On April 4, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501).  In the notice, the Commission found a violation of Section 337 by Respondents Carsem (M) SdnBhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively, “Carsem”).  The Commission issued a limited exclusion order and terminated the investigation.

By way of background, the Commission instituted an investigation based on a complaint filed by Amkor Technology Inc. (“Amkor”), alleging the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain encapsulated integrated circuit devices that infringe claims of U.S. Patent Nos. 6,433,277 (the ‘277 patent), 6,630,728 (the ‘728 patent), and 6,455,356 (the ‘356 patent) (collectively, “the Asserted Patents”).  The investigation also concerned a third-party, ASAT, Inc. (“ASAT”) and its invention (the “ASAT invention”), which Carsem argued was invalidating prior art to Amkor’s Asserted Patents.

On November 18, 2004, ALJ Charles E. Bullock issued a final initial determination (“Final ID”) finding no violation of Section 337.  After reviewing the Final ID, the Commission modified ALJ Bullock’s claim construction and remanded the investigation, instructing ALJ Bullock “to conduct further proceedings and make any new findings or changes to his original findings that are necessitated by the Commission’s new claim construction.”  On November 9, 2005, ALJ Bullock issued a remand initial determination (“Remand ID”) finding a violation of Section 337 with regard to six claims of the ‘277 patent and finding no violation of the ‘728 or ’356 patents.  The investigation was delayed due to difficulty obtaining certain documents from ASAT that Carsem asserted were critical for its affirmative defenses.  On July 1, 2009, after ASAT had complied with a subpoena requesting the documents, the Commission issued a notice and order remanding the investigation to ALJ Bullock in order for the ASAT documents to be considered.  On October 30, 2009, ALJ Bullock issued a supplemental ID (“First Supplemental ID”), finding that the ASAT invention was not prior art and reaffirming the Section 337 violation.  On February 18, 2010, the Commission revered ALJ Bullock’s finding that the ASAT invention was not prior art to the Asserted Patents and remanded the investigation for ALJ Bullock to make necessary findings in light of the determination that the ASAT invention was prior art.  On March 22, 2010, ALJ Bullock issued a Supplemental ID (“Second Supplemental ID”), finding that the ‘277 and ‘728 patents were invalid in view of the ASAT prior art and determining that there was no violation of section 337.  The Commission determined not to review the ALJ’s Remand ID and Second Supplemental ID and determined that there was no violation of Section 337.  Amkor appealed the Commission’s decision to the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”), which reversed the Commission’s determination that the ‘277 patent is invalid under 35 U.S.C. §102(g), declined to affirm the invalidity determination on alternative grounds raised by Carsem, and remanded for further proceedings.  On October 5, 2012, Carsem filed a combined petition for panel rehearing and for rehearing en banc, which the Federal Circuit denied.  On January 14, 2013, the Commission issued an Order directing the parties to submit their comments regarding what further proceedings must be conducted to comply with the Federal Circuit’s judgment.  On June 5, 2013, the Commission issued a Notice requesting briefing on remedy, bonding, and public interest, as well as responses to certain questions regarding the economic prong of the domestic industry requirement and the public interest.  See our July 28, 2010, September 7, 2010, and August 27, 2012 posts for more background details on this matter.   

According to the April 4, 2014 notice, after considering the record of the investigation, including the parties’ submissions in response to the Commission’s Order and Notice, the Commission determined to affirm ALJ Bullock’s First Supplemental ID and Remand ID finding a violation of Section 337.  The Commission also determined to:

  • Affirm ALJ Bullock’s determination that claims 2-4 and 21-23 of the ‘277 patent are not invalid over the ASAT invention;
  • Affirm ALJ Bullock’s determination that Carsem failed to show that the equitable estoppel defense based applied in this investigation;
  • Affirm that Carsem failed to prove that Amkor had deceived the standard setting body or that the’277 patent is necessary to practice JEDEC’s standards and that Carsem failed to show that its legal estoppel defense applied in this investigation;
  • Affirm with modifications ALJ Bullock’s finding that Amkor satisfied the economic prong of the domestic industry requirement under subsection 337(a)(3)(A); Affirm with modifications ALJ Bullock’s finding that Amkor failed to satisfy the economic prong of the domestic industry requirement under subsection 337(a)(3)(B);
  • Take no position on ALJ Bullock’s findings with respect to whether Amkor satisfied the economic prong of the domestic industry requirement under subsection 337(a)(3)(C).

Accordingly, the Commission determined that the appropriate form of relief in the investigation was a limited exclusion order prohibiting the unlicensed entry of certain encapsulated integrated circuit devices covered by claims 2-4 and 21-23 of the ‘277 patent that are manufactured abroad by, or on behalf of, or imported by, or on behalf of, Carsem.  The Commission also determined that the public interest factors did not preclude issuing the limited exclusion order and that Amkor was required to post a bond in the amount of a reasonable royalty rate of $0.00025 per contact per covered encapsulated integrated circuit device imported during the period of Presidential review.