Certain Integrated Circuits, Processes for Making Same, and Products Containing Same; Notice of Final Determination and Issuance of Limited Exclusion Order

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) as to one claim of one patent and has issued a limited exclusion order in the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT:

Clara Kuehn, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone 202-205-3012. 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 ). Copies of the Commission order, the Commission opinion in support thereof, and all 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.

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation by notice published in the Federal Register on March 6, 2001. 66 FR 13567 (2001). The complainants were United Microelectronics Corporation, Hsinchu City, Taiwan; UMC Group (USA), Sunnyvale, CA; and United Foundry Service, Inc., Hopewell Junction, NY. Id. The Commission named two respondents, Silicon Integrated Systems Corp., Hsinchu City, Taiwan, and Silicon Integrated Systems Corporation, Sunnyvale, CA (collectively, “SiS”). Id. The complaint, as supplemented, alleged violations of section 337 in the importation, the sale for importation, and the sale within the United States after importation of certain integrated circuits and products containing same by reason of infringement of claims 1, 2, and 8 of U.S. Letters Patent 5,559,352 (“the '352 patent”) and claims 1, 3-16, and 19-21 of U.S. Letters Patent 6,117,345 (“the '345 patent”). Id. On November 2, 2001, the presiding administrative law judge (“ALJ”) issued an initial determination (“ID”) (ALJ Order No. 15) granting complainants” motion for summary determination on the issue of importation and denying respondents' motion for summary determination of lack of importation. That ID was not reviewed by the Commission. A tutorial session was held on November 5, 2001, and an evidentiary hearing was held from November 7, 2001, through November 16, 2001, and from December 10, 2001, through December 12, 2001. The ALJ issued his final ID on May 6, 2002, concluding that there was no violation of section 337. With respect to the '352 patent, the ALJ found that: Complainants have not established that the domestic industry requirement is met; none of respondents' accused devices infringe any asserted claim of the '352 patent literally or under the doctrine of equivalents; and claims 1 and 2 of the '352 patent are invalid as anticipated under 35 U.S.C. 102 and claim 8 of the '352 patent is invalid for obviousness under 35 U.S.C. 103. With respect to the '345 patent, the ALJ found each of the claims listed in the notice of investigation, i.e., claims 1, 3-16, 19-20, and 21, invalid as anticipated by and made obvious by certain prior art. The ALJ stated that, in their post-hearing filings, complainants asserted only claims 1, 3-5, 9, 11-13, and 20-21 of the '345 patent against respondents. He found that, if valid, each of the asserted claims of the '345 patent, i.e., claims 1, 3-5, 9, 11-13, and 20-21, is literally infringed by SiS's existing (or old) SiON manufacturing process, but that respondents' new N₂ O process does not infringe any asserted claim of the '345 patent. The ALJ further found that a domestic industry exists with respect to the '345 patent. On May 13, 2002, the ALJ issued his recommended determination on remedy and bonding. On May 20, 2002, complainants and the Commission investigative attorney (“IA”) petitioned for review of the subject ID, and respondents filed a contingent petition for review of the ALJ's final ID. On June 21, 2002, the Commission determined to review the ID in part. Specifically, the Commission determined to review and clarify that the ALJ found claim 13 of the '345 patent made obvious, but not anticipated, by the Tobben patent. The Commission also determined to review: (1) the ALJ's findings and conclusions of law regarding the '352 patent with respect to infringement of the asserted claims and domestic industry under the doctrine of equivalents; (2) the ALJ's finding that respondents' old E5 model ESD transistor does not infringe any asserted claim of the '352 patent, either literally or equivalently; (3) the ALJ's claim construction of the limitations “an ESD protection device” (claims 1, 2, and 8 of the '352 patent), “a gate” (claims 1 and 2), “gates” (claim 8), and “source/drain regions * * * with each source/drain region comprising” (claims 1, 2, and 8), and the ALJ's invalidity, domestic industry, and infringement findings and conclusions of law with respect to those limitations; (4) the ALJ's finding that claim 8 of the '352 patent is invalid as made obvious by a combination of prior art references; (5) whether the economic prong of the domestic industry requirement is met with respect to the '352 patent; (6) the ALJ's findings that the “second antireflective coating” (claim 1 and asserted dependent claims 3-8 of the '345 patent) and “cap layer” (claims 9-16, 19-20, and 21 of the '345 patent) are disclosed in the Tobben patent, and consequently (a) the ALJ's findings with respect to etching the second antireflective coating or cap layer (claims 4 and 12), (b) the ALJ's ultimate finding that the Tobben patent anticipates claims 1, 3-16, 19-20, and 21 of the '345 patent, and (c) the ALJ's conclusion that claim 13 is made obvious by the Tobben patent and other prior art; (7) the ALJ's conclusion that claim 13 of the '345 patent is invalid as obvious in light of the Tobben patent; and (8) the ALJ's conclusion that claims 1, 3-16, 19-20, and 21 of the '345 patent are invalid as made obvious by the Abernathey patent in combination with the Pan, Yagi, and/or Yota publications. The Commission determined not to review the remainder of the ID, including the ID's conclusions and findings of fact with respect to whether the Tobben patent is prior art to the '345 patent, infringement of the asserted claims of the '345 patent, domestic industry concerning the '345 patent, and failure to disclose the best mode of practicing the invention of the '345 patent. 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 the issues of remedy, the public interest, and bonding. 67 FR 43338. Initial briefs were filed on July 9, 2002, and reply briefs were filed on July 16, 2002, and July 17, 2002. Having examined the record in this investigation, including the briefs and the responses thereto, the Commission determined that there is a violation of section 337 as to claim 13 of the '345 patent, but no violation of the statute as to the remaining claims in issue of the '345 patent (viz., claims 1, 3-5, 9, 11-12, 20, and 21) and no violation as to the claims in issue of the '352 patent (viz., claims 1, 2, and 8). With respect to the '352 patent, the Commission determined to modify the ALJ's construction of certain limitations in the asserted claims of the '352 patent, and to affirm the ALJ's findings and conclusions that (a) the asserted claims are not infringed, and (b) complainants failed to establish the technical prong of the domestic industry requirement under the revised claim construction. The Commission also determined to affirm the ALJ's finding that claims 1 and 2 of the '352 patent are invalid as anticipated, to reverse the ALJ's finding that claim 8 of the '352 patent is invalid as made obvious, and to take no position as to whether complainants established the economic prong of the domestic industry requirement with respect to the '352 patent. With respect to the '345 patent, the Commission determined to vacate the ALJ's findings and conclusions as to invalidity with respect to claims 6-8, 10, 14-16, and 19; to reverse the ALJ's finding that claims 1, 3-5, 9, 11-12, 20, and 21 are invalid as anticipated; to affirm the ALJ's conclusion that claims 1, 3-5, 9, 11-12, 20, and 21 of the '345 patent are invalid as obvious; and to clarify that claim 13 is not anticipated and reverse the ALJ's conclusion that claim 13 is invalid as obvious. 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 unlicensed entry of integrated circuits, including chipsets and graphics chips, that are made by a process covered by claim 13 of U.S. Letters Patent 6,117,345 and manufactured by or on behalf of respondents, and motherboards containing such integrated circuits. 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 order, and that the bond during the Presidential review period should be set at 100 percent of the entered value of integrated circuits subject to the Commission's order and 39 percent of the entered value of motherboards containing such integrated circuits. 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).