[Federal Register Volume 85, Number 71 (Monday, April 13, 2020)]
[Notices]
[Pages 20521-20522]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-07666]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1089]
Certain Memory Modules and Components Thereof; Notice of the
Commission's Final Determination Finding No Violation of Section 337;
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 has found no violation of section 337 of the Tariff Act of
1930, as amended. The investigation is hereby terminated.
FOR FURTHER INFORMATION CONTACT: Robert Needham, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone 202-205-5468. Copies of non-
confidential documents filed in connection with this investigation may
be viewed on the Commission's electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email
[email protected]. General information concerning the Commission may
also be obtained by accessing its internet server at https://www.usitc.gov. Hearing-impaired persons are advised that information on
this matter can be obtained by contacting the Commission's TDD
terminal, telephone 202-205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on December 4, 2017, based on a complaint filed by Netlist, Inc. of
Irvine, California (``Netlist''). 82 FR 57290-91. The complaint, as
supplemented, alleges violations of section 337 of the Tariff Act of
1930, as amended, 19 U.S.C. 1337, in the importation into the United
States, the sale for importation, and the sale within the United States
after importation of certain memory modules and components thereof that
infringe claims 16-22, 24, 25, 27, 29-35, 38, 43-45, 47, 48, 50, 52,
and 58 of U.S. Patent No. 9,606,907 (``the '907 patent'') and claims
12-15, 17-25, 27, and 29 of U.S. Patent No. 9,535,623 (``the '623
patent''). Id. The Commission's notice of investigation named as
respondents SK hynix Inc. of the Republic of Korea; SK hynix America
Inc. of San Jose, California; and SK hynix memory solutions Inc. of San
Jose, California (together, ``SK hynix''). Id. at 57291. The Office of
Unfair Import Investigations (``OUII'') is also participating in this
investigation. Id.
The Commission subsequently terminated the investigation with
respect to claims 16-22, 24, 25, 27, 29-35, 38, 43-45, 47, 48, 50, 52,
and 58 of the '907 patent and claims 12-15, 17-25, 27, and 29 of the
'623 patent based on Netlist's partial withdrawal of its complaint. See
Order. No. 12 (Mar. 19, 2018), not reviewed, Notice (Apr. 5, 2019);
Order. No. 19 (Sept. 25, 2018), not reviewed, Notice (Oct. 15, 2018);
Order. No. 27 (Dec. 6, 2018), not reviewed, Notice (Dec. 21, 2018).
Accordingly, at the time of the Final ID, the remaining asserted claims
were claims 1-8, 10, 12, 14, and 15 of the '907 patent and claims 1-5
and 7-11 of the '623 patent.
On October 19, 2019, the ID issued a final initial determination
(``Final ID'') finding a violation of section 337 with respect to
claims 6 and 12 of the '907 patent. Final ID at 164-65. The ID found
that Netlist showed that SK hynix infringes claims 1-8, 10, 12, 14, and
15 of the '907 patent, but failed to show that SK hynix infringed any
claim of the '623 patent. The ID also found that SK hynix showed that
claims 1-5, 7, 8, 10, 14, and 15 of the '907 patent are invalid as
obvious, but failed to show the invalidity of claims 6 and 12. Finally,
the ID found that Netlist satisfied the domestic industry requirement
with respect to the '907 patent, but did not satisfy the domestic
industry requirement with respect to the '623 patent.
On January 31, 2020, the Commission determined to review the final
ID in part. Specifically, the Commission determined to review the
following issues: (1) The construction of the limitation ``receive'' in
the asserted claims of the '907 patent, as well as related issues of
infringement and invalidity; (2) the construction of the limitation
``produce first module control signals and second module control
signals in response to the set of input address and control signals''
in the asserted claims of the '907 patent, as well as related issues of
infringement and invalidity; (3) the domestic industry requirement with
respect to both of the '623 and '907 patents; and (4) the findings with
respect to both of the '623 and '907 patents regarding whether SK hynix
showed that Netlist violated its obligations, if any, to offer a
license on reasonable and non-discriminatory (RAND) terms. The
Commission determined not to review any other findings presented in the
Final ID, including the finding of no violation with respect to the
'623 patent based on Netlist's failure to show infringement and the
technical prong of the domestic industry requirement.
The Commission also sought briefing from the parties on four issues
and on remedy, bonding and public interest. On February 14, 2020,
Netlist, SK hynix, and OUII filed their initial submissions in response
to the Commission's request for briefing. On February 24, 2020,
Netlist, SK hynix, and OUII filed their reply submissions in response
to the Commission's request for briefing. The Commission also received
a submission from third-party Hewlett Packard Enterprise Company.
Having examined the record of this investigation, including the
Final ID, the petitions, responses, and other submissions from the
parties, the Commission has determined that Netlist has failed to show
a violation of section 337. The Commission has determined to construe
``receive'' to occur when a signal or data reaches a circuit element's
input, and, under that construction, finds that Netlist failed to
satisfy that limitation for infringement and the technical prong of the
domestic industry requirement for any asserted claim of the '907
patent. The Commission has also determined to construe the limitation
``produce first module control signals and second module control
signals in response to the set of input address and control signals''
to require a response to at least one input address signal and at least
one control signal, and, under that construction, finds that Netlist
failed to satisfy that limitation for infringement and the technical
prong of the domestic industry requirement for any asserted claim of
the '907 patent. The Commission further finds that, regardless of the
constructions for these limitations, Netlist failed to provide
sufficient evidence on its domestic
[[Page 20522]]
industry products to satisfy the technical prong of the domestic
industry requirement. Additionally, the Commission has determined to
take no position on whether Netlist satisfied the economic prong of the
domestic industry requirement for either the '907 or '623 patents. The
Commission also affirms the Final ID's finding that SK hynix showed
that claims 1-5, 7, 8, 10, 14, and 15 of the '907 patent are invalid as
obvious. Finally, the Commission has determined to reverse the ALJ's
findings that the '907 patent is essential to a JEDEC standard and that
the JEDEC Patent Policy is unenforceable, has determined to affirm the
ALJ's finding that the '623 patent is not shown to be essential to a
JEDEC standard, and has determined to vacate all other finding relating
to obligations to license on reasonable and nondiscrimatory terms.
Accordingly, the Commission finds no violation of section 337 based
on Netlist's failure to establish infringement and the technical prong
of the domestic industry requirement, and on SK hynix's showing that
claims 1-5, 7, 8, 10, 14, and 15 of the '907 patent are invalid as
obvious. The Commission's determinations are explained more fully in
the accompanying Opinion. All other findings in the ID under review
that are consistent with the Commission's determinations are affirmed.
The investigation is hereby terminated.
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: April 7, 2020.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2020-07666 Filed 4-10-20; 8:45 am]
BILLING CODE 7020-02-P