PUBLIC VERSION
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`
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`In the Matter of
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`MEMORIES AND PRODUCTS
`CONTAINING SAME
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`CERTAIN STATIC RANDOM ACCESS
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`Investigation No. 337-TA-792
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`COMMISSION OPINION
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`I.
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`INTRODUCTION
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`On October 25, 2012, the presiding administrative law judge (“ALJ”) (Judge Bullock)
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`issued his original final initial determination (“ID”) in this investigation. The ALJ found no
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`Violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, with respect to
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`the accused products of respondents GSI Technology, Inc., Cisco Systems, Inc., and California
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`Avnet, Inc. (“Respondents”) in connection with United States Patent Nos. 6,534,805 (“the ’805
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`patent”); 6,651,134 (“the ’ 134 patent”); 6,262,937 (“the ’937 patent”); and 7,142,477 (“the ’477
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`patent”). On December 21, 2012, the Commission determined to review the ID in its entirety
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`and remanded the investigation to the ALJ to make findings on invalidity and unenforceability,
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`issues on which he did not rule. On February 25, 2012, the ALJ issued his Remand ID (“RID”),
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`finding that the asserted patents are enforceable and not invalid. On April 26, 2013, the
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`Commission determined to review the RID in part. Specifically, the Commission determined to
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`review the ALJ’s invalidity determinations.
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`Upon review of the ID and RID, the Commission affirms the ALJ’s finding of no
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`violation of section 337. Specifically, with respect to the ’805 patent, the Commission affirms
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`the following findings: (1) complainant Cypress Semiconductor Corporation (“Cypress”) failed
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`to prove that the accused products infringe the asserted claims; (2) Cypress failed to establish the
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`Qualcomm Incorporated
`EX1013
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`Qualcomm Incorporated
`EX1013
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`technical prong of the domestic industry requirement; and (3) Respondents failed to establish by
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`clear and convincing evidence that neither the Osada reference nor the Ishida ’041 patent
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`anticipates the asserted claims. The Commission reverses the ALJ’s finding that the Ishida
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`IEDM reference does not anticipate the asserted claims of the ’805 patent. Regarding
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`the ’ 134, ’937, and ’477 patents, the Commission affirms the following findings: (1) Cypress
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`failed to prove that the accused products infringe the asserted claims; (2) Cypress failed to
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`establish the technical prong of the domestic industry requirement; and (3) Respondents failed to
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`establish by clear and convincing evidence that the cited prior art references anticipate the
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`asserted claims. The Commission supplements and modifies the ID and RID as discussed below.
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`II.
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`BACKGROUND
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`A.
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`Procedural History
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`The Commission instituted this investigation on July 28, 2011, based on a complaint filed
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`by Cypress. 76 Fed. Reg. 45295 (July 28, 2011). The complaint alleged Violations of section
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`337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337) in the importation into the United
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`States, the sale for importation, and the sale within the United States after importation of certain
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`static random access memories and products containing the same by reason of infringement of
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`various claims of the ”805, ’134, ’937 and ’477 patents. Id. The notice of investigation named
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`the following respondents: GSI Technology, Inc. of Sunnyvale, California (“GSI”); Alcatel-
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`Lucent of Paris, France (“Alcatel-Lucent”); Alcatel-Lucent USA, Inc. of Murray Hill, New
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`Jersey (“Alcatel-Lucent USA”); Telefonaktiebolaget LM Ericsson of Stockholm, Sweden
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`(“Ericsson LM”); Ericsson, Inc. of Plano, Texas (“Ericsson”); Motorola Solutions, Inc. of
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`Schaumburg, Illinois (“Motorola”); Motorola Mobility, Inc. of Libertyville, Illinois (“MMI”);
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`Arrow Electronics, Inc. of Melville, New York (“Arrow”); Nu Horizons Electronics Corp. of
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`Melville, New York (“Nu Horizons”); Cisco Systems, Inc. of San Jose, California (“Cisco”);
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`Hewlett Packard Company/Tipping Point of Palo Alto, California (“HP”); Avnet, Inc. of Phoenix,
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`Arizona (“Avnet”); Nokia Siemens Networks US, LLC of Irving, Texas (“Nokia US”); Nokia
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`Siemens Networks B.V. of Zoetermeer, Netherlands (“Nokia”); and Tellabs of Naperville,
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`Illinois (“Tellabs”). Id. The Office of Unfair Import Investigations is not a party to this
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`investigation.
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`On September 15, 2011, the ALJ issued an ID terminating the investigation as to
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`respondents Arrow and Nu Horizons based upon a consent order stipulation. See Order No. 9
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`(Sept. 15, 2011). The Commission determined not to review. See Notice of Commission
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`Determination Not to Review an Initial Determination Granting a Joint Motion to Terminate the
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`Investigation as to Respondents Arrow Electronics, Inc. and Nu Horizons Corp. Based on
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`Consent Order Stipulation (Oct. 18, 2011).
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`On January 31, 2012, the ALJ issued IDs terminating the investigation as to respondents
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`Alcatel—Lucent USA, Nokia, and Nokia US based upon settlement agreements. See Order Nos.
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`23 and 25 (Jan. 31, 2012). The Commission determined not to review.1
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`On February 6, 2012, the ALJ issued an ID terminating the investigation as to respondent
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`Alcatel-Lucent based upon withdrawal of allegations pertaining to Alcatel-Lucent from the
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`1 See Notice of Commission Determination Not to Review an Initial Determination
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`Granting a Joint Motion to Terminate the Investigation as to Respondent Alcatel-Lucent USA,
`Inc. on the Basis of a Settlement Agreement (Feb. 17, 2012); Notice of Commission
`Determination Not to Review an Initial Determination Granting a Joint Motion to Terminate the
`Investigation as to Respondents Nokia Siemens Networks B.V. and Nokia Siemens Networks,
`LLC Based Upon the Execution of a Settlement Agreement (Feb. 17, 2012).
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`complaint. See Order No. 26 (Feb. 6, 2012). The Commission determined not to review. See
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`Notice of Commission Determination Not to Review an Initial Determination Granting a Joint
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`Motion to Terminate the Investigation as to Respondent Alcatel—Lucent Based Upon Withdrawal
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`of Certain Allegations from the Complaint (Feb. 22, 2012).
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`On February 14, 2012, the ALJ issued IDs granting motions for summary determination
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`of no violation of section 337 as to MMI, HP, Motorola, Tellabs, and Ericsson LM. See Order
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`Nos. 34 and 35 (Feb. 14, 2012). The Commission determined not to review.2
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`That same day, the ALJ issued an ID granting Cypress’s motion for summary
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`determination that it has satisfied the economic prong requirement for domestic industry under
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`19 U.S.C. § 1337(a)(3). See Order No. 37 (Feb. 14, 2012). The Commission determined not to
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`review. See Notice of Commission Determination Not to Review an Initial Determination
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`Granting Complainant’s Motion for Summary Determination that It Has Satisfied the Economic
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`Prong for Domestic Industry Under 19 U.S.C. § 1337(a)(2) (Mar. 7, 2012).
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`The ALJ held an evidentiary hearing from March 12, 2012, through March 14, 2012, and
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`thereafter received post-hearing briefing from the parties. During the hearing, the ALJ granted a
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`motion by Cypress to withdraw its allegations that certain of the accused SRAM products that
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`[
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`] infringe claims 1, 2, and 5 of the ’805 patent. See
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`Hearing Tr. at 14224—16.
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`2 See Notice of Commission Determination Not to Review an Initial Determination
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`Granting a Motion for Summary Determination than Respondent Motorola Mobility, Inc. Has
`Not Violated Section 337 of the Tariff Act of 1930 (Mar. 7, 2012); Notice of Commission
`Determination Not to Review an Initial Determination Granting a Motion for Summary
`Determination that Respondents Hewlett-Packard Company/Tipping Point, Motorola Solutions,
`Inc., Tellabs, Inc., and Telefonaktiebolaget LM Ericsson Have Not Violated Section 337 of the
`Tariff Act of 1930 (Mar. 7, 2012).
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`On March 19, 2012, the ALJ issued an ID terminating the investigation as to respondent
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`Ericsson based upon a settlement agreement. See Order No. 46 (Mar. 19, 2012). The
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`Commission determined not to review. See Notice of Commission Determination Not to Review
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`an Initial Determination Granting a Joint Motion to Terminate the Investigation as to Respondent
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`Ericsson, Inc. Based Upon the Execution of a Settlement Agreement (Apr. 13, 2012).
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`On April 5, 2012, the ALJ issued an ID granting an unopposed motion by Cypress to
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`withdraw allegations pertaining to claim 2 of the ’937 patent from the investigation. See Order
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`No. 48 (Apr. 5, 2012). The Commission determined not to review. See Notice of Commission
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`Determination Not to Review an Initial Determination Granting Complainant’s Unopposed
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`Motion to Terminate the Investigation as to Claim 2 of US. Patent No. 6,262,937 Based Upon
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`Withdrawal of Allegations from the Complaint (Apr. 30, 2012).
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`On July 12, 2012, the ALJ issued an ID extending the target date for completion of the
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`investigation by approximately three months to February 25, 2013. See Order No. 49 (July 12,
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`2012). The Commission determined not to review. See Notice of Commission Determination
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`Not to Review an Initial Determination Extending the Target Date for Completion of the
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`Investigation (Aug. 13, 2012).
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`On October 25, 2012, the ALJ issued his final ID, finding no violation of section 337 by
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`the remaining respondents: GSI, Avnet, and Cisco (“Respondents”). Specifically, the ALJ
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`found that the Commission has subject matter jurisdiction, in rem jurisdiction over the accused
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`products, and in personam jurisdiction over the respondents. ID at 8. The ALJ also found that
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`the importation requirement of section 337 (19 U.S.C. § 1337(a)(1)(B)) has been satisfied. Id.
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`The ALJ, however, found that the accused products do not infringe the asserted claims of the
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`involved patents. See ID at 16, 24, 39, and 55. The ALJ also found that Cypress failed to
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`establish the existence of a domestic industry that practices the asserted patents under 19 U.S.C.
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`§ 1337(a)(2) because of failure to establish the technical prong of the domestic industry
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`requirement. See ID at 20, 31, 45, and 58. The ALJ did not consider the validity or
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`enforceability of the asserted patents despite Respondents’ arguments in both their pre-hearing
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`and post-hearing briefs that the asserted patents are invalid in light of the prior art, and that
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`the ’477 patent is unenforceable for inequitable conduct. See ID at 20, 31, 45-46, and 59.
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`On November 7, 2012, Cypress filed a petition for review of the ID, challenging the
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`ALJ’s findings that the accused products do not infringe the asserted claims of the asserted
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`patents. See Complainant Cypress Semiconductor Corporation’s Petition for Commission
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`Review (“Cypress Pet”). That same day, Respondents filed a contingent petition for review.3
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`See Respondents’ Contingent Petition for Review (“Resp Pet”). On November 15, 2012, the
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`parties filed responses to the petitions for review. See Cypress Semiconductor Corporation’s
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`Response to Respondents’ Contingent Petition for Review (“Cypress Resp”); Respondents
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`Response to Complainant Cypress Semiconductor Corporation’s Petition for Review (“Resp
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`Resp”).
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`On December 21, 2012, the Commission determined to review the ID in its entirety and
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`remanded the investigation to the ALJ to make findings on invalidity and unenforceability, issues
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`litigated by the parties but not addressed in the final ID. On February 25, 2012, the ALJ issued
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`his RID, finding that the asserted patents are enforceable and not invalid.
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`3 Under the Commission’s rules, contingent petitions for review are treated as petitions for
`review. 19 C.F.R. § 210.42(b)(3).
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`On March 11, 2013, Respondents filed a petition for review of the RID, challenging the
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`ALJ’s findings that the asserted patents are enforceable and not invalid. See Respondents’
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`Petition for Review of the Remand Initial Determination on Validity and Unenforceability
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`(“Resp RID Pet”). On March 19, 2013, Cypress filed a response to the petition for review. See
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`Complainant Cypress Semiconductor Corporation’s Response to Respondents’ Petition for
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`Review of the Remand Initial Determination on Validity and Unenforceability (“Cypress RID
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`Resp.”).
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`On April 26, 2013, the Commission determined to review the RID in part, i.e. , with
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`respect to invalidity. See 78 Fed. Reg. 25767 (May 2, 2013). The Commission declined
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`Respondents’ request to take judicial notice of the on—going reexamination proceedings at the
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`United States Patent and Trademark Office regarding the ”805 patent and admit filings in that
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`case into evidence in this investigation. Id.
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`B.
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`Patents and Technology at Issue
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`The technology at issue in this investigation generally relates to static random access
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`memories or “SRAMs.” ID at 4. An SRAM memory acts like a switch in that the memory
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`retains its state for as long as the memory has power, unlike a DRAM (dynamic random access
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`memory), which needs to be constantly refreshed to maintain its state. Cypress Pet. at 6.
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`The ”805 patent, entitled “SRAM Cell Design” issued on March 18, 2003. The patent
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`names Bo Jin as the inventor.
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`’805 patent (JX—l). The ”805 patent describes an improved
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`SRAM cell design and method of manufacture.
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`’805 patent, col. 1, 11. 7-10. Cypress owns the
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`patent and has asserted independent claim 1 and dependent claims 2 and 4—6 in this investigation.
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`The ’ 134 patent, entitled “Memory Device with Fixed Length Non Interruptible Burst”
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`issued on November 18, 2003.
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`’ 134 patent (JX—2). The patent names Cathal G. Phelan as the
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`inventor. The ’ 134 patent describes “a memory device that transfers a fixed number of words or
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`data with each access.” ’ 134 patent, col. 1, 11. 6-8. Cypress owns the patent and has asserted
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`independent claim 1 and dependent claims 2 and 12—1 5 in this investigation.
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`The ’937 patent, entitled “Synchronous Random Access Memory Having a Read/Write
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`Address Bus and Process for Writing to and Reading from the Same” issued on July 17,
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`2001.
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`’937 patent (JX—4). The patent names Matthew R. Arcoleo, Cathal G. Phelan, Ashish
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`Pancholy, and Simon J. Lovett as the inventors. The ’937 patent describes “a random access
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`memory and the process for writing to and reading from the same.” ’937 patent, col. 1, 11. 19-22.
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`Cypress owns that patent and has asserted independent claim 1 and dependent claims 6, 12, and
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`13 in this investigation.
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`The ’477 patent, entitled “Memory Interface System and Method for Reducing Cycle
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`Time of Sequential Read and Write Accesses Using Separate Address and Data Buses,” issued
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`on November 28, 2006. ’477 patent (IX-3). The patent names Thinh Tran, Joseph Tzou, and
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`Suresh Parameswaran as the inventors. The ’477 patent describes a “memory interface that
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`transparently separates the read and write address and data buses to achieve a faster sequential
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`read and write cycle time.” ’477 patent, col. 1, 11. 10—13. Cypress owns the patent and has
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`asserted independent claim 8 and dependent claim 9 in this investigation.
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`C.
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`Products at Issue
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`Cypress has accused certain GSI SRAMs and downstream products of Cisco and Avnet
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`that contain those GSI SRAMs in this investigation. For a complete list of the specific accused
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`products and patent claims asserted against those products, see ID at 6-7.
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`III.
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`DISCUSSION OF ISSUES UNDER REVIEW
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`A.
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`The ’805 Patent
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`Cypress has asserted independent claim 1 and dependent claims 2 and 4-6 of the ’805
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`patent in this investigation. Claim 1 recites:
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`A memory cell comprising a series of four substantially oblong active
`regions formed within a semiconductor substrate and arranged side—by—
`side with long axes substantially parallel, wherein each of the inner
`active regions of the series comprises a pair of source/drain regions for
`a respective p-channel transistor, and each of the outer active regions
`of the series comprises a pair of source/drain regions for a respective
`n-channel transistor.
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`’805 patent, col. 13,1. 44 — col. 14, l. 4 (claim 1).
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`1.
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`Infringement
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`a. Applicable Law on Infringement
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`Direct infringement of a patent under 35 U.S.C. § 271(a) consists of making, using,
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`offering to sell, or selling a patented invention without consent of the patent owner or importing
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`a patented invention into the United States without consent of the patent owner. Section 337
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`prohibits “the importation into the United States, the sale for importation, or the sale within the
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`United States after importation .
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`.
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`. of articles that infringe a valid and enforceable United States
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`patent. .
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`. .” 19 U.S.C. § 1337(a)(1)(B).
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`A determination of patent infringement encompasses a two—step analysis. Advanced
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`Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc, 261 F.3d 1329, 1336 (Fed. Cir. 2001). First,
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`the scope and meaning of the patent claims asserted are determined, and then the properly
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`construed claims are compared to the allegedly infringing device. Id Each patent claim element
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`or limitation is considered material and essential to an infringement determination. See London v.
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`Carson Pirie Scott & C0., 946 F.2d 1534, 1538 (Fed. Cir. 1991). “Literal infringement of a
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`claim exists when each of the claim limitations reads on, or in other words is found in, the
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`accused device.” Allen Eng. Corp. v. Bartel] Indus, 299 F.3d 1336, 1345 (Fed. Cir. 2002). To
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`prove direct infringement, the plaintiff must establish by a preponderance of the evidence that
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`one or more claims of the patent read on the accused device either literally or under the doctrine
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`of equivalents. Scimed, 261 F.3d at 1336. In a section 337 investigation, the complainant bears
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`the burden of proving infringement of the asserted patent claims by a preponderance of the
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`evidence. Enercon GmbH v. Int’l Trade Comm ’n, 151 F.3d 1376 (Fed. Cir. 1998).
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`b. Whether the Accused Products Infringe the Asserted Claims of the ’805
`Patent
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`The ALJ found that Cypress failed to prove by a preponderance of the evidence that the
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`accused products infringe the asserted claims of the ’805 patent. Specifically, the ALJ stated:
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`The undersigned finds Respondents” arguments to be persuasive.
`Mr. McAlexander’s [Cypress’s expert] testimony is conclusory in
`nature. Furthermore, Mr. McAlexander merely refers to various
`demonstrative exhibits as alleged support for his conclusory
`statements. Demonstrative exhibits, however, have no intrinsic
`evidentiary value and are only as reliable as that evidence upon
`which they rely. Accordingly, the undersigned finds that Cypress
`has failed to demonstrate that the [
`] infringes
`claims 1, 2, and 4 by a preponderance of the evidence.
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`ID at 16. We agree with the ALJ that Cypress failed to demonstrate that the [
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`]
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`infringes the asserted claims of the ’805 patent for the reasons stated in the ID in addition to the
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`reasons below.
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`Cypress challenges the ALJ’s findings in its petition for review and makes two primary
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`arguments. See Cypress Pet. at 9. First, Cypress contends that its expert, Mr. McAlexander
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`analyzed the designs used to build the accused products, and based on simple visual inspection
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`opined that they meet the claim limitations as construed by the ALJ. Id According to Cypress,
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`its expert’s testimony constitutes proper and sufficient evidence. Id Second, Cypress argues
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`that its expert generated demonstrative exhibits to show those shapes to the ALJ, and “because
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`the underlying computer files would be useless to the ALJ, those demonstratives are appropriate
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`evidence.” Id.
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`With respect to the first argument, the ALJ did not find or suggest that “simple visual
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`inspection” cannot constitute sufficient evidence. He specifically found that Mr. McAlexander
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`presented conclusory statements. ID at 16. Because Mr. McAlexander failed to adequately
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`explain how his methodology led to his conclusion, the ALJ found his testimony unpersuasive.
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`Id. The ALJ’s finding and conclusion finds support in the record evidence. Mr. McAlexander
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`testified:
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`l
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`CX-385.lC at Q.348. That is, Mr. McAlexander merely set forth the claim construction and with
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`scant analysis concluded that the claim terms were met. For example regarding the first prong,
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`he simply stated that the limitation was met [
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`Id. Thus, we agree with the ALJ that Mr. McAlexander’s testimony (above) was conclusory.
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`Cypress claims that Mr. McAlexander’s analysis relied upon the mask layouts of the
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`GDS files produced by GSI. The GDS files, however, are not in evidence, and thus nothing in
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`the record substantiates Mr. McAlexander’s testimony. Mr. McAlexander states that he simply
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`looked at the mask layouts in reaching his conclusion and does not cite any evidence of record
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`for support. In light of this, we find that the ALJ did not err in according Mr. McAlexander’s
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`testimony little weight.
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`Cypress makes much of its View that the Federal Circuit has sanctioned the use of visual
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`inspections. See Cypress Pet. at 16. However, as noted above, the ALJ did not categorically
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`reject the use of visual inspections. He found that Mr. McAlexander’s testimony was conclusory
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`in nature and lacked citation to actual record evidence. ID at 16. Moreover, the cases upon
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`which Cypress relies for support are unhelpful. Cypress claims that Mr. McAlexander’s conduct
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`is consistent with Federal Circuit precedent because when comparing shapes and structures of an
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`accused product to the claims of a patent, visual inspection suffices. Cypress Pet. at 16 (citing K-
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`TEC, Inc. v. Vita-Mix corp, 696 F.3d 1364 (Fed. Cir. 2012); Canon Computer Sys., Inc v. Nu-
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`Kote Int’l, Inc, 134 F.3d 1085 (Fed. Cir. 1998)).
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`In K-TEC, the Federal Circuit noted that a visual inspection analysis can be appropriate
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`when “relatively simple technology” is at issue. K-TEC, 696 F.3d at 1374. The technology at
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`issue in K—TEC involved a blending jar, technology readily susceptible to visual inspection. Id.
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`The technology at issue here, on the other hand, involves complex integrated circuits, which as
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`Cypress acknowledges, “involves microscopic patterns inside memory chips not visible to the
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`naked eye.” Ia’.; Cypress Pet. at 1. Similarly, Canon is unhelpful. As Respondents observe,
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`plaintiff’s expert in Canon not only performed a visual inspection of the accused device, he
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`submitted claim charts and an affidavit explaining his findings. Canon, 134 F.3d at 1089. In
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`contrast, Mr. McAlexander, like the defendant’s expert in Canon, provided a “conclusory
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`statement,” which proved insufficient.
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`Id. Thus, rather than support Cypress, Canon provides
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`support for the ALJ’ finding.
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`With respect to the second argument, 1'. e. the ALJ discrediting Cypress’s sole reliance on
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`demonstrative exhibits, we find no error in the ALJ’s finding. Importantly, during the pre-
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`hearing conference, the ALJ provided guidance to the parties on the use of demonstrative
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`evidence and specifically informed them that demonstrative exhibits “have no evidentiary weight
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`in and of themselves. They are only representative — they are only as strong as other evidence
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`that is in the record, testimony, other exhibits.” Hearing Tr. at 77:4-15. Nevertheless, Cypress
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`relied exclusively on demonstrative exhibits and failed to cite to any actual evidence. The only
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`explanation Cypress provides for not heeding the ALJ’s instructions is its assertion that “because
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`the underlying computer files would be useless to the ALJ, those demonstratives are appropriate
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`evidence” and that “case law is clear that in this sort of complex technology case, where the
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`underlying evidence would be inaccessible to the ALJ, demonstratives created by the experts
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`should be considered evidence.” Cypress Pet. at 9 (citing Motorola, Inc. v. InterDigital Tech.
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`Corp, 121 F.3d 1461, 1470 (Fed. Cir. 1997)). Motorola, however, does not support Cypress. In
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`Motorola, the Federal Circuit found that the use of demonstrative evidence to depict prior art was
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`proper where the party did not use the demonstrative as a “substitute for real prior art [i. e. ,
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`evidence]” but rather presented a “rigorous comparison of the claims to the accused products and
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`to the prior art.” Id.
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`In other words, the demonstrative in Motorola was used as an aid and not as
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`a substitute for actual evidence as Cypress attempts to do in this investigation. 4
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`Moreover, the record evidence shows that Cypress could have provided underlying
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`evidentiary support for its demonstrative exhibits. As Respondents note, their expert did exactly
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`that. Compare CX-385.1C at Q348 with RX-486C at Q280-329. Accordingly, the Commission
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`affirms the ALJ’s finding that Cypress failed to demonstrate that the [
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`] infringes
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`the asserted claims of the ’805 patent.
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`With respect to the accused [
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`] products, as the ALJ observed,
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`“Cypress’s argument is based solely on the fact that all [
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`]
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`products infringe because they contain the [
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`].” ID at 17. Given his finding that
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`the [
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`[
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`] did not infringe the asserted claims of the ’805 patent, the ALJ found that
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`] products also did not infringe the asserted patent claims. Id. The
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`Commission affirms the ALJ’s finding.
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`4 Cypress acknowledges that it offered to put the GDS and SEM files into evidence but
`that GSI objected and it did not “pursue the issue.” Cypress Pet. at 22 n.16. Cypress’s
`explanation for not pursuing the issue is that “[t]hose files themselves are not helpful or relevant;
`because McAlexander is an expert they do not need to be in evidence; and it is the demonstrative
`exhibits that Mr. McAlexander created from them that are helpful evidence.” Id. As discussed
`above, the ALJ specifically informed the parties about the proper role of demonstrative evidence.
`Thus, Cypress’s decision not to “pursue the issue” is an inadequate excuse for the files not being
`in evidence. In addition, Cypress’s assertion that the GDS and SEM files are irrelevant but that
`demonstratives derived from them are relevant is illogical. If the files themselves are irrelevant,
`then demonstratives derived from those files would also be irrelevant.
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`PUBLIC VERSION
`
`2. Domestic Industry (Technical Prong)
`
`a. Applicable Law
`
`The technical prong of the domestic industry requirement is satisfied when the
`
`complainant in a patent-based section 337 investigation establishes that it is practicing or
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`exploiting the patents at issue. See 19 U.S.C. §1337 (a)(2); Certain Microsphere Adhesives,
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`Process for Making Same and Prods. Containing Same, Including Self-Stick Repositionable
`
`Notes, Inv. No. 337-TA-366, Comm’n Op. at 8, 1996 WL 1056095 (U.S.I.T.C. Jan. 16, 1996).
`
`“In order to satisfy the technical prong of the domestic industry requirement, it is sufficient to
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`show that the domestic industry practices any claim of that patent, not necessarily an asserted
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`claim of that patent.” Certain Ammonium Octamolybdate Isomers, Inv. No. 337-TA-477,
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`Comm’n op. at 55 (U.S.I.T.C., Jan. 2004).5
`
`
`
`5 Sections 337(a)(2) and (3) set forth the domestic industry requirement:
`
`(2) Subparagraphs (B), (C), (D), and (E) of paragraph (1) apply only if an industry
`in the United States, relating to the articles protected by the patent, copyright,
`trademark, mask work, or design concerned, exists or is in the process of being
`established.
`
`(3) For purposes of paragraph (2), an industry in the United States shall be
`considered to exist if there is in the United States, with respect to the
`articles protected by the patent, copyright, trademark, mask work, or
`design concerned——
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`(A) significant investment in plant and equipment;
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`(B) significant employment of labor or capital; or
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`(C) substantial investment in its exploitation, including engineering,
`research and development, or licensing.
`
`19 U.S.C. §§ 1337(a)(2) and (3). Under Commission precedent, this “domestic industry
`
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`PUBLIC VERSION
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`The test for claim coverage for the purposes of the technical prong of the domestic
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`industry requirement is the same as that for infringement. Certain Doxorubicin and
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`Preparations Containing Same, Inv. No. 337—TA-300, Initial Determination at 109, 1990 WL
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`710463 (U.S.I.T.C., May 21, 1990), afl’d, Views of the Commission at 22 (October 31, 1990);
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`Alloc, Inc. v. Int ’1 Trade Comm ’n, 342 F.3d 1361, 1375 (Fed. Cir. 2003).
`
`b. Whether Cypress Established the Technical Prong of the Domestic Industry
`Requirement for the ’805 Patent
`
`The ALJ found that Cypress failed to prove that any of the five products offered to
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`establish a domestic industry in the ’805 patent practiced the patent. ID at 19. Specifically, the
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`ALJ found that Mr. McAlexander offered conclusory testimony and failed to explain how the
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`demonstrative evidence he relied on “refer[ed] back to actual evidence in the record” and that
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`“no testimony tie[d] Mr. McAlexander’s testimony to the demonstrative exhibits or to any other
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`exhibits in the record.” Id (citing CX-385.1 at Q/A 114-121).
`
`The ALJ noted Cypress’s reliance on demonstratives to prove its case and its argument
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`that “Mr. McAlexander reviewed the evidence and formed his opinion” and that “[h]e did not
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`need to spend dozens of pages reiterating it, or translating what the mask layouts and photos
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`already show into written testimony.” Id. (citing CRB at 65-66 (citing CX-385.1 at Q/A 114-
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`121); CIB at 151-52; CX—297C, CDX-147C, and CDX—150C). The ALJ found Cypress’s
`
`
`requirement” of section 337 consists of an economic prong and a technical prong. Certain
`Stringed Musical Instruments and Components Thereof, Inv. No. 337-TA-5 86, Comm’n Op. at
`12—14, 2009 WL 5134139 (U.S.I.T.C. Dec. 2009) (“Stringed Instruments”). Error! Main
`Document Only.The “economic prong” of the domestic industry requirement is satisfied when it
`is determined that the economic activities set forth in subsections (A), (B), or (C) of subsection
`337(a)(3) have taken place or are taking place. Certain Variable Speed Wind Turbines and
`Components Thereof, Inv. No. 337-TA-376, USITC Pub. No. 3003, Comm’n Op. at 21 (Nov.
`1996).
`
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`PUBLIC VERSION
`
`argument unpersuasive.
`
`Cypress, in its petition for review, asserts that the ALJ “relies upon near-identical
`
`reasoning [to the ALJ’s non-infringement finding] in stating that Cypress does not meet the
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`technical domestic industry requirement for the ”805 patent,” namely that “Cypress’s expert’s
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`testimony is conclusory, and that the demonstrative exhibits are not evidence.” Cypress Pet. at
`
`23. Cypress states that the “[t]he ID is flawed for the same reasons stated above for Cypress’s
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`infringement claims” and that Mr. McAlexander relied on GDS files and scanning electron
`
`microscope (“SEM”) analysis to conclude that its domestic industry products satisfy the
`
`technical prong for domestic industry. As with the GDS files, Cypress acknowledges that it
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`offered to put the SEM files into evidence but that GSI objected. Id. at 22, n.l6. According to
`
`Cypress, because the SEM files “would in any event be useless to the ALJ or on appeal, Cypress
`
`did not pursue the issue,” adding that [t]hose files themselves are not helpful or relevant; because
`
`McAlexander is an expert they do not need to be in evidence; and it is the demonstrative exhibits
`
`that Mr. McAlexander created from them that are helpful evidence.” Id.
`
`For reasons stated above with respect to infringement (in addition to the reasons provided
`
`in the ID), the ALJ’s finding that Cypress failed to establish the technical prong for domestic
`
`industry is not in error. Specifically, we agree with the ALJ that Mr. McAlexander offered
`
`conclusory testimony and failed to explain how the demonstrative evidence he relied on
`
`“refer[ed] back to actual evidence in the record” and that “no testimony tie[d] Mr.
`
`McAlexander’s testimony to the demonstrative exhibits or to any other exhibits in the record.”
`
`ID at 18-19 (citing CX-385.l at Q/A 114-121).
`
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`PUBLIC VERSION
`
`3.
`
`Invalidity
`
`a. Applicable Law on Anticipation
`
`“Claimed subject matter is ‘anticipated’ when it is not new; that is, when it was
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`previously known.” Sanofi—Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008).
`
`“Invalidation on this ground requires that every element and limitation of the claim was
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`previously described in a single prior art reference, either expressly or inherently, so as to place a
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`person of ordinary skill in possession of the inve