Federal Register / Vol. 65, No. 204 / Friday, October 20, 2000 / Notices 63095

terminal on (202) 205–1810. Public

documents are available for

downloading from the Commission’s

Internet server (http://www.usitc.gov).

General information concerning the

Commission may also be obtained by

accessing its Internet server.

Issued October 16, 2000.

By order of the Commission.

Donna R. Koehnke,

Secretary.

[FR Doc. 00–27058 Filed 10–19–00; 8:45 am]

BILLING CODE 7020–02–P

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.

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

63096 Federal Register / Vol. 65, No. 204 / Friday, October 20, 2000 / Notices

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. Hearingimpaired 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

INTERNATIONAL TRADE

COMMISSION

[Inv. No. 337–TA–434]

Certain Magnetic Resonance Injection

Systems and Components Thereof;

Notice of Decision To Extend the

Deadline for Determining Whether To

Review an Initial Determination

Granting a Motion for Summary

Determination of Invalidity

AGENCY: International Trade

Commission.

ACTION: Notice.

SUMMARY: Notice is hereby given that

the U.S. International Trade

Commission has determined to extend

by forty (40) days, or until December 6,

2000, the deadline for determining

whether to review an initial

determination (ID) (Order No. 16) issued

by the presiding administrative law

judge (ALJ) in the above-captioned

investigation.

FOR FURTHER INFORMATION CONTACT: Jean

Jackson, Esq., Office of the General

Counsel, U.S. International Trade

Commission, 500 E Street, SW.,

Washington, DC 20436, telephone (202)

205–3104. 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).

SUPPLEMENTARY INFORMATION: The

Commission instituted this investigation

on May 26, 2000, based on a complaint

filed by Medrad, Inc. of Indianola,

Pennsylvania. The complaint alleged a

violation of section 337 of the Tariff Act

of 1930, 337 U.S.C. 1337, based on

infringement of U.S. Letters Patent Re.

36,648, (the ’648 patent) owned by

complainant. The respondents named in

the investigation are Nemoto Kyorindo

Co., Ltd. of Tokyo, Japan; LiebelFlarshiem Co. of Cincinnati Ohio; and

Mallinckrodt Inc., a New York

corporation based in Hazelwood, Mo. 65

Fed. Reg. 34231. On September 26,

2000, the ALJ issued an ID finding the

’648 patent invalid due to certain

omissions that occurred during patent

reissue proceedings at the U.S. Patent

and Trademark Office.

This action is taken under the

authority of section 337 of the Tariff Act

of 1930, 19 U.S.C. 1337, and section

210.42(h)(3) of the Commission of

Practice and Procedure, 19 C.F.R.

210.42(h)(3).

Copies of the nonconfidential version

of the ID and all other nonconfidential