[Federal Register Volume 65, Number 204 (Friday, October 20, 2000)]
[Notices]
[Pages 63095-63096]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-27056]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-395]


Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller 
Semiconductor Devices, and Products Containing Same; Notice of Final 
Determination and Issuance of Limited Exclusion Order; Notice of Denial 
of Motions for Sanctions, for Attorney's Fees, and for Dismissal of 
Complaint

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 found a violation of section 337 of the Tariff Act of 
1930 (19 U.S.C. 1337) and has issued a limited exclusion order in the 
above-captioned investigation. The Commission has also determined to 
deny a motion for dismissal of Atmel's complaint for unclean hands and 
motions for sanctions and attorney's fees.

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 202-205-3152.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on March 18, 1997, based upon a complaint filed by Atmel Corporation 
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, 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 FR 13706 
(March 21, 1997). Silicon Storage Technology, Inc. (``SST'') was 
permitted to intervene in the investigation.
    On March 19, 1998, the presiding administrative law judge (``ALJ'') 
issued his final initial determination (``ID'') finding that 
respondents had not violated section 337, based on his finding that 
neither the '811 patent, the '829 patent, nor the '903 patent was 
infringed by any product imported and sold by respondents or 
intervenor. He also found, that the '903 patent is unenforceable 
because of waiver and implied license by legal estoppel, that claims 2-
8 of that patent are invalid for indefiniteness, but that the '903 
patent is not unenforceable for failure to name a co-inventor. 
Complainant Atmel petitioned for review of the ALJ's final ID, and on 
May 6, 1998 the Commission determined to review most of the ALJ's 
findings and requested written submissions on the issues of remedy, the 
public interest, and bonding. 63 FR 25867 (May 11, 1998).
    On review, the Commission determined that the '811 patent and the 
'829 patent were invalid on the basis of collateral estoppel in light 
of a U.S. district court decision (Atmel Corp. v. Information Storage 
Devices, Inc., No. C-95-1987-FMS, 1998 WL 184274 (N.D. Cal. April 14, 
1998)), and that the '903 patent was unenforceable for failure to name 
a co-inventor. The investigation was terminated with a finding of no 
violation of section 337.63 FR 37133 (July 9, 1998).
    On August 11, 1998, after issuance of the Commission opinion, Atmel 
filed a petition with the U.S. Patent and Trademark Office (``PTO'') to 
correct the inventorship of the '903 patent. The PTO granted Atmel's 
petition on August 18, 1998, and issued a certificate of correction on 
October 6, 1998.
    On September 8, 1998, Atmel filed with the Commission a ``Petition 
For Relief From Final Determination Finding U.S. Patent No. 4,451,903 
Unenforceable.'' Respondents and the Commission's Office of Unfair 
Import Investigations (``OUII'') filed responses to the petition. The 
Commission ruled on Atmel's petition on January 25, 1999. It determined 
to treat Atmel's petition as a petition for reconsideration, granted 
the petition, and reopened the record of the investigation for the 
limited purpose of resolving the issues arising from the PTO's issuance 
of the certificate of correction for the '903 patent. The investigation 
was remanded to the ALJ who issued an ID on May 17, 2000, finding that 
complainant Atmel had committed inequitable conduct at the PTO in the 
procurement of the certificate of correction for the '903 patent; that 
the inventors listed on the PTO certificate of correction are not the 
correct inventors; and that no inequitable conduct was shown to have 
taken place at the PTO in the prosecution of the original patent 
application that matured into the '903 patent.
    On May 30, 2000, Atmel petitioned for review of the ID of May 17, 
2000, and certain orders issued by the ALJ. Respondents, intervenor, 
and the Commission investigative attorney (``IA'') filed responses to 
Atmel's petition. On July 17, 2000, the Commission determined to review 
the ALJ's determination that the PTO certificate of correction for the 
'903 patent was procured inequitably; the ALJ's determination that the 
inventors named on the PTO certificate of correction are incorrect; the 
ALJ's ruling in Order No. 50 that Atmel had waived the attorney-client 
and attorney work product privileges; and the ALJ's ruling in Order No. 
69 that Atmel bore the burden of proof by clear and convincing evidence 
that the inventors shown on the PTO certificate of correction are the 
correct inventors. The Commission requested briefs on the issues under 
review, and posed briefing questions for the parties to answer. The 
Commission also requested written submissions on remedy, the public 
interest, and bonding. 65 FR 45406 (July 21, 2000).
    On August 28, 1998, Atmel appealed the Commission's ``no 
violation'' determination of July 2, 1998, to the U.S. Court of Appeals 
for the Federal Circuit. Sanyo, Winbond, Macronix, and SST intervened 
in support of the Commission. On November 6, 1998, Sanyo and Winbond 
moved to dismiss the portion of the appeal concerning the '903 patent. 
On December 8, 1998, the Federal Circuit stayed the appeal pending a 
ruling from the Commission on Atmel's then pending motion for the 
Commission to reconsider its prior determination on inventorship.
    On February 10, 1999, Winbond filed a petition for a writ of 
mandamus with the Federal Circuit. Winbond asked the Federal Circuit to 
direct the Commission to vacate its January 25, 1999, order remanding 
the inventorship issue to the ALJ. Winbond argued that the Commission 
was without authority to grant relief from its final determination of 
``no violation'' because

[[Page 63096]]

the case had been appealed to the Federal Circuit.
    The Federal Circuit denied Winbond's petition for a writ of 
mandamus on April 16, 1999, and remanded Atmel's appeal to the 
Commission, stating that ``[a]fter its proceedings are complete, the 
ITC shall issue a final determination encompassing Atmel's complaint 
regarding all three patents so that the parties may seek [judicial] 
review at that time.'' In Re Winbond Electronics Corporation and 
Winbond Electronics North America Corporation, Appeal No. 98-1580, 
Miscellaneous Docket No. 579 (Fed. Cir. April 16, 1999) (Mandate issued 
on June 7, 1999) at p. 4. As a result of this ruling, and the Federal 
Circuit's subsequent reversal of the U.S. district court decision in 
Atmel Corp. v. Information Storage Devices, Inc., all three Atmel 
patents at issue were before the Commission for final determination.
    The U.S. district court decision (Atmel Corp. v. Information 
Storage Devices, Inc., No. C-95-1987-FMS, 1998 WL 184274 (N.D. Cal. 
April 14, 1998)) was appealed by Atmel to the Federal Circuit. On 
December 28, 1999, the Federal Circuit reversed and remanded the case 
to the district court. Atmel Corp. v. Information Storage Devices, 
Inc., 198 F.3d 1374 (Fed. Cir. 1999).
    On April 3, 2000, the Commission issued an order allowing the 
parties to file main briefs and reply briefs setting forth their views 
on intervening developments in the law as they relate to the remaining 
issues in investigation concerning the '811 patent, the '829 patent, 
and the '903 patent (all issues other than inventorship).
    Having examined the record in this investigation, including the 
briefs and the responses thereto, the Commission determined, as noted, 
that there is a violation of section 337. More specifically, the 
Commission found that the claims in issue of the '903 patent are valid, 
enforceable (no incorrect inventorship), and infringed by the imports 
from intervenor SST and respondents Sanyo and Winbond (but not 
respondent Macronix), and found a violation of section 337 with regard 
to the '903 patent as to SST, 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 
intervenor SST or respondents Sanyo and Winbond (Atmel did not allege 
that Macronix infringed the claims in issue of the '811 or '829 
patents), and thus found no violation of section 337 with regard to the 
'811 and '829 patents. The Commission also determined to affirm the 
result of ALJ Order No. 50, which ordered the production of certain 
Atmel documents. The Commission also reversed Order No. 69 to the 
extent that it placed the burden of proving that the certificate of 
correction of the '903 patent listed the correct inventors on Atmel and 
vacated the ALJ's determination in Order No. 69 that PTO rule 324 does 
not comport with its enabling statute.
    The Commission also made determinations on the issues of remedy, 
the public interest, and bonding. The Commission determined that the 
appropriate form of relief is a limited exclusion order prohibiting the 
importation of EPROMs, EEPROMs, flash memories, and flash 
microcontroller semiconductor devices, and circuit boards containing 
such devices, that infringe claims 1 or 9 of the '903 patent 
manufactured by or on behalf of Sanyo and Winbond.
    The Commission also determined that the public interest factors 
enumerated in 19 U.S.C. 1337(d) do not preclude the issuance of the 
limited exclusion and that the bond during the Presidential review 
period should be set at $0.78 per device.
    The authority for the Commission's determinations is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in sections 210.45-210.51 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.45-210.51).
    Copies of the Commission order, the Commission opinion in support 
thereof, 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 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: October 16, 2000.

    By order of the Commission.
Donna R. Koehnke,
Secretary.
[FR Doc. 00-27056 Filed 10-19-00; 8:45 am]
BILLING CODE 7020-02-P