On August 1, 2013, Spansion LLC of Sunnyvale, California (“Spansion”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.
The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain Macronix flash memory chips and downstream products containing the same that infringe one or more claims of U.S. Patent Nos. 6,369,416 (the ‘416 patent); 6,900,124 (the ‘124 patent); 7,018,922 (the ‘922 patent); 6,459,625 (the ‘625 patent); 7,151,027 (the ‘027 patent); 6,731,536 (the ‘536 patent) (collectively, the “asserted patents”):
- Macronix International Co., Ltd. of Taiwan
- Macronix America, Inc. of Milpitas, California
- Macronix Asia Limited of Kanagawa, Japan
- Macronix (Hong Kong) Co., Ltd. of Hong Kong
- Acer Inc. of Taiwan
- Acer America Corporation of San Jose, California
- ASUSTek Computer Inc. of Taiwan
- Asus Computer International (America) of Fremont, California
- Belkin International, Inc. of Playa Vista, California
- D-Link Corporation of Taiwan
- D-Link System, Inc. of Fountain Valley, California
- Netgear Inc. of San Jose, California
- Nintendo Co., Ltd. of Kyoto, Japan
- Nintendo of America, Inc. of Redmond, Washington
According to the complaint, the asserted patents generally relate to non-volatile flash memory used in cell phones and computers, for example. Specifically, the technology described in the Spansion patents relates to how to structure flash memory cells, how to isolate the memory cells, and how to manufacture and operate the cells in a way that makes the chips containing those memory cells smaller, faster, less expensive, and more reliable. The ‘416 patent addresses issues related to contact holes and the need to reduce the size of the memory die layout. The ‘124 and ‘922 patents address certain issues brought about when flash memory devices are made more dense and cost effective. The ‘625 patent relates to optimizing the number and size of electrical connections between chip components. The ‘027 patent relates to the reduction of steps and stinger spacers during chip fabrication. Finally, the ‘536 patent describes a multi-level security protection system for the sectors of a flash memory device.
Regarding the allegedly infringing products, the complaint identifies five different generations of flash memory chips sold for importation into the U.S., imported, and/or sold within the U.S. after importation by the Proposed Macronix Respondents, along with specific products from each additional Proposed Respondent containing allegedly infringing chips.
As to domestic industry, Spansion states that it has made significant investments in plant and equipment and in labor and capital in the U.S. In particular, Spansion has a facility in Austin, Texas that manufactures and tests wafers used to make chips that are sold commercially. Further, it is alleged that the Spansion products that practice the claimed inventions make up the overwhelming majority of the production output at the Austin facility.
With respect to related litigation, Spansion states that its complaint was concurrently filed with a complaint for patent infringement in the Northern District of California, styled as Spansion LLC v. Macronix International Co., Ltd. et al. The ‘922, ‘124, ‘625, and ‘416 patents were previously asserted in Inv. No. 337-TA-735, which settled before hearing. The ‘027 patent was previously asserted in the Eastern District of Virginia, styled as Spansion LLC v. Samsung Electronics Co., Ltd. et al. (No. 1-10-cv-00881). That case was dismissed upon the parties’ settlement. Lastly, the ‘416, ‘625, ‘124, and ‘922 patents were previously asserted in the Northern District of California, styled as Spansion LLC v. Samsung Electronics Co. Ltd. et al. (Nos. 3-10-cv-03446 and 5-10-cv-03446), which was dismissed pursuant to a settlement agreement.
Regarding potential remedy, Spansion requests that the Commission issue a general exclusion order excluding all infringing Macronix chips and product containing such chips or, in the alternative, a limited exclusion order specifically directed to each Proposed Respondent. Spansion also requests that the Commission issue cease and desist orders directed to the Proposed Respondents.