uPI Semiconductor Corp. v. International Trade Commission
767 F.3d 1372
| Fed. Cir. | 2014Background
- Richtek and Richtek USA alleged uPI misappropriated trade secrets and infringed patents in ITC 337-TA-698.
- A consent order was entered August 13, 2010, prohibiting uPI from importing or selling certain DC-DC controllers or products.
- The enforcement proceeding split accused products into formerly accused (pre-consent) and post-consent (developed after the order).
- ALJ found formerly accused products used Richtek trade secrets and post-consent products did not; post-consent products were independently developed.
- Commission affirmed most findings, including know-ingly aiding/abetting violations for formerly accused products and reduced the penalty.
- The court remanded for further proceedings on post-Consent Order violations and reduced the penalty related to the ’470 patent.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether uPI violated the Consent Order by knowingly aiding/abetting third-party importations | Richtek argues linkage between upstream post-consent sales and downstream imports shows aiding/abetting. | uPI contends Kyocera bars penalties for non-respondents and that linkage proof is insufficient. | Upheld violation; affirming aiding/abetting liability and related penalties. |
| Whether post-Consent Order products were produced using Richtek trade secrets | Richtek contends post-consent products used Richtek trade secrets via non-public elements. | uPI argues independent development with clean room does not use trade secrets. | Reversed-in-part; post-Consent Order products shown to involve trade secrets; remand for further proceedings. |
| Whether downstream products containing formerly accused products infringe the ’190 patent | Richtek argues downstream devices infringe the ’190 patent via incorporation of former- ly accused controllers. | uPI contends no direct infringement by upstream products; only aiding/abetting concerns apply. | Affirmed infringement finding via aiding/abetting downstream products. |
| whether the penalty for infringement under the ’470 patent should be reduced | Richtek contends eight days from the ALJ’s ’470 finding remained valid. | uPI argues the reexamination invalidated the ’470 finding but penalties should reflect that. | Reduced eight days; total penalty becomes 54 days. |
Key Cases Cited
- Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340 (Fed. Cir. 2008) (consent orders cannot bar non-respondents absent general exclusion order)
- Fuji Photo Film Co. v. Int'l Trade Comm'n, 474 F.3d 1281 (Fed. Cir. 2007) (review of Commission legal determinations de novo;)
- United States v. ITT Cont’l Baking Co., 420 U.S. 223 (U.S. 1975) (consent decrees construed as contracts; contract interpretation as law)
- Spansion, Inc. v. Int'l Trade Comm'n, 629 F.3d 1331 (Fed. Cir. 2010) (review of Commission findings for substantial evidence)
- Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011) (contract-based interpretation; de novo review of law)
- Consolidated Edison Co. of New York v. NLRB, 305 U.S. 197 (U.S. 1938) (substantial evidence standard; evidentiary sufficiency in agency findings)
- Richardson v. Suzuki Motor Co., 868 F.2d 1226 (Fed. Cir. 1989) (independent development does not absolve trade-secret liability)