UPI SEMICONDUCTOR CORPORATION v. ITC

The opinion in UPI SEMICONDUCTOR CORPORATION v. ITC authored by Judge Newman begins


Before the court are the appeal of respondentintervenor
uPI Semiconductor Corp. (“uPI”) and the
companion appeal of complainant-intervenors Richtek
Technology Corp. and Richtek USA, Inc. (together “Richtek”)
from rulings of the International Trade Commission
in an action to enforce a Consent Order, Certain DC-DC
Controllers and Products Containing Same, Inv. No. 337-
TA-698 (75 Fed. Reg. 446). We affirm the Commission’s
ruling that uPI violated the Consent Order as to the
imports known as “formerly accused products,” and affirm
the modified penalty for that violation. We reverse the
ruling of no violation as to the “post-Consent Order”
products. The case is remanded for further proceedings in
accordance with our rulings herein.



Trade secrets were involved:


The ALJ found that the formerly accused products
contained or were produced using Richtek’s trade secrets
and that the formerly accused products alone, or incorporated
into downstream products, infringed the ’190, ’470,
and ’717 patents. The ALJ also found that the post-
Consent Order products infringed the ’470 and ’717 patents.
However, the ALJ found that the post-Consent
Order products were independently developed, and therefore
not produced using Richtek’s trade secrets, due to
“clean room” procedures uPI implemented. (...)

Richtek’s petition for review, in turn, challenged the
ALJ’s finding that the post-Consent Order products did
not embody Richtek’s trade secrets. Richtek argued that
the post-Consent Order products are substantially similar
or identical to the formerly accused products and the
asserted trade secrets, and that the post-Consent Order
products continue to be produced using Richtek’s trade
secrets. (...)

The full Commission affirmed the ALJ’s findings that
the formerly accused products were produced using or
contained Richtek’s trade secrets and that the post-
Consent Order products were produced without Richtek’s
trade secrets. (...)

Richtek appeals the Commission’s ruling that the
post-Consent Order products do not use or contain Richtek’s
trade secrets, but does not appeal the rulings as to
Consent Order violations concerning the ’190 patent,
the ’470 patent, or the ’717 patent.



Within the analysis


uPI states that, despite its agreement by Consent Order
not to knowingly aid, abet or induce importation of
products produced using or containing Richtek trade
secrets or infringing Richtek patents, this provision
cannot reach third-party importations. uPI states that
Kyocera Wireless Corp. v. International Trade Commission,
545 F.3d 1340 (Fed. Cir. 2008), prohibits the Commission
from excluding imports of non-respondents absent
a general exclusion order. uPI states that because this
case was terminated by Consent Order, with no general
exclusion order, no penalty can be based on importations
by non-respondents, whether or not they were knowingly
aided or abetted by uPI.