Texas Instruments Inc. v. U.S. Intern. Trade Com'n
| Decision Date | 10 March 1993 |
| Docket Number | 92-1218,92-1288,92-1319 and 92-1320,92-1282,Nos. 92-1168,s. 92-1168 |
| Citation | 988 F.2d 1165,26 USPQ2d 1018 |
| Parties | , 26 U.S.P.Q.2d 1018 TEXAS INSTRUMENTS INCORPORATED, Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Analog Devices, Inc., and Cypress Semiconductor Corporation, Integrated Device Technology, Inc., LSI Logic Corporation and VLSI Technology, Inc., Intervenors. CYPRESS SEMICONDUCTOR CORPORATION, Integrated Device Technology, Inc., LSI Logic Corporation and VLSI Technology, Inc., and Analog Devices, Inc., Appellants, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Texas Instruments Incorporated, Intervenor. |
| Court | U.S. Court of Appeals — Federal Circuit |
James F. Davis, Howrey & Simon, Washington, DC, argued, for appellant in No. 92-1168 and intervenor in No. 92-1282. With him on the brief, were Cecilia H. Gonzalez, Joseph P. Lavelle, John R. Alison, Diana Stein and Brian T. Foley, Washington, DC. Also on the brief were Jay C. Johnson, Thomas R. Fitzgerald and Patricia L. Ray, Texas Instruments Inc., Dallas, TX.
John M. Calimafde, Hopgood, Calimafde, Kalil, Blaustein & Judlowe, New York City, argued, for appellant, Analog Devices, Inc., in No. 92-1288. With him on the brief, were Marvin N. Gordon and Edward M. Reisner, New York City.
Andrea Casson, Atty., Office of General Counsel, U.S. Intern. Trade Com'n Washington, DC, argued, for appellee. With her on the brief, were Lyn M. Schlitt, Gen. Counsel and James A. Toupin, Asst. Gen. Counsel, Washington, DC.
Paul H. Heller, Kenyon & Kenyon, Washington, DC, argued, for intervenors Cypress Semiconductor Corp., Integrated Device Technology, Inc., LSI Logic Corp. and VLSI Technology, Inc. With him on the brief, were John C. Altmiller, Philip J. McCabe, Charles W. Calkins and John W. Bateman, Washington, DC. Also on the brief were Michael A. Ladra, Peter N. Detkin and Kenneth B. Wilson, Wilson, Sonsini, Goodrich & Rosati, Palo Alto, CA.
Before NIES, Chief Judge, CLEVENGER, Circuit Judge, and KAUFMAN, Senior District Judge. *
In these appeals, consolidated for the purpose of decision, Texas Instruments Incorporated (TI), Analog Devices, Incorporated (Analog), Cypress Semiconductor Corporation, Integrated Device Technology, Incorporated, LSI Logic Corporation, and VLSI Technology, Incorporated (VLSI) (all appellants except TI referred to collectively as respondents) appeal the final determination of the United States International Trade Commission (Commission or ITC) in In the Matter of Certain Plastic Encapsulated Integrated Circuits, Inv. No. 337-TA-315, USITC Pub. No. 2574 (Nov. 1992). The Commission found that TI's U.S. Patent No. 4,043,027 (the '027 patent) was not invalid and that certain plastic encapsulated circuits imported by the respondents infringed claims 12, 14 and 17 of the '027 patent. The Commission determined that importation of these infringing devices violated section 337 of the Tariff Act of 1930, as amended, (codified at 19 U.S.C. § 1337 (1988)). The Commission, therefore, issued a limited exclusion order and cease and desist orders to each of the five respondents. Respondents challenge the issuance of these orders and TI seeks additional relief. We affirm the Commission's determination.
This case is somewhat complicated because of the numerous issues raised by TI and the respondents. Consequently, a brief background serves as a guide to our decision.
On July 9, 1990, TI filed a complaint with the Commission under section 337 alleging that the respondents had engaged in unfair methods of competition and unfair acts including the importation, sale and marketing in the United States of certain plastic encapsulated circuits produced abroad by a process purportedly covered by claims 1, 12, 14 and 17 of the '027 patent.
After evaluating TI's complaint, the Commission instituted an investigation and assigned it to an administrative law judge (ALJ). Following a hearing, the ALJ issued a 282 page initial decision determining that the respondents had violated section 337 in the unlawful importation or sale of certain plastic encapsulated integrated circuits produced overseas by a process that if practiced in the United States would infringe claims 12 and 14, but not claims 1 and 17, of the '027 patent.
The ALJ determined, inter alia, that claim 14 was literally infringed by integrated circuits encapsulated using an "opposite-side gating process." He also determined that claim 12 was infringed by integrated circuits encapsulated using the opposite-side gating process under the doctrine of equivalents. The ALJ determined that none of the claims was literally infringed by integrated circuits encapsulated using a "same-side gating process" and that prosecution history estoppel precluded TI from asserting that integrated circuits encapsulated using the same-side gating process infringed claim 12 under the doctrine of equivalents. With respect to validity, the ALJ determined that the '027 patent was not invalid for obviousness, anticipation, failure to reveal best mode, or obviousness-type double patenting. The ALJ further determined that Analog had acquired a limited license from TI, but that the existence of that license did not provide Analog with a complete defense to the section 337 action.
On December 3, 1991, the Commission decided to review the ALJ's initial decision only on the issues of obviousness, construction of claim 17, infringement of claim 17 and whether claim 17 is practiced by the domestic industry. On that date all unreviewed portions of the ALJ's initial decision were adopted by the Commission. 19 C.F.R. § 210.53(h) (1992). On February 18, 1992, the Commission issued its orders on the basis of a 46 page opinion deciding the issues under review. The Commission again determined that the invention of claims 12, 14, and 17 of the '027 patent would not have been obvious. The Commission construed claim 17 in the same manner as the ALJ, but found that as a factual matter some of Analog's and VLSI's circuits, known as "8-lead" circuits, literally infringed claim 17. Consequently, the Commission issued the limited exclusion order prohibiting all respondents from importing integrated circuits manufactured abroad using the opposite-side gating process covered by claims 12 and 14 of the '027 patent and prohibiting Analog and VLSI from importing circuits manufactured abroad using that process covered by claim 17 of the '027 patent. The Commission also issued a cease and desist order to each respondent prohibiting them from selling their inventory unless the sale is for reexport. The President did not disapprove the determination, so the Commission's actions became final on April 19, 1992. 19 U.S.C. § 1337(j)(4) (1988).
TI's '027 patent claims a process for encapsulating electronic components in plastic through a process called transfer molding. The process claimed in the '027 patent permits a semiconductor to be encapsulated in plastic without damaging the semiconductor or the wires that provide the electrical connection between the semiconductor device and the metal leads which extend outside the molded package. Claims 12, 14 and 17 of the '027 patent are at issue on appeal.
The process for encapsulating a semiconductor device comprising:
electrically connecting each of the electrical terminals of the device to a conductor and mechanically attaching a portion of said device to at least one of the conductors for support;
disposing the conductors generally in a common plane;
disposing the device and a major portion of the means for making electrical connection between the terminals and the conductors generally on one side of the plane;
disposing the device and portions of the conductors in a mold cavity; and
holding the ends of the conductors extending from the mold cavity while injecting a fluid insulating material into the mold cavity on the other side of the plane to subsequently solidify and embed said device, the fluid insulating material being injected into a portion of the cavity remote from the device and the means electrically connecting the terminals of the device to the conductors, whereby the fluid will not directly engage the device and electrical connection means at high velocity, and the conductors will be secured against appreciable displacement by the fluid.
A process of encapsulating a semiconductor device comprising:
the fluid insulating material being injected into a portion of the cavity on the opposite side of said plane to preclude direct high velocity engagement between the fluid and the device and the electrical connections thereto.
Claim 17
A process of encapsulating a semiconductor device comprising:
the fluid insulating material being injected into a portion of the cavity on the opposite side of said conductors to preclude direct high velocity engagement between...
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