Winbond Electronics Corp. v. International Trade Commission

4 F. App'x 832
CourtCourt of Appeals for the Federal Circuit
DecidedJanuary 30, 2001
DocketNos. 01-1031, 01-1032, 01-1034, 01-1128
StatusPublished
Cited by2 cases

This text of 4 F. App'x 832 (Winbond Electronics Corp. 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
Winbond Electronics Corp. v. International Trade Commission, 4 F. App'x 832 (Fed. Cir. 2001).

Opinion

ORDER

RADER, Circuit Judge.

The final determination of the International Trade Commission concerning Atmel’s U.S. Patent No. 4,451,903 (the ’903 [835]*835patent) with respect to Winbond Electronics Corporation, Winbond Electronics North America Corporation, Silicon Storage Technology, Inc. and Sanyo Electric Co., Ltd., is affirmed in appeal Nos. 01-1031, -1032, -1034. The final determination concerning infringement of the ’903 patent with respect to Macronix International Co., Ltd. and Macronix America, Inc., in appeal No. 01-1128 is vacated and remanded to the Commission for further proceedings. The final determination of the Commission in appeal No. 01-1128 regarding Order No. 50 is affirmed.

The court today is issuing an opinion with respect to the issues of claim construction and infringement of the ’903 patent. An opinion will follow in due course with respect to the remaining issues concerning the ’903 patent upholding the following determinations of the Commission:

(1) that Respondents have not shown that the ’903 patent is unenforceable due to inequitable conduct;
(2) that Respondents have not shown that the ’903 patent is unenforceable due to improper joinder;
(3) that Respondents have not shown that the ’903 patent is unenforceable due to waiver and implied license;
(4) that Atmel waived its attorney-client privilege and work product protections dating back to January 1997.

The remaining issues in appeal No. 01-1128 concerning Patents Nos. 4,511,811 and 4,673,829 will be briefed and argued in the normal course.

Pursuant to this court’s order of January 30, 2001, this opinion constitutes the court’s opinion with respect to claim construction and infringement of Atmel Corp.’s U.S. Patent No. 4,451,903 (the ’903 patent).

The United States International Trade Commission determined that Macronix International Co., Ltd., and Macronix America, Inc., (collectively “Macronix”) did not infringe claims 1 and 9 of the ’903 patent. The Commission further found that Win-bond Electronics Corp. and Winbond Electronics North America Corp. (collectively ‘Winbond”) did infringe claims 1 and 9 of the ’903 patent.1 Because the Commission erred in its construction of claims 1 and 9 of the ’903 patent, this court vacates the Commission’s judgment of non-infringement and remands for further proceedings to determine whether Macronix infringes the ’903 patent under a correct claim construction. However, because this court’s claim construction does not affect the Commission’s determination that Winbond infringes the ’903 patent, this court affirms that determination.

I.

The ’903 patent discloses a semiconductor device and a method for encoding information onto and retrieving information from the device. In particular, the ’903 patent discloses a semiconductor chip with circuitry that performs the primary function of the chip connected to memory cells containing the device’s manufacturing and programming information. Thus, using the patented invention, a user can easily acquire information about the manufacture of the chip without disturbing the chip’s primary functions.

According to the patent’s written description, a chip’s manufacturing and programming information is encoded onto specific memory cells called the “product information array.” During regular operation of a semiconductor device, the information in the chip’s main memory array is [836]*836accessed by applying a signal at conventional voltage levels to a selected pin. This signal enables the chip’s row decoder and column decoder to retrieve information from the chip’s memory array. The retrieved information then appears at the output of the device through the chip’s output buffer and pins.

During operation of the semiconductor device to access information in the product information array of the chip in accordance with the disclosed invention, a higher voltage signal is applied to the same selected pin. An “access logic” circuit detects the higher voltage signal and disables the row (or column) decoder of the chip, thereby addressing the product information array instead of the main memory array. The column decoder (or row decoder if it is the column decoder that is disabled) then retrieves the memory stored in the product information array and provides the information through the chip’s output buffer and pins. In this manner, the chip’s manufacturing and programming information is provided at the output of the semiconductor device. A conceptual schematic diagram of the ’903 patent’s disclosed invention is depicted below.

[[Image here]]

Apparatus claim 1 of the ’903 patent recites:

A device for providing semiconductor product information to a user through electrical interrogation comprising
a primary circuit disposed upon a semiconductor chip,
a product information array disposed on the semiconductor chip adjacent said primary circuit, said product information array including information sufficient to identify at least the manufacturer of the chip,
access means for receiving first and second signals and for selecting said primary circuit in response to said first signal, said access means including ! a logic circuit means responsive to said second signal for selecting said product information array while simultaneously preventing access to said primary circuit, (
[837]*837output means for providing output signals representative of the information stored in said product information array.

(Emphasis added.) Method claim 9 of the ’903 patent recites:

A method of encoding product information on semiconductor devices including at least identification of the manufacture[r] of the semiconductor device comprising the steps of
providing a nonvolatile storage means on the device adjacent a primary circuit,
encoding in the storage means selected semiconductor product information including at least identification of the manufacturer, and
providing access means to permit access to said primary circuit during a fir[s]t 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.

(Emphasis added.) The ’903 patent issued on March 29, 1984, and will expire on September 18, 2001.

In March of 1997, based on Atmel’s complaint, the Commission initiated an investigation of Maeronix, Winbond and Sanyo (collectively “respondents”) under section 337 of the Tariff Act of 1930, as amended by 19 U.S.C. § 1337. Atmel alleged that Maeronix, Winbond and Sanyo violated section 337 by importing, selling for importation, and/or selling in the United States after importation, semiconductor chips that infringe the claims of three Atmel patents, including the ’903 patent. Silicon Storage Technology, Inc., a company that imports Sanyo and Winbond chips, intervened in the investigation.

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Bluebook (online)
4 F. App'x 832, Counsel Stack Legal Research, https://law.counselstack.com/opinion/winbond-electronics-corp-v-international-trade-commission-cafc-2001.