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###### International Trade Commission

          - [Investigation No. 337-TA-395] 

# AGENCY:

U.S. International Trade Commission. 

# ACTION:

Notice. 

# SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined that there is no violation by Macronix International Co., Ltd. and Macronix America, Inc. of section 337 of the Tariff Act of 1930 in the above-captioned investigation. 

# 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”),                           ( print page 30752)                        and Macronix International Co., Ltd. and Macronix America, Inc. (collectively “Macronix”) had violated section 337 of the Tariff Act of 1930 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 October 16, 2000, the Commission determined that there is a violation of section 337 by Sanyo and Winbond with respect to the ’903 patent, but no violation with respect to the ’811 and ’829 patents, and issued 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. In reaching its determination, the Commission rejected respondents' arguments that the ’903 patent is unenforceable due to waiver and implied license, or to incorrect inventorship, or to inequitable conduct by Atmel in obtaining the certificate of correction from the PTO. 

                    Winbond appealed these findings as well as the Commission's claim construction and infringement findings to the U.S. Court of Appeals for the Federal Circuit.                     *Winbond Electonics Corp.*                     v.                     *U.S. International Trade Commission,*                     Case Nos. 01-1031-1032-1034 (the Winbond appeal). Atmel appealed the Commission's finding that respondent Macronix did not infringe the asserted claims of the ’903 patent and the Commission's findings of no violation with respect to the ’811 and ’829 patents. Atmel also appealed the temporal scope of the Commission's order finding that Atmel waived its attorney client privilege and work product protections.                     *Atmel Corp.*                     v.                     *U.S. International Trade Commission,*                     Case No. 01-1128 (the Atmel appeal)                 

On December 21, 2000, the Court ordered an expedited briefing and oral argument schedule for the Winbond appeal and the Atmel appeal. On December 28, 2000, the Court, responding to a motion for clarification filed by Atmel, ordered that the appeals on the ’811 and ’829 are not expedited. Oral arguments for both the Winbond appeal and the remaining portions of the Atmel appeal were held at the Federal Circuit on January 16, 2001. 

In an order issued on January 30, 2001, the Federal Circuit upheld the following determinations of the Commission: (1) That respondents have not shown that the ’903 patent is unenforceable due to inequitable conduct; (2) that respondents have not shown that the ’903 patent is unenforceable due to improper joinder in the inventorship of the ’903 patent; (3) that respondents have not shown that the ’903 patent is unenforceable due to waiver and implied license; (4) that Atmel waived its attorney-client privilege and work product protections dating back to January 1997. 

In the Atmel appeal, the Court disagreed with some of the Commission's claim constructions, and vacated the Commission's finding that Macronix did not infringe the asserted claims of the ’903 patent. The Court remanded the matter to the Commission to determine whether Macronix infringes under the claim construction found by the Court to be correct. Specifially, the Court stated that on remand that—

The Commission must make findings to determine whether the accused Macronix devices have the same or equivalent structures to: (1) A high voltage detection circuit and a decoder for the “access means”; and (2) an output buffer and output pins for the “output means.”

2001 WL 80412 at *9; slip op. at 18-19. 

On March 29, 2001, the Commission ordered Atmel, Macronix, and the Commission investigative attorney to brief the issues on remand from the Federal Circuit. The parties filed initial briefs on April 4, 2001, and reply briefs on April 11, 2001. 

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 the mandate from the Federal Circuit issued March 23, 2001, remanding this matter to the Commission for further findings on whether the Macronix devices infringe claims 1 or 9 of the ’903 patent under the Federal Circuit's claim construction. 

                    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*). General information concerning the Commission may also be obtained by accessing its Internet server (                    *http://www.usitc.gov*). The public record for this investigation may be viewed on the Commission's electronic docket (EDIS-ON-LINE) at                     *http://dockets.usitc.gov/​eol/​public.*

Issued: June 1, 2001.

By order of the Commission. 

Donna R. Koehnke, 

Secretary.

[FR Doc. 01-14302 Filed 6-6-01; 8:45 am] 

BILLING CODE 7020-02-P