[Federal Register Volume 66, Number 110 (Thursday, June 7, 2001)]
[Notices]
[Pages 30751-30752]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-14302]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-395]


In the Matter of Certain Eprom, Eeprom, Flash Memory, and Flash 
Microcontroller Semiconductor Devices, and Products Containing Same; 
Notice of Final Determination of no Violation of Section 337 of the 
Tariff Act of 1930 as to Macronix Respondents on Remand From the U.S. 
Court of Appeals for the Federal Circuit

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 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''),

[[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