Texas Instruments Inc. v. U.S. Intern. Trade Com'n

• Decision Date: 28 March 1989
• Docket Number: 88-1177,Nos. 88-1090,s. 88-1090
• Citation: 871 F.2d 1054,10 USPQ2d 1257
• Parties: , 10 U.S.P.Q.2d 1257 TEXAS INSTRUMENTS INCORPORATED, Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Samsung Company, Limited, and Samsung Semiconductor & Telecommunications Co., Limited, Intervenors. SAMSUNG COMPANY, LIMITED, and Samsung Semiconductor & Telecommunications Company, Limited, Appellants, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Texas Instruments Incorporated, Intervenor.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1054

871 F.2d 1054

10 ITRD 2546, 10 U.S.P.Q.2d 1257

TEXAS INSTRUMENTS INCORPORATED, Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Samsung Company, Limited, and Samsung Semiconductor &

Telecommunications Co., Limited, Intervenors.

SAMSUNG COMPANY, LIMITED, and Samsung Semiconductor &

Telecommunications Company, Limited, Appellants, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Texas Instruments Incorporated, Intervenor.

Nos. 88-1090, 88-1177.

United States Court of Appeals Federal Circuit.

March 28, 1989.

As Amended May 23, 1989.

Rehearing Denied in No. 88-1090 May 26, 1989.

Hal D. Cooper, of Jones, Day, Reavis & Pogue, Cleveland, Ohio, argued for appellant in No. 88-1090. With him on the brief were Robert C. Kahrl, James L. Wamsley, III, and Leonard L. Lewis.

Thomas O'Connell, Office of the General Counsel, ITC, Washington, D.C., argued for appellee in No. 88-1090. With him on the brief were Michael J. Buchenhorner, Lyn M. Schlitt, General Counsel and James A. Toupin, Asst. General Counsel.

William K. West, Jr., of Cushman, Darby & Cushman, Washington, D.C., argued for intervenors in No. 88-1090. With him on the brief were Michael L. Keller, Charles R. Donohoe, Peter W. Gowdey, Lawrence Harbin and John E. Gartman.

William K. West, Jr., of Cushman, Darby & Cushman, Washington, D.C., argued for appellants in No. 88-1177. With him on the brief were Charles R. Donohoe, Lawrence Harbin and John E. Gartman.

Michael J. Buchenhorner, Office of the General Counsel, ITC, Washington, D.C., argued for appellee in No. 88-1177. With him on the brief were Thomas O'Connell, Lyn M. Schlitt, General Counsel and James A. Toupin, Asst. General Counsel.

Robert C. Kahrl, of Jones, Day, Reavis & Pogue, Cleveland, Ohio, argued for intervenor in No. 88-1177. With him on the brief were Hal D. Cooper, James L. Wamsley, III, and Leonard L. Lewis.

Before FRIEDMAN, BISSELL, and MAYER, Circuit Judges.

FRIEDMAN, Circuit Judge.

These are appeals from determinations by the International Trade Commission (Commission) of the validity and infringement of various claims of four patents owned by Texas Instruments, Inc., that cover computer components or their manufacture. The infringing products were manufactured in Korea and imported into the United States by Samsung Co., Ltd., and Samsung Semiconductor and Telecommunications Co., Ltd. (collectively, Samsung). Since both appeals are from various portions of a single Commission decision and involve the same technology and closely related claims, we decide both appeals in this opinion. We affirm in part, reverse in part, and vacate in part.

I

A. The Commission Proceedings.

In February 1986, Texas Instruments filed with the Commission a complaint against 19 respondents alleging that they had violated section 337 of the Tariff Act of 1930, 19 U.S.C. Secs. 1337, 1337a (1982), by importing into and selling in the United States computer components that infringed 10 of Texas Instruments' patents. The Commission instituted an investigation of the complaint. During the ensuing Commission proceedings, 17 of the 19 respondents either settled with Texas Instruments or the investigation was terminated with respect to them. Only the charges against Samsung are involved in this appeal.

After extensive hearings, the administrative law judge (ALJ) rendered an initial decision of 800 pages (the longest initial decision in the Commission's history). In the Matter of Certain DRAMs, Inv. No. 337-TA-242, Initial Determination (USITC May 21, 1987) (hereinafter "ALJ Report"). Texas Instruments' case against Samsung was based on Samsung's alleged infringement of five Texas Instruments patents: U.S. Patent Nos. 3,716,764 (the '764 patent), 3,940,747 (the '747 patent), 4,081,701 (the '701 patent), 4,533,843 (the '843 patent), and 4,543,500 (the '500 patent). The ALJ held that Samsung had infringed the '764, the '701, and the '843 patents, and had not shown that those patents were invalid; that Samsung had not infringed the '747 patent; and that the '500 patent was unenforceable because Texas Instruments had engaged in misconduct before the Commission during the discovery phase of the proceeding.

The Commission granted review of certain portions of the initial decision. In a 98-page opinion the Commission affirmed-in-part and reversed-in-part the ALJ's decision. Certain Dynamic Random Access Memories, Etc., USITC Pub. 2034, Inv. No. 337-TA-242 (Nov. 1987) (Commission opinion on Violation, Remedy, Bonding, and Public Interest, hereinafter "ITC opin."). The Commission held: (1) the '764 patent was valid but Samsung had not infringed it; (2) Samsung had not infringed the '747 patent; (3) Samsung had infringed the '701 patent; (4) the '843 patent was valid and Samsung had infringed it; and (5) the '500 patent was valid and enforceable, and Samsung had infringed it.

The Commission declined to issue a general exclusion order barring the importation of all infringing devices, or a cease-and-desist order. It issued a limited exclusion order that barred only importation of particular components (and computers containing those components) manufactured by Samsung that infringed specified claims of the '701, '500, or '843 patents.

B. The Commission Decision.

As indicated, Texas Instruments contended that Samsung's computer components infringed five of its patents. The Commission found that Samsung had infringed three of the patents ('701, '843, and '500), and that Samsung had not infringed the two other patents ('764 and '747).

Since the determination of noninfringement of the '747 patent is not challenged in these appeals, we do not discuss that patent.

1. The '701 Patent. The claims of this patent here at issue cover a sense amplifier within a memory device that has an improved method of reading the memory circuit so as to increase the speed of the circuit with minimal electrical power loss. The Commission rejected Samsung's contention that the patent was invalid because another person (Puar) had made the invention before the inventor named in the patent. The Commission held that three of the Samsung computer components known as the 64K, 128K, and 256K DRAMs, infringed the '701 patent.

A DRAM is a memory device in a computer in which information is stored and from which it is retrieved. It is an acronym for dynamic random access memory. "K" represents the potential amount of memory stored in the DRAM. Each kilobyte, or K, constitutes 1,024 units of memory. Thus, the Samsung 64K DRAM could store 65,536 units of memory. We refer to the Samsung 64K, 128K, and 256K DRAMs collectively as the "Samsung DRAMs."

The Commission found, and Samsung concedes, that Samsung manufactured its 128K DRAM by combining two 64K DRAMs and that the Commission rulings and actions with respect to the 64K DRAM are equally applicable to the 128K DRAM.

2. The '843 Patent. This patent covers supplying a boost amplification to a computer to refresh the memory circuit prior to reading of the memory circuit contents. The Commission held that the Samsung 256K DRAM, but not the 64K and 128K DRAMs, infringed claims 6 or 7 of this patent.

3. The '500 Patent. This patent also covers supplying a boost voltage to a memory circuit prior to reading. The ALJ had held this patent unenforceable because Texas Instruments had engaged in improper conduct during the Commission proceedings. The Commission reversed that ruling and held that the patent was valid and that the Samsung 256K DRAM infringed claims 6 and 7 of the patent (the only claims Texas Instruments alleged were infringed). (The ALJ had found that the Samsung 64K and 128K DRAMs did not infringe those claims and Texas Instruments did not appeal that ruling to the Commission.)

4. The '764 Patent. Texas Instruments alleged that the Samsung DRAMs infringed claims 16, 17, and 19 of this patent. Those claims cover a technique for rapid and inexpensive encapsulation in plastic of electrical components. The ALJ found that the Samsung DRAMs infringed those claims, but the Commission reversed. The reversal rested on the Commission's interpretation of three limitations that were present in each of those claims.

A more detailed description of the claims and analyses of the legal rulings of the Commission is set forth in parts II and III of this opinion.

C. The Present Appeals.

In its appeal in No. 88-1090, Texas Instruments challenges the Commission's determination that Samsung's DRAMs did not infringe the '764 patent and that Samsung's 64K and 128K DRAMs did not infringe the '843 patent. In its appeal in No. 88-1177, Samsung argues that the Commission erred in upholding the validity of the '701, '843, and '500 patents, in reversing the ALJ's ruling that the '500 patent was unenforceable and in finding that the Samsung DRAMs infringed the '701 patent. Because of the nature of the issues involved in the two appeals, we discuss Samsung's appeal first.

II Samsung's Appeal in No. 88-1177

A. The '701 Patent.

1. Validity.

When the '701 patent was issued in 1978 to the named inventors, White, et al. (collectively, White), Puar had pending an application for a patent covering the same or a similar device. The examiner rejected claims 4-7 and 10 in the Puar application in view of the '701 patent. Asserting that he and not White was the first inventor of the invention the '701 patent covered, Puar copied two claims of the '701 patent, which covered a sense amplifier in a memory device. He thereby provoked an interference between himself and White.

Since White had filed his patent application prior to Puar's filing date, to prevail in the interference Puar was initially required to show that he conceived the invention or reduced it to practice prior to White's filing date. The Board of Patent Interferences (Board) held that Puar could not demonstrate prior actual reduction to practice of the invention of the count because his product could not "operate...