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HQ 470784





April 10, 2001

ENF 4-02 RR:IT:IP 470784 GFM

CATEGORY: UNFAIR COMPETITION 19 U.S.C. ' 1337

Sean Clark
Business Development Specialist
Silicon Storage Technology, Inc.
1171 Sonora Court
Sunnyvale, California 94086

RE: Exclusion Order; ITC Investigation No. 337-TA-395; Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller Devices and products containing same.

Dear Mr. Clark:

This is in response to your communications over the past several months (up to and including your most recent submission dated March 20, 2001), in which you have submitted samples and explanatory documents in support of your request that Customs not exclude from entry for consumption certain “redesigns” of semiconductor devices which would be otherwise excludable under Exclusion Order 337-TA-395 (hereinafter, the “’395 Order”).

Specifically, you request that Customs allow entry of “the latest SST 29xx series products manufactured by Sanyowhich incorporate a mask change by which the high voltage identification featurehas been removed.”

We note that this ruling does not address the sufficiency of certifications relative to importations of semiconductor devices manufactured by facilities other than Sanyo Electric Co., Ltd. of Japan and Winbond Electronics Corp. of Taiwan; those issues will be addressed in separate correspondence. Rather, this ruling addresses only the status of the so-called “redesigned” semiconductor devices and any certifications related to the importation of those devices.

FACTS:

Pursuant to the above-referenced exclusion order, the International Trade Commission (ITC) determined that there was a violation of 19 U.S.C. § 1337 as to the unlawful importation and sale of certain erasable programmable read only memory (EPROM), electronically erasable programmable read only memory (EEPROM), flash memory, and flash microcontroller semiconductor devices that infringe claims 1 or 9 of U.S. Letters Patent 4,451,903 (hereinafter the “’903 Patent”). The ‘395 Order states, in pertinent part, that:

“EPROM, EEPROM, flash memory, and flash microcontroller semiconductor devices, and circuit boards containing such devices, covered by claims 1 or 9 of U.S. Letters Patent 4,451,903 and manufactured abroad by Winbond Electronics Corporation of Taiwan (“Winbond”) or Sanyo Electronic Co., Ltd. of Japan (Sanyo) or any of their affiliated companies, parents, subsidiaries, contractors, or other related business entities, or their successors or assigns, are excluded from entry for consumption into the United States for the remaining term of the patent, except under license of the patent owner or as provided by law.”

U.S. International Trade Commission Limited Exclusion Order, Inv. No. 337-TA-395 at page 2.

The ITC also found a violation of 19 U.S.C. 1337 with regard to the ‘903 Patent as to Silicon Storage Technologies (SST). Notice of Final Determination and Issuance of Limited Exclusion Order; Notice of Denial of Motions for Sanctions, For Attorney’s Fees, and for Dismissal of Complaint, U.S.

International Trade Commission Notice dated October 16, 2000, at page 4. As a result, importations of the subject types of semiconductors by SST are excludable from entry for consumption into the United States as infringements of the ‘903 Patent.

The ‘395 Order also provides that U.S. Customs, as it deems necessary, may require that those seeking to import such devices, to proffer certifications, endorsed by persons with knowledge, that the devices are not excludable from entry for consumption under the ‘395 Order. In the present case, you have presented Customs with several such certifications.

In your submissions of samples and supporting documentation presented to Customs over the past several months, you have claimed that the redesigned devices have been modified so as to disable the high voltage means for accessing the manufacture and device identification codes. You contend that such modifications preclude the devices from constituting violations of the ‘903 Patent.

ISSUE:

The issue presented is whether the subject redesigned devices fall under the scope of the ‘395 Exclusion Order rendering them excludable from entry for consumption into the United States.

LAW AND ANALYSIS:

Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), prohibits, inter alia, the importation, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee of articles that infringe a valid and enforceable U.S. patent. 19 U.S.C. § 1337(a)(1)(B)(i). The ITC has authority to investigate alleged violations of section 337. If the ITC determines that there has been a violation of section 337, it shall, subject to certain potential exceptions, direct that the articles concerned be excluded from entry into the U.S. and, accordingly, notify the Secretary of the Treasury who shall, through its proper officers, refuse such entry. 19 U.S.C. § 1337. See also, 19 CFR § 12.39.

As mentioned the ‘395 Order states, in pertinent part, that: “EPROM, EEPROM, flash memory, and flash microcontroller semiconductor devices, and circuit boards containing such devices, covered by claims 1 or 9 of U.S. Letters Patent 4,451,903 and manufactured abroad by Winbond Electronics Corporation of Taiwan (“Winbond”) or Sanyo Electronic Co., Ltd. of Japan (Sanyo) or any of their affiliated companies, parents, subsidiaries, contractors, or other related business entities, or their successors or assigns, are excluded from entry for consumption into the United States for the remaining term of the patent, except under license of the patent owner or as provided by law.” The ITC also found a violation of 19 U.S.C. 1337 with regard to the ‘903 Patent as to Silicon Storage Technologies (SST). As a result, importations of the subject types of semiconductors by SST are excludable from entry into the United States as infringements of the ‘903 Patent.

The semiconductors which are the subject of this ruling are manufactured for Silicon Storage Technology, Inc. by Sanyo Electric Co., Ltd. of Japan, but, it is claimed that they have been redesigned such that they do not fall under the scope of the ‘395 Order in that they violate neither claims 1 nor 9 of the ‘903 Patent.

With specific regard to claim 9 of the ‘903 Patent, it has been stated that the claim involves:

A method of encoding product information on semiconductor devices including at least identification of the manufacturer of the semiconductor device comprising the steps ofproviding a nonvolatile storage means on the device adjacent a primary circuitencoding in the storage means selected semiconductor product information including at least identification of the manufacturer, and proving access means to permit access to said primary circuit during a first interval and to permit the encoded information to be retrieved from the storage means while simultaneously preventing access to said primary circuit during a second interval. Declaration of Osamu Osawa, Sanyo Electric Co., Ltd., February 2, 2001.

Upon review of the samples and documentation submitted by or on behalf of Silicon Storage Technology, Inc. which are the subject of this ruling, U.S. Customs Office of Laboratory & Scientific Services (OLSS) has determined that the subject redesigned semiconductor devices do fall under the scope of the ‘395 Order. Customs OLSS has noted that claim 9 of the ‘903 Patent is especially broad in that it appears to permit any means that allows access to the codes while “simultaneously preventing access” to the main memory. While the only means for accessing manufacturer and product identification codes explicitly discussed in U.S. Letters Patent 4,451,903 involved the use of high voltage, the text of the patent clearly indicates that its coverage is not limited to this particular embodiment. Customs OLSS has concluded that, at a minimum, the software means for accessing manufacturer and product identification codes is covered by claim 9 of U.S. Letter Patent 4,451,903 and that disabling the high voltage means does not eliminate probable patent infringement.

In light of the foregoing, Customs is not in the position to rule that these models fall outside the scope of the ‘395 Order. Notwithstanding the fact that certifications have been proffered by Silicon Storage Technology, Inc. indicating the signatory’s belief that the subject devices fall outside the scope of the order, based upon the state of the evidence, Customs has determined that the subject redesigned devices are subject to exclusion from entry for consumption under Exclusion Order 337-TA-395.

HOLDING:

The subject redesigned semiconductor devices submitted by or on behalf of Silicon Storage Technology, Inc. are subject to Exclusion Order 337-TA-395 are excludable from entry for consumption into the United States.

Sincerely,

Joanne Roman Stump, Chief

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