On June 27, 2014, 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 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 devices containing non-volatile memory (“NVM”) and products containing the same that infringe one or more claims of U.S. Patent Nos. 5,998,826 (the ‘826 patent), 6,031,757 (the ‘757 patent), 8,341,324 (the ‘324 patent), and 8,341,330 (the ‘330 patent) (collectively, the “asserted patents”):
- Spansion Inc. of Sunnyvale, California
- Spansion LLC of Sunnyvale, California
- Spansion (Thailand) Ltd. of Thailand
- Aerohive Networks, Inc. of Sunnyvale, California
- Allied Telesis, Inc. of Bothell, Washington
- Ciena Corp. of Hanover, Maryland
- Delphi Automotive PLC of the United Kingdom
- Delphi Automotive Systems, LLC of Troy, Michigan
- Polycom, Inc. of San Jose, California
- Ruckus Wireless, Inc. of Sunnyvale, California
- ShoreTel Inc. of Sunnyvale, California
- Tellabs, Inc. of Naperville, Illinois
- Tellabs North America, Inc. of Naperville, Illinois
- TiVo Inc. of San Jose, California
According to the complaint, the asserted patents generally relate to various aspects of devices that contain NVM, such as flash memory and microcontrollers. In particular, the ‘826 patent relates to a flash memory cell structure and operational bias approach based on the use of a triple well floating gate memory cell, suitable for use with a single low voltage power supply. The ‘757 patent relates to a user-programmable write protection scheme for non-volatile memory that provides flexibility and superior write protection features. The ‘324 patent relates to a serial peripheral interface in which many control pins of the interface are utilized to achieve a serial data transmission through multiple input pins and multiple output pins to enhance data transmission. Lastly, the ‘330 patent relates to a serial peripheral interface that provides enhanced data read performance in an integrated circuit.
In the complaint, Macronix states that the Proposed Respondents import and sell products that infringe the asserted patents. Macronix specifically refers to Spansion NOR flash memory, Spansion microcontrollers, and other Spansion devices containing non-volatile memory as infringing products. In addition, Macronix states that the other Proposed Respondents are engaged in the importation, sale for importation, and/or sale within the U.S. after importation of certain products that contain the accused Spansion products, including automotive components, “infotainment” systems, access points, wireless local area network controllers, and network gateway systems, as well as many other devices.
Regarding domestic industry, Macronix states that it and a licensee have made significant investments in plant and equipment, engaged in significant employment of labor and capital, and made substantial investments in the exploitation of the asserted patents in the U.S. Macronix specifically refers to a facility in California where it employs engineers that design and develop reference designs, design-in Macronix NVM into customer products, and provide technical support for Macronix’s products that practice the asserted patents. Macronix further states that it identifies and presents additional information regarding the U.S. activities of a licensee in a confidential exhibit to the complaint.
As to related litigation, Macronix states that on October 2, 2013, it filed a complaint against the Spansion respondents in the U.S. District Court for the Eastern District of Virginia alleging infringement of the asserted patents. According to the complaint, that case was subsequently transferred to the Northern District of California, and a case management conference is scheduled for late July. Macronix also refers to various other cases involving Spansion and itself (not involving the asserted patents) in the Northern District of California and the ITC (Inv. Nos. 337-TA-893, 337-TA-909, and 337-TA-916). See our September 9, 2013, January 30, 2014, and June 3, 2014 posts for more details on these other investigations, respectively.
Regarding potential remedy, Macronix requests that the Commission issue a general exclusion order (“GEO”), a limited exclusion order, and cease and desist orders directed at the Proposed Respondents. Macronix states that a GEO is warranted because a limited exclusion order could be circumvented, there is a pattern of violation of Section 337, and it is difficult to identify the source of all infringing products. Macronix also notes that Spansion requested a GEO in the 916 investigation, and that to the extent that a GEO is available to Spansion in that investigation, a GEO should also be available to Macronix in the instant investigation.