and whether the 
confidentiality agreement between Motorola and Citizen Watch amounted 
to ``suppression'' and/or ``concealment'' of the OMPAC invention.
    In connection with the final disposition of this investigation, the 
Commission may (1) issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue one or more cease and desist orders that could result in the 
respondent(s) 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 either are adversely affecting it or likely to do so. 
For background, see In the Matter of Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 
(December 1994) (Commission Opinion).
    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 U.S. Trade 
Representative, as delegated by the President, has 60 days to approve 
or disapprove the Commission's action. See Presidential Memorandum of 
July 21, 2005, 70 FR 43251 (July 26, 2005). During this period, the 
subject articles would be entitled to enter the United States under 
bond, in an amount 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 if a remedy is ordered.
    Written Submissions: The parties to the investigation are requested 
to file written submissions on the issues identified in this notice. 
Parties to the investigation, interested government agencies, and any 
other interested parties are encouraged to file written submissions on 
the issues of remedy, the public interest, and bonding. Such 
submissions should address the recommended determination by the ALJ on 
remedy and bonding.
    In addition, with respect to the limited exclusion order (``LEO'') 
sought by complainant, please address whether the Federal Circuit's 
decision in Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 
2008), has any impact on whether unnamed importers are covered by the 
LEO. Cf. Additional Views of Chairman Shara L. Aranoff, Vice Chairman 
Daniel R. Pearson, and Commissioner Deanna Tanner Okun in Certain GPS 
Devices and Products Containing Same, 337-TA-602.''
    Complainants and the IA are also requested to submit proposed 
remedial orders for the Commission's consideration. Complainants are 
also requested to state the dates that the patents expire and the HTSUS 
numbers under which the accused products are imported. The written 
submissions and proposed remedial orders must be filed no later than 
close of business on Friday, February 13, 2009. Reply submissions must 
be filed no later than the close of business on Monday, February 23, 
2009. No further submissions on these issues will be permitted unless 
otherwise ordered by the Commission.
    Persons filing written submissions must file the original document 
and 12 true copies thereof on or before the deadlines stated above with 
the Office of the Secretary. Any person desiring to submit a document 
to the Commission in confidence must request confidential treatment 
unless the information has

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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 210.6. Documents for which confidential 
treatment by the Commission is sought will be treated accordingly. All 
nonconfidential written submissions will be available for public 
inspection at the Office of the Secretary.
    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).

    Issued: January 30, 2009.

    By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. E9-2401 Filed 2-4-09; 8:45 am]
BILLING CODE 7020-02-P