uPI Semiconductor Corp. v. ITC

uPI Semiconductor Corp. v. ITC

Opinion

 [*1374]  [***1320]   Newman, Circuit Judge.

Before the court are the appeal [**2]  of respondent-intervenor 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, 2012 ITC LEXIS 2408 (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.

Background

uPI and Richtek are technology companies in the business of designing and selling DC-DC controllers. DC-DC controllers convert direct current from one voltage to another, and are embodied in chips for use in "down-stream" electronic devices such as computer mother-boards. Founded in 1998, Richtek Technology Corp. has its principal place of business in Taiwan. Richtek USA has its principal place of business in California. uPI was founded in 2005 by former Richtek employees and has its principal place [**3]  of business in Taiwan. uPI chips are imported into the United States either directly or as incorporated in various downstream devices.

Richtek in 2010 filed a complaint with the International Trade Commission, alleging that uPI misappropriated Richtek's trade secrets and infringed Richtek's United States patents, and that uPI's importation, sale for importation, or sale after importation of DC-DC controllers and  [*1375]  products containing these controllers violated 19 U.S.C. §1337 (Section 337) of the Tariff Act. Three Richtek patents are at issue in this appeal: U.S. Patent No. 7,315,190 ("the '190 patent"), No. 6,414,470 ("the '470 patent"), and No. 7,132,717 ("the '717 patent").

Shortly before the evidentiary hearing scheduled by the Commission's Administrative Law Judge ("ALJ"), uPI moved to terminate the investigation, pursuant to 19 C.F.R. §210.21, by unilaterally offering to enter into a consent order whereby uPI would cease importation of all products produced using or containing Richtek's trade secrets or infringing Richtek's patents. Over Richtek's objection, the ALJ agreed to enter the consent order substantially as drafted and proposed by uPI. The Commission declined to review the ALJ's grant of uPI's motion, and, on August 13, 2010, the Commission terminated the investigation and entered [**4]  the Consent Order.

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