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PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN SEMICONDUCTOR CHIPS AND
PRODUCTS CONTAINING SAME Inv. No. 337-TA-753
RESPONSE OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS TO
THE JOINT MOTION TO TERMINATE THE INVESTIGATION AS TO
RESPONDENTS MEDIATEK INC., AUDIO PARTNERSHIP PLC AND OPPODIGITAL
INC. ON THE BASIS OF A SETTLEMENT AND PATENT LICENSE
AGREEMENT (MTN. DKT. NO. 753-107)
OFFICE OF UNFAIR IMPORT INVESTIGATIONS
Lynn I. Levine, Director
David O. Lloyd, Supervisory Attorney
Daniel L. Girdwood, Investigative Attorney
U.S. International Trade Commission
500 E Street, S.W. Suite 401
Washington, D.C. 20436
202.205.3409 (ph)
202.205.2158 (fax)
Public Version: April 9, 2012
Confidential Version: March 29, 2012
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PUBLIC VERSION
The Office of Unfair Import Investigations (OUII) respectfully
submits this
response to the March 16, 2012 joint motion of Complainant
Rambus Inc. (Rambus),
Respondent MediaTek Inc. (MediaTek), and MediaTek customers
Audio Partnership
PLC (Audio Partnership) and Oppo Digital Inc. (Oppo), for
partial termination of the
investigation on the basis of a settlement and patent license
agreement between Rambus
and MediaTek. For the reasons explained below OUII supports the
motion.1
I. BACKGROUND
On December 1, 2010, Rambus filed a Complaint with the
Commission alleging a
violation of Section 337 by MediaTek, MediaTek customers Audio
Partnership and Oppo,
and other proposed respondents based upon the importation into
the United States, the
sale for importation, and the sale within the United States
after importation of certain
semiconductor chips and products containing same that infringe
claims of U.S. Patent
Nos. 6,470,405 (the 405 patent); 6,591,353 (the 353 patent); and
7,287,109 (the
109 patent) (collectively, the Barth I Patents). See generally
Complaint Under
Section 337 of the Tariff Act of 1930, As Amended, EDIS Doc. ID
439133 (Dec. 1, 2012)
(Complaint).2 The Commission instituted this investigation as to
all of the asserted
1OUII notes that the motion appears to have been filed with and
served on the
presiding Administrative Law Judge two weeks afterissuance of
the Initial
Determination on Violation of Section 337 on March 2, 2012.
Because the investigation
is now pending before the Commission, OUII treats the motion as
if filed directly withthe Commission.
2The Complaint also includes allegations of infringement of U.S.
Patent Nos.
7,715,494 (the 494 patent); 7,602,858 (the 858 patent); and
7,602,857
(the 857 patent) (collectively, the Dally patents). However,
none of the
infringement allegations on the Dally patents was directed at
MediaTek or its customerrespondents. See Teleconference Tr., EDIS
Doc. ID 453574 at 64:15-72:11 (June 30,
2011) (Rambus admitting that MediaTek was not accused of
infringing the Dally patents
in the Complaint).
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PUBLIC VERSION
patents on January 4, 2011. See Notice of Investigation, 76 Fed.
Reg. 384 (January 4,
2011).
An evidentiary hearing was held on October 12-14 and 17-20, 2011
to adjudicate
whether the Respondents have violated Section 337 as to the
asserted patents. On
March 2, 2012, the presiding Judge issued an Initial
Determination in which he found no
violation of Section 337 as to any of the accused products. See
Initial Determination on
Violation of Section 337 and Recommended Determination on Remedy
and Bond, EDIS
Doc. IDs. 725571 & 725577 (Mar. 2, 2012) (ID). The parties
currently await the
Commissions decision as to whether to grant review of that
ID.
On March 16, 2012, Complainant Rambus and Respondents MediaTek,
Audio
Partnership, and Oppo filed the instant motion in which they
seek termination as to these
three respondents in view of the Settlement and Patent License
Agreement (the
Agreement) between Rambus and MediaTek. Motion at 1. If the
motion is granted,
the investigation will proceed with non-settling supplier
Respondents LSI Corp.,
STMicroelectronics Inc., and STMicroelectronics N.V., and their
customer Respondents.
II. DISCUSSION
A. Compliance with Rule Governing Termination by Settlement
Commission Rule 210.21(a)(2) states in pertinent part that [a]ny
party may move
at any time for an order to terminate an investigation in whole
or in part as to any or all
respondents on the basis of a settlement, a licensing or other
agreement. 19 C.F.R.
210.21(a)(2). Commission Rule 210.21(b) further specifies that
in order for an
investigation to be terminated on the basis of a settlement
agreement, the motion for
termination must include: (1) copies of the settlement
agreement, including both a public
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PUBLIC VERSION
and a confidential version, if necessary; (2) any supplemental
agreements; and
(3) a statement that there are no other agreements, written or
oral, express or implied,
between the parties concerning the subject matter of the
investigation. 19 C.F.R.
210.21(b).
The instant motion to terminate complies with the forgoing
requirements. The
motion states that [t]here are no other agreements, written or
oral, express or implied,
between Rambus and any of MediaTek, Audio Partnership, and Oppo
concerning the
subject matter of this Investigation. Motion at 1. Further,
public, confidential, and
highly confidential copies of the Agreement, which is
confidential to MediaTek and
Rambus, are attached to the Motion.3 Memo at 6; Exhibits A-C to
Motion.
B. Substance of the Agreements
Rambus and MediaTek have negotiated an Agreement that resolves
the entire
dispute between them relating to this investigation. More
specifically, the Agreement
memorializes the parties agreement to compromise and settle the
disputes arising out of
this investigation and related litigation in the U. S. District
Court for the Northern District
of California. (Agreement, 2.1 (Release by Rambus); id. at 2.5
(Dismissals and Other
Provisions Terminating the Disputes); id. at 3.1 (License to
MediaTek); id. at 3.2
(Rambus Non-Assertion)). [ ]
3On March 28, 2012, OUII contacted MediaTek and Rambus regarding
the over-
redaction of information in the confidential and public versions
of the Agreements
that accompany the motion. In OUIIs view, the complete redaction
of certain keyprovisions, e.g., Sections 2.1, 2.2, 3.1-3.5(d) and
7.4 of the Agreement, from all but the
highly confidential version is not warranted.
However, both MediaTek and Rambus agreed to OUII disclosing
certain aspectsof the Agreements to the non-moving Respondents by
way of OUIIs motion response.
This disclosure appears in Section II(B) below, which cites to
and describes at a high
level various redacted portions of the Agreements.
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PUBLIC VERSION
[
] In addition,
Rambus has stipulated to dismissal of its claims of infringement
against the products of
Audio Partnership and Oppo that are at issue in this
investigation. (Agreement, 2.5(a)
([S]uch stipulations for dismissal will dismiss assertions
against Audio Partnership Plc
and Oppo Digital, Inc.)). [
] The Agreement specifies a five (5) year term. (Agreement,
7.1). Finally,
MediaTek agrees to provide the consideration specified in
Section 5 of the Agreement,
the exact terms of which are redacted in the public version and
the confidential version
served on the non-moving Respondents. (Agreement, 5).
C. Public Interest Considerations
The Administrative Procedure Act states that agencies should
consider
termination of disputes by the involved parties where the public
interest permit[s].
5 U.S.C. 554(c)(1). OUII has reviewed the confidential, the
highly confidential, and
the proposed public versions of the Agreements. In OUIIs view,
the available
information does not indicate that the Agreement between Rambus
and MediaTek will
harm the public health and welfare, competitive conditions in
the U.S. economy, the
production of like or directly competitive articles in the U.S.,
or U.S. consumers.
Moreover, the public interest generally favors settlement in
order to avoid needless
litigation and to conserve public resources. See, e.g., Certain
Semiconductor Chips with
Minimized Chip Package Size & Products Containing Same, Inv.
No. 337-TA-630, Order
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PUBLIC VERSION
No. 25, at 4 (Sept. 4, 2008) (the termination of a respondent,
such as that proposed by
the motion, is generally in the public interest); Certain Laser
Imageable Lithographic
Printing Plates, Inv. No. 337-TA-636, Order No. 7, at 4 (May 16,
2008); Certain
Compact Disc and DVD Holders, Inv. No. 337-TA-482, Order No. 11,
at 3 (Mar. 7,
2003); Certain Gel-Filled Wrist Rests and Products Containing
Same, Inv. No. 337-TA-
456, Order No. 16, at 5 (May 21, 2002). OUII therefore submits
that terminating this
investigation as to MediaTek and its customers Audio Partnership
and Oppo based on the
aforementioned Agreements would not be contrary to the public
interest.
III. CONCLUSION
For the reasons stated above, OUII supports the joint motion to
terminate the
investigation as to MediaTek, Audio Partnership, and Oppo.
Respectfully Submitted,
/s/ Daniel L. GirdwoodLynn I. Levine, Director
David O. Lloyd, Supervisory Attorney
Daniel L. Girdwood, Investigative Attorney
OFFICE OF UNFAIR IMPORT INVESTIGATIONS
U.S. International Trade Commission500 E Street S.W., Suite
401
Washington, D.C. 20436
202.205.3409 (ph)202.205.2158 (fax)
Confidential Version: March 29, 2012Public Version: April 9,
2012
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Certain Semiconductor Chips Inv. No. 337-TA-753
And Products Containing Same
CERTIFICATE OF SERVICE
The undersigned certifies that on April 9, 2012, he caused the
foregoing(PUBLIC)RESPONSE OF THE OFFICE OF UNFAIR IMPORT
INVESTIGATIONS TO THE JOINT MOTION TO TERMINATE THE
INVESTIGATION AS TO RESPONDENTS MEDIATEK INC., AUDIO
PARTNERSHIP PLC AND OPPO DIGITAL INC. ON THE BASIS OF A
SETTLEMENT AND PATENT LICENSE AGREEMENT to be filed with
theCommission, served by hand (2 copies) on Judge Theodore R. Essex
(including a
courtesy .pdf copy to [email protected]), served by hand (1
copy) on the Office of
the General Counsel (including a courtesy .pdf copy to
[email protected]), andserved upon the private parties (1
copy each) in the manner indicated below:
Complainant Rambus Inc.
Christine E. Lehman Via Email
c/o Finnegan Henderson901 New York Ave., N.W.
Washington, D.C. 20001-4413
202.408.4000 (ph)
202.408.4400 (fax)
[email protected]
Respondents MediaTek Inc., Cisco Systems Inc., Motorola Mobility
Inc., Oppo
Digital Inc., and Audio Partnership PLC
Thomas Pease Via Emailc/o Quinn Emanuel51 Madison Ave., 22nd
Floor
New York, N.Y. 10010
212.849.7000212.849.7100
[email protected]
[email protected] (secondary counsel for MediaTek, Oppo
Digital, andAudio Partnership)
S&[email protected] (secondary counsel for
Motorola)
[email protected] (secondary counsel for Cisco)
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Respondents LSI Corp. and Seagate Technology
Jonathan D. Link Via Email
c/o Kilpatrick Townsend & Stockton LLPSuite 900
607 14th St., N.W.Washington, D.C. 20005202.508.5800 (ph)
202.508.5858 (fax)
[email protected]@fostermurphy.com
Respondents ASUSTek Computer Inc., Asus Computer Intl Inc., and
Hewlett-
Packard Co.,
Andrew R. Kopsidas Via Emailc/o Fish Richardson
1425 K Street, N.W. - 11th Floor
Washington, D.C. 20005202.783.5070 (ph)
202.283.7331 (fax)
[email protected]
Respondents STMicroelectronics N.V. and STMicroelectronics
Inc.
Eric Rusnak Via Email
c/o K&L Gates1601 K Street, N.W.
Washington, D.C. 20006
202.778.9000 (ph)202.778.9100 (fax)
[email protected]
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Respondent Hitachi Global Storage Tech.
Alexander J. Hadjis Via Email
c/o Morrison & Foerster2000 Pennsylvania Ave., N.W.
Suite 600Washington, D.C. 20006202.887.1500 (ph)
202.887.0763 (fax)
[email protected]
Respondent Garmin Intl
Louis S. Mastriani Via Email
c/o Adduci, Mastriani & Schaumberg LLP
1133 Connecticut Avenue, 12th FloorWashington, D.C. 20036
202.467.6300 (ph)
202.466.2006 (fax)
[email protected]
/s/ Daniel L GirdwoodOffice Of Unfair Import Investigations
U.S. International Trade Commission500 E Street, S.W., Suite
401
Washington, D.C. 20436
202.205.3409202.205.2158 (Facsimile)
