In the Matter of: Certain Display Controllers and Products Containing Same and Certain Display Controllers With Upscaling Functionality and Products Containing Same; Termination of Consolidated Investigations; 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, with respect to three respondents and has issued a limited exclusion order in the above-captioned consolidated investigation. The Commission has also determined to grant complainant's July 27, 2004, motion for leave to file a surreply, and to strike exhibits A and B attached to complainant's July 16, 2004, submission.

FOR FURTHER INFORMATION CONTACT:

Michael Liberman, Esq., or Clara Kuehn, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone (202) 205-3061. Copies of 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. 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) at http://edis.usitc.gov. Hearing-impaired persons are advised that information on this matter can be obtained by contacting the Commission's TDD terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION:

The Commission instituted Inv. No. 337-TA-481, Certain Display Controllers with Upscaling Functionality and Products Containing Same (“Display Controllers I” or “481 investigation”) on October 18, 2002, based on a complaint filed by Genesis Microchip (Delaware) Inc. (“Genesis”) of Alviso, CA naming Media Reality Technologies, Inc. of Sunnyvale, CA (“MRT”); Trumpion Microelectronics, Inc. (“Trumpion”) of Taipei City, Taiwan; and SmartASIC, Inc. of San Jose, CA as respondents. 67 FR 64411. On January 14, 2003, the then presiding ALJ issued an ID terminating respondent SmartASIC from the investigation on the basis of a settlement agreement. That ID was not reviewed by the Commission. The final ID in Display Controllers I (“the 481 Final ID”) issued on October 20, 2003. 68 FR 69719. The ALJ found no violation of section 337 based on his findings that respondents' accused products do not infringe claims 1-3, 5, 6, 9, 12, 13, 16, 17, 33-36, 38, or 39 of U.S. Patent No. 5,739,867 (“the ‘867 patent”), claims 1 and 9 of the ‘867 are invalid, and that complainant Genesis has not satisfied the domestic industry requirement of section 337.

On December 5, 2003, the Commission determined to review the 481 Final ID in part. Id. The Commission determined to review portions of the ALJ's claim construction, all of the ALJ's non-infringement findings, the ALJ's finding that complainant Genesis does not practice any claims of the ‘867 patent, and the ALJ's findings that neither the Spartan reference nor the ACUITY Application Note anticipate the asserted claims of the ‘867 patent. On review of the 481 Final ID, the Commission determined to reverse portions of the ALJ's claim construction and to remand the investigation to the ALJ. On January 20, 2004, the Commission ordered that the ALJ conduct further proceedings and make any findings necessary in order to determine whether, in light of the claim construction determinations made by the Commission: (a) The accused products in the 481 investigation infringe the asserted claims of the ‘867 patent; (b) complainant Genesis satisfies the technical prong of the domestic industry requirement; (c) the Spartan Zoom Engine constitutes prior art to the ‘867 patent and whether it anticipates the asserted claims of the ‘867 patent; and (d) the Acuity Application Note constitutes an enabling prior art reference that anticipates the asserted claims of the ‘867 patent. 69 FR 3602 (Jan. 26, 2004). On review of the 481 Final ID, the Commission remanded Display Controllers I to the ALJ. 69 FR 3602 (Jan. 26, 2004). The remand order directed that the ALJ issue his findings by May 20, 2004, and set a schedule for the filing by the parties of comments on the ALJ's findings and response comments. The remand order also extended the target date for completion of the 481 investigation to August 20, 2004.

The Commission instituted Inv. No. 337-TA-491, Certain Display Controllers and Products Containing Same (“Display Controllers II” or “491 investigation”) on April 14, 2003, based on a complaint filed on behalf of Genesis. 68 FR 17964 (Apr. 14, 2003). The complaint, as supplemented, alleged violations of section 337 of the Tariff Act of 1930 in the importation into the United States, sale for importation, and sale within the United States after importation of certain display controllers and products containing same by reason of infringement of claims 13 and 15 of U.S. Patent No. 6,078,361 (“the ‘361 patent”); certain claims of U.S. Patent No. 5,953,074 (“the ‘074 patent”); and certain claims of U.S. Patent No. 6,177,922 (“the 922 patent”). The notice of investigation named three respondents: Media Reality Technologies, Inc. of Taipei, Taiwan; MRT; and Trumpion. Id. Both Trumpion and MRT were also named respondents in Display Controllers I.

On June 20, 2003, the ALJ issued an ID (Order No. 5) amending the complaint and notice of investigation in Display Controllers II to add MStar Semiconductor, Inc. (“MStar”) as a respondent, additional claims of the ‘074 patent, and claims 1-3, 5, 6, 9, 12, 13, 16, 17, 33-36, 38, and 39 of the ‘867 patent, the same patent at issue in the 481 investigation. That ID was not reviewed by the Commission. 68 FR 44967 (July 31, 2003).

On November 10, 2003, the ALJ issued an ID (Order No. 38) granting complainant's motion to terminate the Display Controllers II investigation with respect to Trumpion, the ‘922 patent, and the ‘074 patent. That ID was not reviewed by the Commission.

On January 6, 2004, a tutorial session was held in Display Controllers II. An evidentiary hearing was held on January 6-15, 20, and February 2-3, 2004. On April 14, 2004, the ALJ issued his final ID (“the 491 Final ID”) and recommended determination on remedy and bonding in Display Controllers II. In the 491 Final ID, the ALJ found a violation of section 337 with respect to respondent MStar, but no violation with respect to respondent MRT.

Complainant Genesis, respondents MRT and MStar, and the Commission investigative attorney each petitioned for review of portions of the 491 Final ID, and filed responses to the petitions for review. On May 13, 2004, respondent MStar filed a motion for leave to reply and with an attached reply.

On May 20, 2004, the ALJ issued an ID in Display Controllers I (“the 481 Remand ID”) on remand. In the 481 Remand ID, the ALJ found a violation of section 337 with respect to both respondents in Display Controllers I, MRT and Trumpion.

On May 21, 2004, the Commission issued an order consolidating the 481 and 491 investigations and set the target date for completion of the consolidated investigation to August 20, 2004.

On June 2, 2004, respondent Trumpion filed a petition for review of the 481 Remand ID. On the same day, the IA filed comments on issues decided in the 481 Remand ID. On June 7, 2004, respondent MRT filed a petition for review of the 481 Remand ID. The IA and complainant Genesis filed timely responses to the petitions.

On July 6, 2004, the Commission determined to review portions of the 481 Remand ID and portions of the 491 Final ID. 69 FR 41846.

In its review notice, the Commission invited the parties to file written submissions on the issues under review, invited interested persons to file written submissions on the issues of remedy, the public interest and bonding, and provided a schedule for filing such submissions. The Commission also requested briefing from the parties on six questions. Initial briefs were filed on July 16, 2004, and reply briefs were filed on July 23, 2004. On July 27, 2004, Genesis filed a motion for leave to file a surreply to MStar's reply brief with attached surreply. On July 29, 2004, MStar filed its opposition to Genesis's motion.

Having reviewed the record in this consolidated investigation, including the parties' written submissions and responses thereto, the Commission determined as follows: (1) There is a violation of section 337 by respondent MStar with respect to claims 2, 33, 34, 35, and 36 of the ‘867 patent, but no violation with respect to claims 1 and 9 of the ‘867 patent; (2) there is a violation of section 337 by respondent MRT with respect to claims 2, 3, 5, 6, 12, 13, 16, 17, 33-36, 38, and 39 of the ‘867 patent; and (3) there is a violation of section 337 by respondent Trumpion with respect to claims 2, 33-35, and 36 of the ‘867 patent. The Commission previously found that there is no violation of section 337 by any respondent with respect to the ‘361 patent because it determined not to review the ALJ's infringement findings with respect to the limitations of claim elements 13(a) or 15(a) and not to review the ALJ's findings that complainant's Detroit products and Jasper/Reno products do not practice the limitations of claim elements 13(a) or 15(a) as required to satisfy the technical prong of the domestic industry requirement.

Having determined that a violation of section 337 has occurred in the importation, sale for importation, or sale in the United States of the accused display controllers, the Commission considered the issues of the appropriate form of relief, whether the public interest precludes issuance of such relief, and the bond during the 60-day Presidential review period.

The Commission determined that a limited exclusion order prohibiting the importation of the accused display controllers, as well as circuit boards and LCD monitors (exclusive of television monitors) containing same, directed to respondents MRT, Trumpion, and MStar is the appropriate form of relief. The Commission further determined that the statutory public interest factors do not preclude the issuance of such relief, and that respondent's bond under the limited exclusion order shall be in the amount of $1.00 per covered product.

The Commission also determined to grant complainant's July 27, 2004, motion for leave to file a surreply, and to strike exhibits A and B attached to complainant's July 16, 2004, submission.

The Commission's opinion setting forth its reasoning shall issue shortly.

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).