`
`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before The Honorable Dee Lord
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN NON-VOLATILE MEMORY
`DEVICES AND PRODUCTS CONTAINING
`SAME
`
`
`Inv. No. 337-TA-1046
`
`
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`
`
`COMPLAINANTS MACRONIX INTERNATIONAL CO., LTD. AND MACRONIX
`AMERICA, INC.’S MOTION FOR PARTIAL TERMINATION OF THE
`INVESTIGATION WITH RESPECT TO CERTAIN ASSERTED CLAIMS
`
`Pursuant to Commission Rules 210.15 and 210.21, and Ground Rule 3.4, Complainants
`
`Macronix International Co., Ltd. and Macronix America, Inc. (collectively “Macronix” or
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`“Complainants”) through their undersigned attorneys, respectfully move for partial termination
`
`of the Investigation with respect to allegations of infringement of claims 11, 12, and 16 of U.S.
`
`Patent No. 6,788,602 against all named Respondents1 based on partial withdrawal of the
`
`Complaint in this Investigation as to these claims. The Commission Investigative Staff and
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`Respondents do not oppose this motion.
`
`
`
`1 The named Respondents include: Toshiba Corporation, Toshiba America, Inc., Toshiba
`America Electronic Components, Inc., Toshiba America Information Systems, Inc., Toshiba
`Information Equipment (Philippines), Inc., and Toshiba Memory Corporation (collectively
`“Toshiba” or “Respondents”).
`
`Inv. No. 337-TA-1046
`
`1
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`
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`MOTION FOR PARTIAL TERMINATION
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`
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`I.
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`Ground Rule 3.2 Certification
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`Pursuant to Ground Rule 3.2, counsel for Macronix certifies that Macronix made
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`reasonable good-faith efforts to resolve the matter with Toshiba at least two business days prior
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`to filing this motion.
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`II.
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`Procedural Background
`
`The Commission instituted this Investigation to determine whether Respondents violate
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`section 337 through their importation into the United States, sale for importation, or sale within
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`the United States after importation of certain non-volatile memory devices and products
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`containing same by reason of infringement of certain claims of U.S. Patent No. 6,552,360 (“the
`
`’360 patent”); U.S. Patent No. 6,788,602 (“the ’602 patent”); and U.S. Patent No. 8,035,417
`
`(“the ’417 patent”). On April 24, 2017, the ALJ set August 10, 2018 as the target date for
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`completion of this Investigation. See Order No. 5. An evidentiary hearing is scheduled for
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`January 22, 2018 through January 26, 2018. Id.
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`III. Legal Background
`
`Commission Rule 210.21(a)(1) provides that “[a]ny party may move at any time prior to
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`the issuance of an initial determination on violation of section 337 of the Tariff Act of 1930 to
`
`terminate an investigation in whole or in part as to any or all respondents, on the basis of
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`withdrawal of the complaint or certain allegations contained therein…” Commission Rule
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`210.21(a)(1); see also Certain Tool Handles, Tool Holders, Tool Sets, Components Therefor,
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`Inv. No. 337-TA-483, Order No. 7, at 1 (Apr. 22, 2003) (granting motion for partial termination
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`as to certain claims where complainant “determined not to proceed with the investigation as to
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`[certain claims], on the ground that a reduction in the number of patent claims at issue will allow
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`the parties to focus their attention on the ‘primary’ patent claims in a more expeditious manner
`
`Inv. No. 337-TA-1046
`
`2
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`
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`MOTION FOR PARTIAL TERMINATION
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`
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`
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`and will also reduce the time and resources required from all of the parties and the administrative
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`law judge to proceed with the investigation”).
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`IV. Discussion
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`The sole purpose of this motion is to streamline this Investigation. Withdrawal of the
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`allegations based on claims 11, 12, and 16 of the ’602 patent will simplify the Investigation,
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`streamline the hearing, and conserve judicial, the Staff’s, and private party resources. See
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`Certain HSP Modems, Software and Hardware Components Thereof, and Products Containing
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`Same, Inv. No. 337-TA-439, Order No. 16 (Feb. 16, 2001) (granting complainant’s motion for
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`partial termination as to one of the patents at issue in order to “simplify the Investigation and
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`permit the parties and the Court to focus their resources on the remaining three patents at
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`issue.”).
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`Pursuant to Commission Rule 210.21(a)(1), Macronix confirms that there are no
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`agreements, written or oral, express or implied, between the parties concerning the subject matter
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`of the Investigation (e.g., no settlement, licensing, or any other such agreement). In addition,
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`there are no extraordinary circumstances that would justify denying termination-in-part as to
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`claims 11, 12, and 16 of the ’602 Patent.
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`V.
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`Conclusion
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`For the foregoing reasons, Macronix respectfully requests that the ALJ grant Macronix’s
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`request for termination of this Investigation in-part as to claims 11, 12, and 16 of the ’602
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`Patent.2
`
`
`
`
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`2 Upon termination of claims 11, 12, and 16 of the ’602 patent, claims 1-10 of the ’602 patent
`remain pending in this Investigation, in addition to the asserted claims of the ’360 and ’417
`patents.
`
`Inv. No. 337-TA-1046
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`3
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`MOTION FOR PARTIAL TERMINATION
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`
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`Dated: September 22, 2017
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`
`
`
`
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`Respectfully submitted,
`
`FISH & RICHARDSON P.C.
`
`By: /s/ Christian Chu
`Michael J. McKeon
`Christian A. Chu
`Thomas S. Fusco
`FISH & RICHARDSON P.C.
`The McPherson Building
`901 15th Street, N.W., 7th Floor
`Washington, D.C. 20005
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`
`David Barkan
`Leeron G. Kalay
`FISH & RICHARDSON P.C.
`500 Arguello St., Suite 500
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`Facsimile: (650) 839-5071
`
`Robert Courtney
`FISH & RICHARDSON P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`Telephone: (612) 335-5070
`Facsimile: (612)288-9696
`
`Kevin K. Su
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Telephone: (617) 542-5070
`Facsimile: (617) 542-8906
`
`Counsel for Complainants Macronix International
`Co., Ltd., and Macronix America, Inc.
`
`Inv. No. 337-TA-1046
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`4
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`MOTION FOR PARTIAL TERMINATION
`
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that true and correct copies of the foregoing document,
`COMPLAINANTS MACRONIX INTERNATIONAL CO., LTD. AND
`MACRONIX AMERICA, INC.’S MOTION FOR PARTIAL TERMINATION OF THE
`INVESTIGATION WITH RESPECT TO CERTAIN ASSERTED CLAIMS
` have been filed and served on this 22nd day of September, 2017, on the following:
`
`
`
`The Honorable Lisa R. Barton
`Secretary to the Commission
`U.S. International Trade Commission
`500 E Street, S.W., Room 112
`Washington, D.C. 20436
`
` Via First Class Mail
` Via Hand Delivery
` Via Federal Express
` Via Electronic Filing
`
` Via First Class Mail
` Via Hand Delivery
` Via Federal Express
` Via Electronic Mail
`
`
`The Honorable Dee Lord
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, S.W., Room 317
`Washington, D.C. 20436
`edward.jou@usitc.gov
`
`
`Vu Bui, Esq.
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Room 401
`Washington, D.C. 20436
`vu.bui@usitc.gov
`
`
`Aaron Wainscoat, Esq.
`DLA Piper LLP
`2000 University Avenue
`East Palo Alto, CA 94303
`DLA_Toshiba1046@dlapiper.com
`
`Counsel for Respondents Toshiba Corporation, Toshiba
`America, Inc., Toshiba America Electronic Components,
`Inc., Toshiba America Information Systems, Inc., Toshiba
`Information Equipment (Philippines), Inc. and Toshiba
`Memory Corporation
`
`/s/ Adjoa K. Afful
` Adjoa K. Afful
`
` Via First Class Mail
` Via Hand Delivery
` Via Federal Express
` Via Electronic Mail
`
` Via First Class Mail
` Via Hand Delivery
` Via Federal Express
` Via Electronic Mail
`
` 337-TA-1046 - CERTIFICATE OF SERVICE – 1
`
`
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