• Freescale Files New 337 Complaint Regarding Certain Integrated Circuits
  • June 14, 2011 | Authors: John F. Presper; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On June 8, 2011, Freescale Semiconductor, Inc. of Austin, Texas (“Freescale”) filed a Complaint requesting that the ITC commence an investigation pursuant to Section 337.

    The Complaint alleges that Funai Electric Co., Ltd. of Japan, Funai Corporation, Inc. of Rutherford, New Jersey (collectively, “Funai”), MediaTek Inc. of Taiwan (“MediaTek”) and Zoran Corporation of Sunnyvale, California (“Zoran”) unlawfully import, sell for importation, and/or sell within the U.S. after importation certain integrated circuits, chipsets, and products containing same that infringe U.S. Patent No. 5,467,455 (“the ‘455 patent”).

    According to the Complaint, the ‘455 patent is directed to circuitry that reduces unwanted signal reflection on a bi-directional communication bus between two integrated circuits by disabling the termination circuitry on one of the integrated circuits when data is not being received from the communication bus.  Freescale alleges that Funai, Zoran and MediaTek manufacture, import, sell for importation, and/or sell within the U.S. after importation products that infringe the ‘455 patent, including televisions.  The Complaint specifically refers to accused television products bearing brand names such as Philips, Magnavox, Emerson, Symphonic and Sylvania.

    According to Freescale, the Complaint was filed to (1) address evidentiary concerns identified in Investigation No. 337-TA-709 (“the 709 investigation”) in which Freescale was the Complainant and Funai were Respondents, and during which Zoran, a third-party supplier of integrated circuits to Funai, produced documents that Chief ALJ Paul J. Luckern found unreliable as evidence of the contents of the accused products; and (2) address the infringement of other Funai products that contain integrated circuits supplied by Zoran and MediaTek, as well as infringement of other end-products containing Zoran and/or MediaTek integrated circuits or chipsets.  In particular, Freescale asserts that in his Final Initial Determination in the 709 investigation (which the Commission declined to review) ALJ Luckern found that the datasheets and schematics produced by Zoran lacked any indicia of finality, but that if they were accorded weight, then the accused products would infringe claims 9 and 10 of the ‘455 patent.

    Regarding domestic industry, Freescale points to Order No. 33 in the 709 investigation, in which ALJ Luckern granted Freescale’s motion for summary determination that it had satisfied the domestic industry requirement based on licensing activities in the United States for each of the asserted patents in that investigation, including the ‘455 patent.

    The Complaint identifies the following related litigation regarding the ‘455 patent:  (1) infringement suit filed by Freescale against ProMOS Technologies in the Eastern District of Texas (C.A. No. 4:06-CV-491), settled by the parties in August 2008; (2) Investigation No. 337-TA-656, involving Freescale and Respondent LSI Corporation (“LSI”), terminated in November 2008 upon settlement by the parties; (3) infringement suit filed by Freescale against LSI in the Eastern District of Texas (C.A. No. 2:08-CV-314), stayed pursuant to 28 U.S.C. §1659 and ultimately dismissed by the parties; (4) the 709 investigation, which resulted in a finding of no violation; (5) infringement suit filed by Freescale against Funai in the Western District of Texas (C.A. No. 10-CV-138), filed on March 1, 2010; (6) request for re-examination of the ‘455 patent filed by anonymous third party on April 29, 2011; and (7) infringement suit filed by Freescale against Zoran and MediaTek in the Western District of Texas (C.A. No. 1:11-CV-472), filed on June 8, 2011.

    With respect to potential remedy, Freescale requests that the Commission issue a permanent exclusion order and permanent cease and desist orders directed at Funai, Zoran and MediaTek.