On March 7, 2017, Macronix International Co., Ltd. of Taiwan and Macronix America, Inc. of Milpitas, California (collectively, “Macronix”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Toshiba Corp. of Japan, Toshiba America, Inc. of New York, New York, Toshiba America Electronic Components, Inc. of Irvine, California, Toshiba America Information Systems, Inc. of Irvine, California, and Toshiba Information Equipment (Philippines), Inc. of the Philippines (collectively, “Toshiba”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain non-volatile memory devices and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,552,360 (the ’360 patent), 6,788,602 (the ’602 patent), and 8,035,417 (the ’417 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to various aspects of non-volatile memory, such as flash memory, and products containing same. In particular, the ’360 patent relates to a circuit layout on a substrate of a semiconductor wafer suitable to be used with a chemical-mechanical polishing (“CMP”) process. The ’602 patent relates to a semiconductor memory device and a method for preventing dummy cells coupled to dummy word lines from over-erasing. Lastly, the ’417 patent relates to an output buffer circuit that can be set to have an appropriate drive strength depending on its purpose, the supply voltage, and the electrical characteristics of the electrical load.

In the complaint, Macronix states that Toshiba imports and sells products that infringe the asserted patents. The complaint specifically refers to Toshiba flash memory chips and products containing such chips—including memory cards, solid-state drives, wearable devices, digital camcorders, mobile devices, advanced audiovisual systems, car navigation systems, computers, servers, and other consumer electronic devices—as infringing products.

Regarding domestic industry, Macronix states that its own non-volatile memory devices practice at least one claim of each of the asserted patents. Macronix further states that it has made significant investments in plant and equipment relating to the asserted patents, engaged in a significant employment of labor and capital relating to the asserted patents, and made substantial investments in the exploitation of the asserted patents through engineering and technical support activities in the U.S. relating to products that practice such patents. Macronix further states that it and a confidential licensee are currently engaged in joint research activities in the U.S. relating to new technologies that practice claims of the asserted patents.

As to related litigation, Macronix states that, concurrently with the filing of the instant ITC complaint, it is also filing a complaint against Toshiba in the U.S. District Court for the Southern District of California alleging infringement of the asserted patents. Macronix further states that it previously asserted the ’360 patent against Spansion Inc., Spansion LLC, and other respondents at the ITC in Inv. No. 337-TA-909. That investigation was terminated based on a settlement agreement. Macronix also states that Spansion petitioned for an inter partes review (IPR) of the ’360 patent, but the Patent Trial and Appeal Board denied institution of the IPR.

With respect to potential remedy, Macronix requests that the Commission issue a permanent limited exclusion order and a permanent cease and desist order directed at Toshiba.