International Trade Commission Issues Order Dismissing Investigation Against Macronix, Sonnenschein Announces.

Business Editors

WASHINGTON--(BUSINESS WIRE)--June 14, 2001

Lawyers at Sonnenschein Nath & Rosenthal won a major patent litigation victory on behalf of Macronix International Co., Ltd. and Macronix America, Inc. ("Macronix") when the International Trade Commission (ITC) issued an order finding that Macronix's semiconductor products do not infringe the "Silicon Signature" patent of computer chip manufacturer Atmel Corporation. Part of ongoing litigation between domestic producer Atmel Corporation and foreign semiconductor makers, the ITC's order of June 1, 2001, dismissed the investigation against Macronix, finding that it committed no import violations under section 337 of the Tariff Act. An exclusion order remains in place against the other respondents prohibiting imports of their products into the United States.

The ITC's order concludes a major chapter in a patent litigation battle that began 4 1/2 years ago when Atmel accused Macronix and three other companies of importing semiconductor chips that allegedly infringed Atmel's patented chip technology. An Administrative Law Judge (ALJ) originally held in 1998 that Macronix did not infringe Atmel's patent and that the patent was invalid. On review, the ITC held that Atmel's patent was invalid because it failed to name one of the patent's inventors. Atmel then "corrected" its patent in the U.S. Patent and Trademark Office by adding an alleged co-inventor, and persuaded the ITC to reopen the case.

In 1999 the ITC remanded the reopened case to the ALJ. Following a four-day trial in early 2000, the ALJ found that Atmel's patent was invalid because Atmel added the wrong inventor and intentionally deceived the Patent Office on this matter. On review, the ITC reversed the ALJ's ruling, finding that Macronix's three co-respondents violated section 337 of the Tariff Act. The ITC also entered an exclusion order against those co-respondents, barring the import of their semiconductors containing the Silicon Signature technology into the United States. On separate grounds, though, the ITC found that Macronix did not infringe.

In an extraordinarily expedited appeal in early 2001, the U.S. Court of Appeals for the Federal Circuit affirmed the exclusion order against the co-respondents while also reversing the Commission's non-infringement ruling for Macronix. The Federal Circuit then remanded Macronix to the Commission for further findings regarding whether it infringed the patent, based upon a revised patent claim construction.

The ITC now has terminated the investigation, stating in its order that Macronix did not infringe Atmel's patent under the Federal Circuit's interpretation of the patent claims and that Macronix, therefore, has committed no import violations.

Kirk Ruthenberg, a partner in Sonnenschein's Washington, D.C. office, served as lead trial counsel in the Macronix case. He is part of Sonnenschein's Intellectual Property & Technology Group, which numbers more than 70 lawyers, nearly half of whom are registered patent lawyers with technical expertise in electrical and computer engineering, telecommunications, software, chemical, biotech and other life sciences, and mechanical engineering.

To view a PDF file of the Notice of Ruling regarding Macronix that appeared in the June 7, 2001 Federal Register, visit www.sonnenschein.com (Investigation No. 337-TA-395) In the Matter of Certain Eprom, Eprom, Flash Memory, and Flash Microcontroller Semiconductor Devices, and Products Containing Same; Notice of Final Determination of no Violation of Section 337 of the Tariff Act of 1930 as to Macronix Respondents on Remand From the U.S. Court of Appeals for the Federal Circuit.

Sonnenschein is a pioneer in the expansion of the worldwide Internet and a leader in applying new technology to the practice of law. With 500 attorneys in eight U.S. cities and a global reach throughout Europe, Asia and Latin America, the law firm also serves the unique and diverse needs of businesses in understanding and adapting to emerging technologies that help their enterprises prosper and grow.