81 FR 1204 - Certain DC-DC Controllers and Products Containing Same; Commission Determination To Adopt a Recommended Remand Determination; Issuance of Modified Civil Penalty Order and Termination of Remand Enforcement Proceeding

INTERNATIONAL TRADE COMMISSION

Federal Register Volume 81, Issue 6 (January 11, 2016)

Page Range		1204-1205
FR Document		2016-00288

Notice is hereby given that the U.S. International Trade Commission has determined to adopt a remand recommended determination (``RRD'') of the presiding administrative law judge (``ALJ'') adding eleven (11) days to the total number of days enforcement respondent uPI Semiconductor Corporation (``uPI'') of Hsinchu, Taiwan, violated the August 13, 2010 consent order (``the Consent Order''). The Commission has adopted the RRD as a final determination of the Commission, issued a modified civil penalty order in the amount of $650,000 directed against uPI, and has terminated the remand enforcement proceeding.

Federal Register, Volume 81 Issue 6 (Monday, January 11, 2016)

[Federal Register Volume 81, Number 6 (Monday, January 11, 2016)]
[Notices]
[Pages 1204-1205]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2016-00288]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-698 (Remand)]


Certain DC-DC Controllers and Products Containing Same; 
Commission Determination To Adopt a Recommended Remand Determination; 
Issuance of Modified Civil Penalty Order and Termination of Remand 
Enforcement Proceeding

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 determined to adopt a remand recommended determination 
(``RRD'') of the presiding administrative law judge (``ALJ'') adding 
eleven (11) days to the total number of days enforcement respondent uPI 
Semiconductor Corporation (``uPI'') of Hsinchu, Taiwan, violated the 
August 13, 2010 consent order (``the Consent Order''). The Commission 
has adopted the RRD as a final determination of the Commission, issued 
a modified civil penalty order in the amount of $650,000 directed 
against uPI, and has terminated the remand enforcement proceeding.

FOR FURTHER INFORMATION CONTACT: Clint Gerdine, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 708-2310. Copies of non-
confidential documents filed in connection with this investigation are 
or will be available for inspection during official business hours 
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. 
International Trade Commission, 500 E Street SW., Washington, DC 20436, 
telephone (202) 205-2000. General information concerning the Commission 
may also be obtained by accessing its Internet server at http://www.usitc.gov. The public record for this investigation may be viewed 
on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. 
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 ordered this remand 
enforcement proceeding on April 8, 2015, in view of the Federal 
Circuit's decision in uPI Semiconductor Corp. v. ITC and Richtek 
Technology Corp. v. ITC, 767 F.3d 1372 (Fed. Cir. 2014). See Comm'n 
Order (Apr. 8, 2015). The Commission instituted the original 
enforcement proceeding on September 6, 2011, based on an enforcement 
complaint filed by Richtek Technology Corp. of Hsinchu, Taiwan, and 
Richtek USA, Inc. of San Jose, California (collectively ``Richtek''). 
76 FR 55109-10. The complaint alleged violations of the August 13, 
2010, consent orders issued in the underlying investigation by the 
continued practice of prohibited activities such as importing, offering 
for sale, and selling for importation into the United States DC-DC 
controllers or products containing the same that infringe one or more 
of U.S. Patent Nos. 7,315,190 (``the '190 patent''); 6,414,470 (``the 
's '470 patent''); and 7,132,717 (``the '717 patent''); or that contain 
or use Richtek's asserted trade secrets. The Commission's notice of 
institution of enforcement proceedings named uPI and Sapphire 
Technology Limited (``Sapphire'') of Shatin, Hong Kong as respondents. 
The Office of Unfair Import Investigations participated in the 
enforcement proceeding. Sapphire was later terminated from the 
enforcement proceeding based on a settlement agreement.
    On June 8, 2012, the presiding administrative law judge (``ALJ'') 
issued his enforcement initial determination (``EID'') finding a 
violation of the Consent Order by uPI. The ALJ found importation and 
sale of accused products that infringe all asserted claims of the 
patents at issue, and importation and sale of formerly accused products 
that contain or use Richtek's asserted trade secrets. He found that 
uPI's products developed after the consent order issued (``post-Consent 
Order products'') did not misappropriate Richtek's asserted trade 
secrets. Also, he recommended enforcement measures for uPI's violation 
that included the following: (1) Modifying the Consent Order to clarify 
that the Order applies (and has always applied) to all uPI affiliates, 
past, present, or future; and (2) imposing a civil penalty of $750,000 
against uPI.
    The Commission did not review the EID with respect to the trade 
secret allegations, but did review the EID as to certain patent 
infringement allegations and the number of violation days. On November 
14, 2012, after review, the Commission determined to affirm-in-part, 
reverse-in-part, modify-in-part, and vacate-in-part the EID's findings 
under review. The Commission affirmed the ALJ's finding that uPI 
violated the consent order, and imposed a civil penalty of $620,000 on 
respondent uPI for violation of the Consent Order on 62 days. The 
Commission also affirmed the ALJ's finding of direct infringement of 
claims 1-11 and 26-27 of the '190 patent with respect to uPI's formerly 
accused products. The Commission also vacated the ALJ's finding that 
uPI does not induce infringement of claims 1-11 and 26-27 of the 190 
patent. The Commission also determined to reverse the ALJ's finding 
that claims 29 and 34 of the 470 patent are directly infringed by 
respondent uPI's accused DC-DC controllers and products containing the 
same, and determined that Richtek waived any allegations of indirect 
infringement with respect to the '470 patent. This action resulted in a 
finding of no violation of the Consent Order with respect to the '470 
patent. Further, the Commission vacated as moot the portion of the EID 
relating to the '717 patent because the asserted claims 1-3 and 6-9 
were cancelled by issuance of Ex Parte Reexamination Certificate No. 
U.S. 7,132,717 C1 on October 3, 2012. The Commission also affirmed the 
ALJ's finding that uPI's formerly accused products contained or used 
Richtek's asserted trade secrets to violate the Consent Order, but that 
uPI's post-Consent Order products did not misappropriate Richtek's 
asserted trade secrets.
    Both uPI and Richtek timely appealed the Commission's final 
determination. The Federal Circuit issued its opinion in the two 
appeals on September 25, 2014. See 767 F.3d 1372. The Court affirmed 
the Commission's findings regarding uPI's appeal with a slight 
modification, but regarding Richtek's appeal, the Court reversed the 
Commission's determination that uPI did not violate the Consent Order 
based on trade secret misappropriation with respect to uPI's post-
Consent Order products. Id. Specifically, the Court found that, on the 
record provided, substantial evidence did not support the Commission's 
conclusion that uPI's post-Consent Order products were independently 
developed. Id. at 1383. Also specifically, regarding uPI's appeal and 
before deciding Richtek's appeal, the Court reduced the number of days 
of violation by eight (8) days to fifty-four (54) days. Id. at 1380. 
The Court remanded the case to the Commission for further proceedings 
with respect to violation of the Consent Order. Id. at 1383. On 
December 1, 2014, the Court denied uPI's petition for rehearing of the 
Court's finding of no independent development of uPI's post-Consent

[[Page 1205]]

Order products. The mandate of the Court issued on November 17, 2014, 
with respect to uPI's appeal (Appeal No. 13-1157) and on December 8, 
2014, with respect to Richtek's appeal (Appeal No. 13-1159).
    In its order of April 8, 2015, the Commission remanded the case to 
a presiding administrative law judge and ordered the presiding ALJ to:

make findings and issue a remand recommended determination (``RRD'') 
concerning the total number of days an importation or sale in the 
United States occurred in violation of the Consent Order in 
accordance with the Federal Circuit decision in uPI Semiconductor 
Corp. v. ITC and Richtek Technology Corp. v. ITC, 767 F.3d 1372 
(Fed. Cir. 2014), taking into account (1) any additional violation 
days with respect to the post-Consent Order products Richtek 
specifically accused (see EID at 9 n.6); and (2) the subtraction of 
eight (8) violation days with respect to the formerly accused 
products. The RRD will also recommend a total civil penalty amount 
based on the previous daily penalty of $10,000 per day of violation.

Comm'n Order. On April 20, 2015, Richtek filed a motion for 
reconsideration of the Commission's Remand Order with respect to the 
amount of the daily penalty and on May 7, 2015, the motion was denied. 
See Comm'n Order Denying Motion. On October 8, 2015, the presiding ALJ 
issued his RRD finding that after the eight-day subtraction, eleven 
(11) days, associated with post-Consent Order products, should be added 
to the number of days (54) uPI violated the Consent Order to make the 
total sixty-five (65) days in violation, and accordingly increased the 
total civil penalty amount to $650,000 based on the daily penalty of 
$10,000. On October 19, 2015, Richtek submitted comments regarding the 
RRD which reiterated the same arguments made in its denied motion for 
reconsideration. Id. On October 26, 2015, uPI and the Commission 
investigative attorney each filed a reply to Richtek's comments.
    The Commission has determined to adopt the RRD as a final 
determination of the Commission and has issued a modified civil penalty 
order in the amount of $650,000 directed against uPI. The Commission 
has rejected the arguments regarding the amount of the daily penalty 
made by Richtek in its submitted comments for the same reasons given in 
the Commission's Order denying Richtek's motion for reconsideration. 
The Commission has terminated the remand enforcement proceeding.
    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: January 6, 2016.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2016-00288 Filed 1-8-16; 8:45 am]
 BILLING CODE 7020-02-P

1204 Federal Register / Vol. 81, No. 6 / Monday, January 11, 2016 / Notices

Dated: January 4, 2016. enforcement proceeding on April 8, ALJ’s finding that uPI violated the
Madonna L. Baucum, 2015, in view of the Federal Circuit’s consent order, and imposed a civil
Information Collection Clearance Officer, decision in uPI Semiconductor Corp. v. penalty of $620,000 on respondent uPI
National Park Service. ITC and Richtek Technology Corp. v. for violation of the Consent Order on 62
[FR Doc. 2016–00333 Filed 1–8–16; 8:45 am] ITC, 767 F.3d 1372 (Fed. Cir. 2014). See days. The Commission also affirmed the
BILLING CODE 4310–EH–P Comm’n Order (Apr. 8, 2015). The ALJ’s finding of direct infringement of
Commission instituted the original claims 1–11 and 26–27 of the ’190
enforcement proceeding on September patent with respect to uPI’s formerly
INTERNATIONAL TRADE 6, 2011, based on an enforcement accused products. The Commission also
COMMISSION complaint filed by Richtek Technology vacated the ALJ’s finding that uPI does
Corp. of Hsinchu, Taiwan, and Richtek not induce infringement of claims 1–11
[Investigation No. 337–TA–698 (Remand)] USA, Inc. of San Jose, California and 26–27 of the 190 patent. The
(collectively ‘‘Richtek’’). 76 FR 55109– Commission also determined to reverse
Certain DC–DC Controllers and 10. The complaint alleged violations of the ALJ’s finding that claims 29 and 34
Products Containing Same; the August 13, 2010, consent orders of the 470 patent are directly infringed
Commission Determination To Adopt a issued in the underlying investigation by respondent uPI’s accused DC–DC
Recommended Remand by the continued practice of prohibited controllers and products containing the
Determination; Issuance of Modified activities such as importing, offering for same, and determined that Richtek
Civil Penalty Order and Termination of sale, and selling for importation into the waived any allegations of indirect
Remand Enforcement Proceeding United States DC–DC controllers or infringement with respect to the ’470
AGENCY: U.S. International Trade products containing the same that patent. This action resulted in a finding
Commission. infringe one or more of U.S. Patent Nos. of no violation of the Consent Order
ACTION: Notice.
7,315,190 (‘‘the ’190 patent’’); 6,414,470 with respect to the ’470 patent. Further,
(‘‘the ’s ’470 patent’’); and 7,132,717 the Commission vacated as moot the
SUMMARY: Notice is hereby given that (‘‘the ’717 patent’’); or that contain or portion of the EID relating to the ’717
the U.S. International Trade use Richtek’s asserted trade secrets. The patent because the asserted claims 1–3
Commission has determined to adopt a Commission’s notice of institution of and 6–9 were cancelled by issuance of
remand recommended determination enforcement proceedings named uPI Ex Parte Reexamination Certificate No.
(‘‘RRD’’) of the presiding administrative and Sapphire Technology Limited U.S. 7,132,717 C1 on October 3, 2012.
law judge (‘‘ALJ’’) adding eleven (11) (‘‘Sapphire’’) of Shatin, Hong Kong as The Commission also affirmed the ALJ’s
days to the total number of days respondents. The Office of Unfair finding that uPI’s formerly accused
enforcement respondent uPI Import Investigations participated in the products contained or used Richtek’s
Semiconductor Corporation (‘‘uPI’’) of enforcement proceeding. Sapphire was asserted trade secrets to violate the
Hsinchu, Taiwan, violated the August later terminated from the enforcement Consent Order, but that uPI’s post-
13, 2010 consent order (‘‘the Consent proceeding based on a settlement Consent Order products did not
Order’’). The Commission has adopted agreement. misappropriate Richtek’s asserted trade
the RRD as a final determination of the On June 8, 2012, the presiding secrets.
Commission, issued a modified civil administrative law judge (‘‘ALJ’’) issued
his enforcement initial determination Both uPI and Richtek timely appealed
penalty order in the amount of $650,000 the Commission’s final determination.
directed against uPI, and has terminated (‘‘EID’’) finding a violation of the
Consent Order by uPI. The ALJ found The Federal Circuit issued its opinion in
the remand enforcement proceeding. the two appeals on September 25, 2014.
importation and sale of accused
FOR FURTHER INFORMATION CONTACT: See 767 F.3d 1372. The Court affirmed
products that infringe all asserted
Clint Gerdine, Office of the General claims of the patents at issue, and the Commission’s findings regarding
Counsel, U.S. International Trade importation and sale of formerly uPI’s appeal with a slight modification,
Commission, 500 E Street SW., accused products that contain or use but regarding Richtek’s appeal, the
Washington, DC 20436, telephone (202) Richtek’s asserted trade secrets. He Court reversed the Commission’s
708–2310. Copies of non-confidential found that uPI’s products developed determination that uPI did not violate
documents filed in connection with this after the consent order issued (‘‘post- the Consent Order based on trade secret
investigation are or will be available for Consent Order products’’) did not misappropriation with respect to uPI’s
inspection during official business misappropriate Richtek’s asserted trade post-Consent Order products. Id.
hours (8:45 a.m. to 5:15 p.m.) in the secrets. Also, he recommended Specifically, the Court found that, on
Office of the Secretary, U.S. enforcement measures for uPI’s the record provided, substantial
International Trade Commission, 500 E violation that included the following: evidence did not support the
Street SW., Washington, DC 20436, (1) Modifying the Consent Order to Commission’s conclusion that uPI’s
telephone (202) 205–2000. General clarify that the Order applies (and has post-Consent Order products were
information concerning the Commission always applied) to all uPI affiliates, past, independently developed. Id. at 1383.
may also be obtained by accessing its present, or future; and (2) imposing a Also specifically, regarding uPI’s appeal
Internet server at http://www.usitc.gov. civil penalty of $750,000 against uPI. and before deciding Richtek’s appeal,
The public record for this investigation The Commission did not review the the Court reduced the number of days
may be viewed on the Commission’s EID with respect to the trade secret of violation by eight (8) days to fifty-four
electronic docket (EDIS) at http:// allegations, but did review the EID as to (54) days. Id. at 1380. The Court
ebenthall on DSK6SPTVN1PROD with NOTICES

edis.usitc.gov. Hearing-impaired certain patent infringement allegations remanded the case to the Commission
persons are advised that information on and the number of violation days. On for further proceedings with respect to
this matter can be obtained by November 14, 2012, after review, the violation of the Consent Order. Id. at
contacting the Commission’s TDD Commission determined to affirm-in- 1383. On December 1, 2014, the Court
terminal on (202) 205–1810. part, reverse-in-part, modify-in-part, and denied uPI’s petition for rehearing of the
SUPPLEMENTARY INFORMATION: The vacate-in-part the EID’s findings under Court’s finding of no independent
Commission ordered this remand review. The Commission affirmed the development of uPI’s post-Consent

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Federal Register / Vol. 81, No. 6 / Monday, January 11, 2016 / Notices 1205

Order products. The mandate of the amended, 19 U.S.C. 1337, and in Part need special assistance in gaining access
Court issued on November 17, 2014, 210 of the Commission’s Rules of to the Commission should contact the
with respect to uPI’s appeal (Appeal No. Practice and Procedure, 19 CFR part Office of the Secretary at (202) 205–
13–1157) and on December 8, 2014, 210. 2000. General information concerning
with respect to Richtek’s appeal (Appeal By order of the Commission. the Commission may also be obtained
No. 13–1159). Issued: January 6, 2016.
by accessing its internet server at
In its order of April 8, 2015, the http://www.usitc.gov. The public record
Commission remanded the case to a Lisa R. Barton,
for this investigation may be viewed on
presiding administrative law judge and Secretary to the Commission. the Commission’s electronic docket
ordered the presiding ALJ to: [FR Doc. 2016–00288 Filed 1–8–16; 8:45 am] (EDIS) at http://edis.usitc.gov.
BILLING CODE 7020–02–P
make findings and issue a remand FOR FURTHER INFORMATION CONTACT: The
recommended determination (‘‘RRD’’) Office of Unfair Import Investigations,
concerning the total number of days an U.S. International Trade Commission,
importation or sale in the United States INTERNATIONAL TRADE
telephone (202) 205–2560.
occurred in violation of the Consent Order in COMMISSION
accordance with the Federal Circuit decision Authority: The authority for institution of
in uPI Semiconductor Corp. v. ITC and [Investigation No. 337–TA–979] this investigation is contained in section 337
Richtek Technology Corp. v. ITC, 767 F.3d of the Tariff Act of 1930, as amended, and
1372 (Fed. Cir. 2014), taking into account (1) Certain Radio Frequency Identification in section 210.10 of the Commission’s Rules
any additional violation days with respect to (‘‘RFID’’) Products and Components of Practice and Procedure, 19 CFR 210.10
the post-Consent Order products Richtek Thereof Institution of Investigation (2015).
specifically accused (see EID at 9 n.6); and
(2) the subtraction of eight (8) violation days AGENCY: U.S. International Trade Scope of Investigation: Having
with respect to the formerly accused Commission. considered the complaint, the U.S.
products. The RRD will also recommend a ACTION: Notice. International Trade Commission, on
total civil penalty amount based on the January 5, 2016, ordered that—
previous daily penalty of $10,000 per day of SUMMARY: Notice is hereby given that a (1) Pursuant to subsection (b) of
violation. complaint was filed with the U.S. section 337 of the Tariff Act of 1930, as
Comm’n Order. On April 20, 2015, International Trade Commission on amended, an investigation be instituted
Richtek filed a motion for December 4, 2015, under section 337 of to determine whether there is a
reconsideration of the Commission’s the Tariff Act of 1930, as amended, 19 violation of subsection (a)(1)(B) of
Remand Order with respect to the U.S.C. 1337, on behalf of Neology, Inc. section 337 in the importation into the
amount of the daily penalty and on May of Poway, California. A supplement to United States, the sale for importation,
7, 2015, the motion was denied. See the complaint was filed on December or the sale within the United States after
Comm’n Order Denying Motion. On 22, 2015. The complaint, as importation of certain radio frequency
October 8, 2015, the presiding ALJ supplemented, alleges violations of identification (‘‘RFID’’) products and
issued his RRD finding that after the section 337 based upon the importation components thereof by reason of
eight-day subtraction, eleven (11) days, into the United States, the sale for infringement of one or more of claims
associated with post-Consent Order importation, and the sale within the 13, 14, and 25 of the ’044 patent; claims
products, should be added to the United States after importation of 1–4, 6–12, and 14–18 of the ’436 patent;
number of days (54) uPI violated the certain radio frequency identification and claims 1, 2, 9–12, 14–18, and 26–
Consent Order to make the total sixty- (‘‘RFID’’) products and components 28 of the ’664 patent, and whether an
five (65) days in violation, and thereof by reason of infringement of industry in the United States exists as
accordingly increased the total civil certain claims of U.S. Patent No. required by subsection (a)(2) of section
penalty amount to $650,000 based on 8,325,044 (‘‘the ’044 patent’’); U.S. 337;
the daily penalty of $10,000. On October Patent No. 8,587,436 (‘‘the ’436 patent’’); (2) For the purpose of the
19, 2015, Richtek submitted comments and U.S. Patent No. 7,119,664 (‘‘the ’664 investigation so instituted, the following
regarding the RRD which reiterated the patent’’). The complaint further alleges are hereby named as parties upon which
same arguments made in its denied that an industry in the United States this notice of investigation shall be
motion for reconsideration. Id. On exists as required by subsection (a)(2) of served:
October 26, 2015, uPI and the section 337. (a) The complainant is: Neology, Inc.,
Commission investigative attorney each The complainant requests that the 12760 Danielson Court, Suite A, Poway,
filed a reply to Richtek’s comments. Commission institute an investigation CA 92064.
The Commission has determined to and, after the investigation, issue a (b) The respondents are the following
adopt the RRD as a final determination limited exclusion order and cease and entities alleged to be in violation of
of the Commission and has issued a desist orders. section 337, and are the parties upon
modified civil penalty order in the ADDRESSES: The complaint, except for which the complaint is to be served:
amount of $650,000 directed against any confidential information contained Kapsch TrafficCom IVHS, Inc., 8201
uPI. The Commission has rejected the therein, is available for inspection Greensboro Drive, Suite 1002, McLean,
arguments regarding the amount of the during official business hours (8:45 a.m. VA 22102.
daily penalty made by Richtek in its to 5:15 p.m.) in the Office of the Kapsch TrafficCom IVHS Holding
submitted comments for the same Secretary, U.S. International Trade Corp., 8201 Greensboro Drive, Suite
reasons given in the Commission’s Commission, 500 E Street SW., Room 1002, McLean, VA 22102.
ebenthall on DSK6SPTVN1PROD with NOTICES

Order denying Richtek’s motion for 112, Washington, DC 20436, telephone Kapsch TrafficCom IVHS
reconsideration. The Commission has (202) 205–2000. Hearing impaired Technologies Holding Corp., 8201
terminated the remand enforcement individuals are advised that information Greensboro Drive, Suite 1002, McLean,
proceeding. on this matter can be obtained by VA 22102.
The authority for the Commission’s contacting the Commission’s TDD Kapsch TrafficCom U.S. Corp., 8201
determination is contained in section terminal on (202) 205–1810. Persons Greensboro Drive, Suite 1002, McLean,
337 of the Tariff Act of 1930, as with mobility impairments who will VA 22102.

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Document Created: 2016-01-16 01:07:19
Document Modified: 2016-01-16 01:07:19

Category		Regulatory Information
Collection		Federal Register
sudoc Class		AE 2.7: GS 4.107: AE 2.106:
Publisher		Office of the Federal Register, National Archives and Records Administration
Section		Notices
Action		Notice.
Contact		Clint Gerdine, Office of the General Counsel, U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436, telephone (202) 708-2310. Copies of non- confidential documents filed in connection with this investigation are or will be available for inspection during official business hours (8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436, telephone (202) 205-2000. General information concerning the Commission may also be obtained by accessing its Internet server at http:// www.usitc.gov. The public record for this investigation may be viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired persons are advised that information on this matter can be obtained by contacting the Commission's TDD terminal on (202) 205-1810.
FR Citation		81 FR 1204