Notice2024-26431
Certain Semiconductor Devices, and Methods of Manufacturing Same and Products Containing the Same Notice of the Commission's Final Determination Finding a Violation of Section 337; Issuance of a Limited Exclusion Order and Cease and Desist Orders; Denial of Motion for Sanctions; Termination of the Investigation
Primary source
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Published
November 14, 2024
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission ("Commission") has determined that there is a violation of section 337 in the above-captioned investigation. The Commission has further determined to issue a limited exclusion order and cease and desist orders and to set a bond in the amount of five percent (5%) of entered value for covered articles imported or sold during the period of Presidential review.
Full Text
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<title>Federal Register, Volume 89 Issue 220 (Thursday, November 14, 2024)</title>
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[Federal Register Volume 89, Number 220 (Thursday, November 14, 2024)]
[Notices]
[Pages 90051-90053]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2024-26431]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1366]
Certain Semiconductor Devices, and Methods of Manufacturing Same
and Products Containing the Same Notice of the Commission's Final
Determination Finding a Violation of Section 337; Issuance of a Limited
Exclusion Order and Cease and Desist Orders; Denial of Motion for
Sanctions; Termination of the Investigation
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
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SUMMARY: Notice is hereby given that the U.S. International Trade
Commission (``Commission'') has determined that there is a violation of
section 337 in the above-captioned investigation. The Commission has
further determined to issue a limited
[[Page 90052]]
exclusion order and cease and desist orders and to set a bond in the
amount of five percent (5%) of entered value for covered articles
imported or sold during the period of Presidential review.
FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the
General Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone (202) 205-3042. Copies of non-
confidential documents filed in connection with this investigation may
be viewed on the Commission's electronic docket (EDIS) at <a href="https://edis.usitc.gov">https://edis.usitc.gov</a>. For help accessing EDIS, please email
<a href="/cdn-cgi/l/email-protection#4207060b11710a272e320237312b36216c252d34"><span class="__cf_email__" data-cfemail="dc9998958fef94b9b0ac9ca9afb5a8bff2bbb3aa">[email protected]</span></a>. General information concerning the Commission may
also be obtained by accessing its internet server at <a href="https://www.usitc.gov">https://www.usitc.gov</a>. 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 this investigation
on July 3, 2023, based on a complaint filed by Efficient Power
Conversion Corporation of El Segundo, California (``EPC''). 88 FR
42756-77 (Jul. 3, 2023). The complaint alleged violations of section
337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, based on the
importation into the United States, the sale for importation, or sale
within the United States after importation of certain semiconductor
devices, and methods of manufacturing same, and products containing the
same by reason of the infringement of one or more claims of U.S. Patent
Nos. 10,312,335 (``the '335 patent''); 8,350,294 (``the '294 patent'');
8,404,508 (``the '508 patent''); and 9,748,347 (``the '347 patent'').
Id. The complaint further alleged that a domestic industry exists. Id.
The Commission's notice of investigation named as respondents
Innoscience (Zhuhai) Technology, Company, Ltd., of Zhuhai, Guangdong,
China; and Innoscience America, Inc. of Santa Clara, California
(together ``Innoscience'' or ``Respondents''). The Office of Unfair
Import Investigations (``OUII'') was also named as a party in this
investigation. Id.
On October 13, 2023, Chief Administrative Law Judge (``CALJ'') held
a Markman hearing.
On December 13, 2023, the CALJ issued an initial determination
(``ID'') granting a motion to terminate the investigation as to all
asserted claims of the '347 patent. Order No. 9 (Dec. 13, 2023),
unreviewed by Comm'n Notice (Jan. 11, 2024).
On February 12, 2024, the CALJ issued an ID granting a motion to
terminate the investigation as to all asserted claims of the '335
patent. Order No. 12 (Feb. 12, 2024), unreviewed by Comm'n Notice (Mar.
12, 2024).
The CALJ held an evidentiary hearing from February 26, 2024 to
March 1, 2024, and received post-hearing briefs thereafter.
On July 5, 2024, the CALJ issued the final ID finding a violation
of section 337 as to claims 2 and 3 of the '294 patent and no violation
of section 337 as to claim 1 of the '294 patent. The CALJ also found no
violation of section 337 as to the only asserted claim of the '508
patent, claim 1. Specifically, the ID found that by appearing and
participating in the investigation, the parties have consented to
personal jurisdiction at the Commission. ID at 10-11. The ID found that
EPC established the importation requirement under 19 U.S.C.
1337(a)(1)(B), noting that Innoscience does not dispute importing the
accused products. Id. at 11-12. The ID found that because the accused
products have been imported into the United States, the Commission has
in rem jurisdiction over them. Id. at 12. The ID found that EPC owns
the patents and thus has standing to assert the patents in this
investigation. Id. The ID found that EPC successfully proved that the
accused products infringe the asserted claims of the '294 patent
(claims 1-3) but that unlike claims 2 and 3, claim 1 has been shown to
be invalid for obviousness. ID at 30-51, 85-100. The ID found that EPC
failed to prove that the accused products infringe claim 1 of the '508
patent and that Respondents failed to prove the claim invalid for
obviousness. Id. at 52-68, 103-117. Finally, the ID found that EPC
established the economic prong of the domestic industry requirement for
both the '294 and '508 patents but failed to establish the technical
prong of the domestic industry requirement for the '508 patent. ID at
120-151. Thus, the ID found the existence of a domestic industry that
practices the '294 patent as required by 19 U.S.C. 1337(a)(2) but not
one that practices the '508 patent.
The ID included the CALJ's recommended determination on remedy and
bonding (``RD''). The RD recommended, should the Commission find a
violation, issuance of a limited exclusion order and cease and desist
orders against the Respondents. ID/RD at 154-157. The RD also
recommended imposing a bond in the amount of five percent (5%) of
entered value for infringing products imported during the period of
Presidential review. Id. at 158-159.
On July 19, 2024, EPC and Innoscience filed respective petitions
for review of the ID. On July 29, 2024, the parties, including OUII,
filed responses to the petitions.
On August 6, 2024, Respondents filed a motion for sanctions against
EPC and its counsel for their alleged breach of the CALJ's
administrative protective order (``APO'') based on an alleged
disclosure EPC made in IPR proceedings before the Patent Office.
Respondents requested a sanction of non-enforcement of the '294 patent.
Respondents also requested a stay of the proceedings pending
disposition of the sanctions motion. On August 15, 2024, OUII filed a
response, opposing Respondents' motion. On August 16, 2024, Complainant
file an opposition to Respondents' motion. On September 19, 2024,
Respondents filed a motion for leave to file a reply brief in support
of its motion for sanctions. On September 24, 2024, EPC filed an
opposition to Respondents' motion for leave to file a reply. On October
2, 2024, OUII filed an opposition to Respondents' motion for leave to
file a reply.
The Commission has determined to deny Respondents' motion for leave
to file a reply brief. The Commission has also determined to deny
Respondents' motion for a sanction of non-enforcement of the '294
patent. The Commission notes that Respondents' allegation of a breach
of the APO has been referred to the Commission's Office of the
Secretary for further proceedings according to the Commission's normal
procedures. The Commission reminds the parties of their obligations
under Commission Rule 210.25 to promptly file any allegations of breach
of an APO, and to bring the matter to the attention of the presiding
ALJ where, as here, the alleged breach is discovered while the
investigation was pending before the CALJ. The Commission also reminds
the parties of their obligation under Commission rule 210.34 to keep
the identity of any alleged breacher confidential. The Commission has
also determined to deny Respondent's request to stay the proceedings
pending disposition of the sanctions motion.
On September 5, 2024, the Commission determined to review the final
ID in its entirety. 89 FR 73719-21 (Sept. 11, 2024). The Commission
asked the parties briefing questions related to: (1) construction of
the claim term ``compensated GaN layer'' recited in claim 1 of the '294
patent and the ID's infringement, invalidity, and technical prong of
the domestic industry analyses if the Commission were to adopt OUII's
proposed construction of the term; (2)
[[Page 90053]]
invalidity finding of the '294 patent; (3) whether the only asserted
claim of the '508 patent, claim 1, is limited to using a single mask to
etch both the gate contact and doped GaN layer based on the '508
patent's description of the ``present invention,'' as well as whether
the claim steps must be performed in the order recited; and (4) whether
EPC's ``total operating expenditures'' identified on page 129 of the ID
includes foreign manufacturing expenses for the domestic industry
products. Id.
On September 23, 2023, the parties filed initial submissions in
response to the Commission's request for briefing. On September 30,
2023, the parties filed reply submissions.
Upon review of the parties' submissions, the ID, the RD, evidence
of record, and public interest filings, the Commission has determined
that Respondents violated section 337 by reason of importation and sale
of articles that infringe asserted claims 2 and 3 of the '294 patent
and to issue remedial orders. The Commission has determined to clarify
the ID's statements on jurisdiction and standing as noted in the
accompanying Commission Opinion. The Commission has determined to adopt
OUII's construction of the claim term ``compensated GaN layer'' recited
in claim 1 of the '294 patent as its plain and ordinary meaning and, as
explained in the Commission opinion, finds that adoption of OUII's
construction does not alter the ID's findings on infringement,
invalidity, and technical prong of domestic industry, which the
Commission affirms. For the '508 patent, the Commission affirms the
ID's finding of no violation for the reasons provided in the ID.
For remedy, the Commission has determined to issue a limited
exclusion order prohibiting further importation of infringing products
and cease and desist orders against Respondents. The Commission has
determined that the public interest factors do not counsel against
issuing remedial orders. The Commission has determined that a bond in
the amount of five percent (5%) of entered value for covered articles
is required for covered products imported or sold during the period of
Presidential review.
The Commission vote for this determination took place on November
7, 2024.
The authority for the Commission's determination is contained in
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and
in Part 210 of the Commission's Rules of Practice and Procedure (19 CFR
part 210).
By order of the Commission.
Issued: November 7, 2024.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2024-26431 Filed 11-13-24; 8:45 am]
BILLING CODE 7020-02-P
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