[Federal Register Volume 63, Number 90 (Monday, May 11, 1998)]
[Notices]
[Pages 25867-25869]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-12587]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-395]


Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller 
Semiconductor Devices, and Products Containing Same; Notice of 
Commission Decision to Review Portions of an Initial Determination and 
Schedule for the Filing of Written Submissions on the Issues Under 
Review and on Remedy, the Public Interest, and Bonding

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 certain portions of the initial 
determination (ID) issued by the presiding administrative law judge 
(ALJ) on March 19, 1998, in the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT: John A. Wasleff, Esq., Office of the 
General Counsel, U.S. International Trade Commission, telephone 202-
205-3094.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on March 18, 1997, based on a complaint filed by Atmel Corporation. 62 
FR 13706. The complaint named five respondents: Sanyo Electric Co., 
Ltd., Winbond Electronics Corporation and Winbond Electronics North 
America Corporation (collectively ``Winbond''), Macronix International 
Co., Ltd. and Macronix America, Inc. (collectively ``Macronix''). 
Silicon Storage Technology, Inc. (``SST'') was permitted to intervene.
    In its complaint, Atmel alleged that respondents violated section 
337 by importing into the United States, selling for importation, and/
or selling in the United States after importation electronic products 
and/or components that infringe one or more of claim 1 of U.S. Letters 
Patent 4,511,811, claim 1 of U.S. Letters Patent 4,673,829, claim 1 of 
U.S. Letters Patent 4,974,565 (``the `565 patent'') and claims 1-9 of 
U.S. Letters Patent 4,451,903. The `565 patent was subsequently removed 
from the case. The presiding ALJ held an evidentiary hearing from 
December 8 to December 19, 1997.
    On March 19, 1998, the ALJ issued his final ID finding that there 
was no violation of section 337. He found that neither claim 1 of U.S. 
Letters Patent 4,511,811 (``the `811 patent''), nor claim 1 of U.S. 
Letters Patent 4,673,829 (``the `829 patent''), nor claim 1 or claim 9 
of

[[Page 25868]]

U.S. Letters Patent 4,451,903 (``the `903 patent'') was infringed by 
any product of the respondents or intervenor. He further found that the 
`903 patent was unenforceable because of waiver and implied license by 
legal estoppel, and that claims 2 through 8 of this patent are invalid 
for indefiniteness. He found that respondents and the intervenor had 
not demonstrated that any other claim at issue was invalid in view of 
any prior art before him, or that the `903 patent is void for failure 
to name a co-inventor. He found that complainant had not demonstrated 
that the `811 patent was entitled to an earlier date of invention than 
that appearing on the face of the patent. Finally, the ALJ found that 
there was a domestic industry with respect to all patents at issue.
    On March 31, 1998, complainant Atmel filed a petition for review of 
the ALJ's final ID. On April 1, 1998, respondent Winbond filed a 
petition for review of the ALJ's ID. The other respondents and 
intervenor SST filed contingent petitions for review, raising issues to 
be considered in the event that the Commission determined to review 
certain of the ALJ's findings.
    Having examined the record in this investigation, including the ID, 
the petitions for review, and the responses thereto, the Commission has 
determined not to review the issue of the validity of claims 2-8 of the 
`903 patent. The Commission has determined to review the remainder of 
the ID.
    On review, the Commission is particularly interested in receiving 
answers to the following questions:
    (1) What effect, if any, does the decision in Atmel Corp. v. 
Information Storage Devices, Inc., No. C 95-1987 FMS, slip op. (N.D. 
Cal. April 14, 1998), have on the Commission's consideration of the 
`811 and `829 patents? In view of Lannom Mfg. Co., Inc. v. USITC, 799 
F.2d 1572 (Fed. Cir. 1986), can the Commission consider the theory of 
invalidity relied upon by the court in Information Storage Devices with 
respect to the `811 and/or `829 patents?
    (2) Under the ALJ's construction of claim 1 of the `811 and `829 
patents:
    (a) What evidence of record bears on the issue of whether the 
insertion of a source follower between the conductive line that 
receives increments of charge in the accused cpl2 circuit and the 
relevant long conductive line (word line or source line) is a 
substantial change?
    (b) What evidence of record bears on the issue of whether the 
substitution of a two stage charge pump for a single stage charge pump 
is a substantial change?
    (3) Discuss whether the following is an appropriate construction of 
the disputed terms of claim 1 of the `811 and `829 patents:
    (a) Conductive lines having inherent distributed capacitance means 
every conductive line on a semiconductor chip positioned over the 
insulating layer. In discussing this term, please comment on the 
significance of the following testimony: Hearing Tr. at 1593 (12/13/98)
    (b) Means * * * for selecting one or more of said conductive lines 
means that some circuitry must select one or more conductive lines (as 
defined in part (a)), one of which receives the increments of charge 
from the charge pump.
    (c) Transfer means responsive to said selection means and connected 
to said voltage node for transferring increments of charge means any 
circuitry connected at some point to the voltage node receiving the 
capacitively coupled voltage pulses, and delivering increments of 
charge to the conductive line to be charged. Further assume that the 
transfer means must respond to the selection means at some point in the 
charging operation, and increments of charge refers simply to a 
periodic increase in the charge, without necessarily returning to zero.
    (d) Said transfer means including switching means * * * for 
blocking substantially all of the flow of current means any circuit 
device that prevents current from flowing from the high voltage supply 
to unselected lines.
    (4) Assuming that the disputed claim terms are interpreted as set 
forth in question 3, would the accused devices of respondents and 
intervenor contain circuit means that perform the identical specified 
functions? Each respondent and intervenor is requested to answer this 
part of the question with regard to its own accused devices.
    (5) If the disputed claim terms are interpreted as set forth in 
question 3, what evidence of record bears on the question of whether 
the circuit means for each element of the `811 and `829 patents is the 
equivalent for purposes of 35 U.S.C. 112para.6 of the putative circuit 
means employed in the accused devices? If you conclude that the circuit 
means are not 112para.6 equivalents, what evidence of record bears on 
the question of whether the distinguishing differences are substantial 
changes?
    (6) What evidence of record bears on the question of whether the 
Amrany patent is prior art to the `811 and `829 patents? More 
specifically:
    (a) What evidence of record corroborates the inventor's testimony 
that conception of the invention disclosed in the `811 and `829 patents 
occurred in May or June 1981?
    (b) What evidence of record bears on the issue of when the 
invention disclosed in the `811 and `829 patents was reduced to 
practice?
    (c) What evidence of record bears on the issue of due diligence 
from June 1981 until January 15, 1982?
    (7) If the disputed claim terms are interpreted as set forth in 
question 3, are claim 1 of the `811 patent and claim 1 of the `829 
patent valid in view of the prior art of record, including the Amrany 
reference?
    (8) If the disputed claim terms are interpreted as set forth in 
question 3, do the Atmel AT45 and AT49 parts and the SEEQ parts 
practice the `811 and `829 patents?
    (9) In what way would any agreement between SEEQ and JEDEC redound 
to the benefit of intervenor and respondents? Is there any evidence of 
record that intervenor or any of the respondents are third party 
beneficiaries?
    (10) Assuming that the interaction of SEEQ with JEDEC resulted in a 
standing offer to every company in the industry to negotiate a royalty 
free license to the technology embodied in the `903 patent, is there 
any evidence of record that intervenor or any of the respondents 
accepted this offer before the filing of the complaint in this 
investigation?
    (11) What evidence of record might establish an implied license by 
equitable estoppel with respect to the intervenor or any of the 
respondents?
    (12) Given the facts of this case, can Mr. Jordan be the sole 
inventor of a patent with claim elements drafted in means plus function 
form?
    (13) Discuss whether the following is an appropriate construction 
of the disputed terms of claim 1 of the `903 patent:
    (a) Primary circuit means all circuitry that would be present on a 
semiconductor chip before the addition of circuitry needed to implement 
the invention disclosed in the `903 patent.
    (b) Product information array disposed on the semiconductor chip 
adjacent said primary circuit means that the memory devices necessary 
to contain the claimed product information are fabricated on the same 
integrated circuit chip as the primary circuit, as defined in part (a) 
above, but not interspersed with the primary circuit.
    (c) Access means for receiving first and second signals and for 
selecting said primary circuit . . . [and] selecting said product 
information array means the circuitry needed to make the logic decision 
whether the normal output of the primary circuit or the information in 
the product information array is being

[[Page 25869]]

requested by the user. Further assume that zero volts or the absence of 
any input are included in the universe of inputs that may be first and 
second signals.
    (d) Output means for providing output signals representative of the 
information stored means the circuitry needed to translate internal 
logic signal(s) representative of the stored information into a signal 
suitable to drive devices external to the chip, according to the output 
drive specifications of the chip in question.
    (14) If the disputed claim terms are interpreted as assumed in 
question 13, do the accused devices of respondents and intervenor 
infringe this claim? Each respondent and intervenor is requested to 
answer this part of the question with regard to its own accused 
devices.
    (15) If the disputed claim terms are interpreted as set forth in 
question 13, is claim 1 of the `903 patent valid in view of the prior 
art of record?
    (16) If the disputed claim terms are interpreted as set forth in 
question 13, do the Atmel AT27, AT29, and AT49 parts practice the `903 
patent?
    In connection with the final disposition of this investigation, the 
Commission may issue (1) an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
cease and desist orders that could result in respondents 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 that either 
are adversely affecting it or are likely to do so. For background 
information, see the Commission Opinion, In the Matter of Certain 
Devices for Connecting Computers via Telephone Lines, Inv. No. 337-TA-
360.
    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 President has 60 
days to approve or disapprove the Commission's action. During this 
period, the subject articles would be entitled to enter the United 
States under a bond, in an amount to be 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.

Written Submissions

    The parties to the investigation are requested to file written 
submissions on the issues under review. The submissions should be 
concise and thoroughly referenced to the record in this investigation, 
including references to exhibits and testimony. Additionally, the 
parties to the investigation, interested government agencies, and any 
other interested persons are encouraged to file written submissions on 
the issues of remedy, the public interest, and bonding. Such 
submissions should address the March 19, 1998 recommended determination 
of the ALJ. Complainant and the Commission investigative attorney are 
also requested to submit proposed remedial orders for the Commission's 
consideration. The written submissions and proposed remedial orders 
must be filed no later than the close of business on May 20, 1998. 
Reply submissions must be filed no later than May 28, 1998. No further 
submissions will be permitted unless otherwise ordered by the 
Commission.
    Persons filing written submissions must file with the Office of the 
Secretary the original and 14 true copies thereof on or before the 
deadlines stated above. Any person desiring to submit a document (or 
portion thereof) to the Commission in confidence must request 
confidential treatment unless the information has 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 201.6. Documents for which confidential treatment 
is granted by the Commission will be treated accordingly. All 
nonconfidential written submissions will be available for public 
inspection at the Office of the Secretary.
    This action is taken under the authority of section 337 of the 
Tariff Act of 1930 (19 U.S.C. 1337) and Sec. 210.42-.45 of the 
Commission's Rules of Practice and Procedure (19 CFR 210.42-.45).
    Copies of the public version of the ID 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, S.W., Washington, D.C. 
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: May 6, 1998.

    By order of the Commission.
Donna R. Koehnke,
Secretary.
[FR Doc. 98-12587 Filed 5-8-98; 8:45 am]
BILLING CODE 7020-02-P