Oak Technology, Inc. v. International Trade Commission

248 F.3d 1316, 58 U.S.P.Q. 2d (BNA) 1748
CourtCourt of Appeals for the Federal Circuit
DecidedMay 2, 2001
DocketNo. 00-1078
StatusPublished
Cited by3 cases

This text of 248 F.3d 1316 (Oak Technology, Inc. v. International Trade Commission) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Oak Technology, Inc. v. International Trade Commission, 248 F.3d 1316, 58 U.S.P.Q. 2d (BNA) 1748 (Fed. Cir. 2001).

Opinion

CLEVENGER, Circuit Judge.

Oak Technology, Incorporated (“Oak”) appeals from the final determination of the United States International Trade Commission (“Commission”) that Oak’s United States Patent No. 5,581,715 (“the '715 patent”) is not infringed by Intervenors Me-diaTek, Inc., United Microelectronics Corporation, Lite-On Technology Corporation, and AOpen, Inc. (together “MediaTek”). We hold that the Commission correctly interpreted the asserted claims of the '715 patent, and that substantial evidence supports the Commission’s finding of nonin-fringement. Consequently, we conclude that the Commission correctly determined that no violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C: § 1337,1 has been proven. We therefore affirm.

I

Section 337 of the Tariff Act of 1930 prohibits, inter alia, importation of articles into the United States which infringe the claims of valid and enforceable U.S. patents. 19 U.S.C. § 1337(a)(1)(B). The Commission is authorized to conduct investigations to determine whether violations of section 337 have occurred, and if so to issue orders enjoining such violations. 19 U.S.C. § 1337(b). In this case, the Commission instituted an investigation at the behest of Oak, which alleged that MediaTek violated section 337 by importation of electronic products and/or components that infringe claims of the '715 patent. After an evidentiary hearing conducted in January 1999, the administrative law judge issued a preliminary determination finding no infringement of the claims of the '715 patent, and holding that the claims at issue are invalid on several grounds as well as not enforceable by reason of inequitable conduct arising during prosecution of the '715 patent.

Oak sought review by the Commission of the adverse preliminary determination. The Commission reversed the administrative law judge’s invalidity and unenforee-ability decisions, but affirmed the finding of no infringement and consequently of no violation of section 337. Oak timely appealed the Commission’s final determination to this court. We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(6).

II

The technology in this case concerns the transfer of information stored on a CD-ROM disk to a host computer, such as a typical personal computer. The acronym [1319]*1319“CD-ROM” stands for “compact disk, read only memory.” A host computer in the context of this case contains a CD-ROM drive, which manages the communication of data between the CD-ROM disk and the host computer. The CD-ROM drive itself contains a device known as a CD-ROM drive controller, typically implemented as a semiconductor integrated circuit (“IC” or “chip”). The invention described and claimed in the '715 patent relates to an improved CD-ROM drive controller which provides faster and simplified data communication.

As noted in the written description, before the invention claimed in the '715 patent, “[conventional CD drive designs supported] the Industry Standard Architecture (ISA) bus convention and require[d] the insertion of an interface card or host adapter card into an ISA input/output bus slot of the host personal computer.” '715 patent, col. 1, 11. 60-63. By 1994, the filing date of the application that matured into the '715 patent, an alternative and improved bus structure known as the IDE/ATA interface (which stands for “integrated drive electronics with an AT attachment interface”), was widely available. '715 patent, col. 2, 11. 20-26. As noted in the '715 patent, prior art CD-ROM drives had thus far failed to take advantage of the improved and widely available IDE/ATA standard bus structure:

Conventional CD drives in the prior art failed to make use of the IDE/ATA bus. However, now that the [IDE/ATA] standard has become widely used in many personal computers, it would be desirable to provide a CD drive with built-in controller functionality and a standard connector. This would obviate the need for an additional host adapter card and associated electronics.

’715 patent, col. 2, 11. 35-41. Accordingly, the '715 patent describes and claims such an improved CD-ROM controller which incorporates the IDE/ATA bus structure.

The improved drive controller structure invention is not, however, the focus of this appeal. Instead, the manner in which the claimed CD-ROM controller achieves error detection and correction is at the heart of this case.

Well before the application for the '715 patent was filed, there is no dispute that it was commonly known that errors can be present in data that is retrieved by laser beam from a CD-ROM disk for communication with a host computer. Such errors can arise from a number of causes, including defects in the manufacture of a CD-ROM disk, scratches or dust particles on the disk surface, or electronic noise in the CD-ROM drive controller or in the host computer. Unless such errors are detected and corrected, the errors are likely to compromise the veracity of the information transferred from the disk to the host computer. Before 1994, persons of ordinary skill in the art knew how to construct CD-ROM controllers capable of retrieving digital data from a CD-ROM disk, temporarily storing the retrieved data in random access memory of the host computer, checking such data for errors, and correcting the detected errors, if possible.

To a novice, it may seem fantastic that a CD-ROM controller could detect an error among the billions of bits on a CD-ROM disk, comprehend the nature of the mistake, and correct the error by supplying the correct information. How is such a-fantasy made real?

As is common in many fields of endeav- or, there are standard-setting bodies and standards that govern industry practice of storing information digitally on CD-ROM disks. By 1994, it was common to store information on such disks, and the industry had developed standards for the storage and formatting of data on such disks. One of those standards is International [1320]*1320Standard ISO/IEC10149, also referred to as the “Yellow Book” standard, named after the color of the binder in which the standard commonly appears. The Yellow Book requires, among other things, that data be encoded onto CD-ROM disks in a specific format, and to that end it lays down specific standards for the storage of data on a CD-ROM disk. Oak readily admits that “Oak’s patent contemplates Yellow Book compliance.”

The Yellow Book specifies that digital data to be recorded on a CD-ROM “shall be represented by 8-bit bytes and grouped into Sectors,” and that “[a] Sector is the smallest addressable part of the information area that can be accessed independently.” A Sector (also referred to as a “block”),2 contains 2352 bytes of data, and is subdivided into specifically identified regions. In the relevant operating mode (known as “Sector Mode 01”) these regions are denominated as follows: Sync field, Header field, User Data field, EDC field, Intermediate field, P-Parity field and, finally, Q-Parity field. Reproduced immediately below is Figure 11 as set forth in the Yellow Book, which graphically illustrates the structure of a Sector in Sector Mode 01:

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Bluebook (online)
248 F.3d 1316, 58 U.S.P.Q. 2d (BNA) 1748, Counsel Stack Legal Research, https://law.counselstack.com/opinion/oak-technology-inc-v-international-trade-commission-cafc-2001.