Certain Semiconductor Memory Devices and Products Containing Same; Notice of Commission Decision to Review An Initial Determination Finding No Violation of Section 337 of the Tariff Act of 1930

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined to review in its entirety a final initial determination (ID) finding no violation of section 337 of the Tariff Act of 1930, as amended, 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, S.W., Washington, D.C. 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).

SUPPLEMENTARY INFORMATION:

The Commission ordered the institution of this investigation on September 18, 1998, based on a complaint filed on behalf of Micron Technology, Inc., of Boise, Idaho (“complainant”). Respondents are Mosel Vitelic, Inc., of Hsinchu City, Taiwan and Mosel Vitelic Corp. of San Jose, California. The notice of investigation was published in the Federal Register on September 25, 1998. 63 FR 51372 (1998).

The complaint alleged violations of section 337 in the importation, sale for importation, and sale after importation of certain semiconductor memory devices and products containing same that infringe claims of U.S. Letters Patents Nos. 5,514,245; 4,992,137; 4,436,584; and 5,486,129. Id. On May 17, 1999, the presiding administrative law judge (ALJ) granted complainant's motion for termination of the investigation as to the 245 patent. Complainant's current allegations of infringement concern 18 claims of the 137 patent, six claims of the 584 patent, and one claim of the 129 patent. An evidentiary hearing was held from May 19 through June 2, 1999.

The ALJ issued his final ID on November 29, 1999, concluding that there was no violation of section 337, based on the following findings: (a) complainant failed to establish the requisite domestic industry showing for any of the three patents at issue; (b) all asserted claims of the patents are invalid; (c) none of the asserted claims of the patents are infringed; and (d) all of the patents are unenforceable for inequitable conduct. On December 13, 1999, the ALJ issued his recommended determination on remedy and bonding, in the event the Commission concludes there is a violation of section 337.

On December 10, 1999, complainant filed a petition for review of the ID. The Commission investigative attorney (IA) also petitioned for review of the ID. On December 17, 1999, respondents and the IA filed responses to the petitions for review.

Having examined the record in this investigation, including the ID, the petitions for review, and the responses thereto, the Commission has determined to review the ID in its entirety. The Commission has also determined to review two procedural issues: (1) whether the ALJ erred in considering respondents' inequitable conduct allegation that the inventors of the 137 patent intentionally concealed their best mode of practicing their invention; and (2) with respect to the 137 patent, whether the ALJ erred in admitting into evidence videotapes provided by an expert witness that were not made available to complainant until after that expert's deposition.

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 submission 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 ALJ's December 13, 1999, recommended determination on remedy and bonding. 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 February 15, 2000. Reply submissions must be filed no later than the close of business on February 22, 2000. 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, as amended (19 U.S.C. 1337), and in sections 210.42-.45 of the Commission's Rules of Practice and Procedure (19 CFR 210.42-.45).

Copies of the public version of the ALJ's 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, SW, Washington, DC 20436, telephone 202-205-2000.