PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN DISPLAY CONTROLLERS
`AND PRODUCTS CONTAINING SAME
`
`Inv. No. 337-TA-491
`
`ORDER NO. 38: INITIAL DETERMINATION TERMINATING INVESTIGATION AS
`TO RESPONDENT TRUMPION MICROELECTRONICS, INC., THE ‘074 PATENT,
`AND THE ‘922 PATENT
`.
`
`(November 10,2003)
`
`On November 3, 2003, COMPLAINANT, Genesis Microchip (Delaware) Inc.
`(“Genesis”), pursuant to 19 C.F.R. 9 2 10.21 (a)( l), moved [491-0401 to terminate this investigation
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`with respect to RESPONDENT, Trumpion Microelectronics, Inc. (“Trumpion’’), consequently
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`terminating this investigation with respect to US. Patent No. 6,177,922 (“the ‘922 patent”). Genesis
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`further moved to terminate this investigation with respect to U.S. Patent No. 5,953,074 (“the ‘074
`
`patent”).’ On November 10,2003, separately, RESPONDENTS, Media Reality Technologies, Inc.
`
`(“MRT”) and MStar Semiconductor, Inc. (“MStar”), filed responses in support of the motion but
`
`the ‘361
`patent
`
`the ‘074
`patent
`
`the ‘922
`patent
`
`the ‘867
`patent
`
`Respondent Media Reality Technologies, Inc.
`
`Respondent Trumpion Microelectronics, Inc.
`
`Respondent MStar Semiconductor, Inc.
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`

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`with certain conditions. Trumpion filed a response in support of the motion on November 10,2003.
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`COMMISSION INVESTIGATIVE STAFF (“Staff ’) also filed a response in support of the motion
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`on November 10,2003.
`
`In its motion, Genesis submits that information collected during discovery casts doubt
`
`on whether Trumpion intends to continue to develop and market display controllers. Specifically,
`
`Genesis states that “Trumpion’s reduced sales volumes and decision to divert efforts to other
`
`products has changed the dynamic of the dispute between Genesis and Trumpion.” Motion at 3.
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`With respect to the ‘074 patent, Genesis maintains that it only recently during depositions became
`
`aware of Respondents’ contention that they do not have any knowledge that their customers use their
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`respective “reference firmware.” Motion at 2. Genesis contends that the time and expense required
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`to establish through third party discovery that Respondents’ customers use Respondents’ “reference
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`firmware” in the United States in conjunction with the accused display controllers is “a daunting task
`given the compressed discovery and trial schedule in the ITC.” Id.
`
`Staff observes that the Commission “has historically stated that ‘in the absence of
`
`extraordinary circumstances, termination of the investigation will be readily granted to a complainant
`
`during the prehearing stage of an investigation.’” Staff Response at 3 (quoting Certain Ultrafiltration
`
`Membrane Systems, and Components Thereof, Including Ultrafiltration Membranes, Inv. No. 337-
`
`TA-107, Commission Action and Order at 2 (U.S.I.T.C., March 1 1,1982). Moreover, Staff contends
`
`that it is “not aware of any extraordinary circumstances that warrant denial of the motion for partial
`termination in this case.” Id. Staff concludes that granting the motion would also serve the public
`
`interest “as it would streamline this investigation, conserving both Commission resources and the
`
`resources of the remaining parties.” Staff Response at 4.
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`-2-
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`

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`By contrast, MStar supports termination with the following conditions: (1) Genesis
`
`must reimburse MStar one-third of its costs and attorney fees incurred in this investigation as to the
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`‘074 patent through to the date of this Order; (2) Genesis must reimburse MRT one-half of its costs
`
`and attorney fees incurred in this investigation as to the ‘074 patent through to the date of this Order;
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`(3) if Genesis files another complaint involving the ‘074 patent with the Commission naming MStar
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`or MRT as respondents, that investigation shall be assigned to the undersigned; and (4) if Genesis
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`initiates another complaint involving the ‘074 patent with the Commission or in a federal district
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`court naming either MStar or MRT as respondents, discovery from this investigation shall not be
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`duplicated in the later investigation.
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`Separately, MRT, while it joins in MStar’s response, also contends that Genesis failed
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`to satisfy the certification requirement found in Ground Rule 3.2. Specifically, MRT contends that
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`Genesis did not meet and confer with Respondents prior to filing the instant motion. However, MRT
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`submits that rather than deny the termination motion as procedurally invalid, the undersigned should
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`hold the termination motion in abeyance while MRT’s motion for summary determination of the
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`‘074 patent [491-0431 filed on November 7,2003 is considered.
`Commission Rule 2 10.2 1 (a), 19 C.F.R. 9 21 0.21 (a), states that any party may move
`“for an order to terminate an investigation . . . on the basis of withdrawal of the complaint.” The
`
`rule, moreover, provides that the “administrative law judge may grant the motion in an initial
`determination upon such terms and conditions as he deems proper.” 19 C.F.R. 9 2 10.21 (a) (emphasis
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`added). Based on the undisputed facts, the undersigned finds termination with respect to Trumpion,
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`the ‘922 patent, and the ‘074 patent appropriate given the changed circumstances cited by Genesis.
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`Moreover, the undersigned does not find it necessary to impose any terms or conditions upon the
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`-3 -
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`

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`requested termination. Indeed, Commission precedent prevents the undersigned from imposing the
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`first three conditions sought even if so inclined. See Synchronous DRAM Devices and Modules and
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`Products Containing: Same, Inv. No. 337-TA-437, Commission Order (U.S.I.T.C., January2,2001).*
`
`With respect to the fourth condition, while the undersigned agrees that it would be reasonable not
`
`to duplicate discovery made in this investigation in any future investigation, the undersigned cannot
`
`impose that requirement on a federal district court proceeding. However, before the Commission,
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`to the extent possible, the undersigned recommends that discovery taken in this investigation be
`
`made part of any future investigation initiated by Genesis involving the ‘074 patent and naming
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`either MRT or MStar as respondents. Notwithstanding, the undersigned determines not to make that
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`recommendation a “term” or “condition” for termination.
`
`The undersigned also determines that while Genesis did not comply with Ground
`
`Rule 3.2, it would be improvident to deny the motion on procedural grounds. Nevertheless, the
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`parties are put on notice that in the future the undersigned will deny motions not it compliance with
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`Ground Rule 3.2.3 With respect to the motion for summary determination, MRT filed the motion
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`well after Genesis filed the motion for termination. Given the brevity and timing of the summary
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`determination motion, the undersigned must conclude that it was filed in an attempt to frustrate the
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`instant motion. In any case, Commission precedent allows for termination even during the pendency
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`of a summary determination motion. See Certain Set-Top Boxes and Components Thereof, Inv. No.
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`With respect to awarding fees, the undersigned is not convinced that such an imposition constitutes a
`2
`“term” or “condition” under 19 C.F.R. 3 210.2 l(a). Moreover, MStar did not cite to any Commission precedent
`to support its position. In this forum, monetary remedies are generally available only in the context of sanctions.
`- See 19 C.F.R. 9 210.33(c).
`
`This includes the pernicious practice of leaving voice mails with opposing counsel just prior to filing
`3
`a motion.
`
`-4-
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`

`
`.
`
`/
`
`*’
`
`337-TA-454, Order 44 at 1 (U.S.I.T.C., November 20,2001). Accordingly, the motion for summary
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`determination is held in abeyance pending a final determination of the motion for termination by the
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`Commission. If the Commission decides to terminate this investigation in relevant part, then the
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`motion for summary determination will be denied as moot.
`Pursuant to 19 C.F.R. 8 210.42(h), this Initial Determination shall become the
`
`determination of the Commission unless a party files a petition for review of the Initial
`Determination pursuant to 19 C.F.R. 5 210.43(a), or the Commission, pursuant to 19 C.F.R.
`9 2 10.44, orders, on its own motion, a review of the Initial Determination or certain issues herein.
`.
`Within seven days of the date of this document, each party shall submit to the Office
`
`
`
`I
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`\
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`of the Administrative Law Judge a statement as to whether or not it seeks to have any portion of this
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`document deleted fiom the public version to be issued shortly thereafter. The parties’ submissions
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`may be made by facsimile and/or hard copy by the aforementioned date. Any party seeking to have
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`\
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`any portion of this document deleted fiom the public version thereof must submit to this office a
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`copy of this document with red brackets indicating any portion asserted to contain confidential
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`business information. The parties’ submissions concerning the public version of this document need
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`not be filed with the Commission Secretary.
`
`Administrative Law Judge
`
`-5-
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`

`
`IN THE MATTER OF CERTAIN DISPLAY
`CONTROLLERS AND PRODUCTS CONTAINING SAME
`
`INV. NO. 337-TA-491
`
`CERTIFICATE OF SERVICE
`
`I, Marilyn R. Abbott, hereby certify that the attached INITIAL DETERMINATION was
`served upon, Anne M. Goalwin, Esq., Commission Investigative Attorney, and the following
`parties via first class mail and air mail where necessary on December 4
`,2003.
`
`Maril$n R. AUbott, Seckary
`U. S. International Trade Commission
`500 E Street, S.W., Room 112A
`Washington, D.C. 20436
`
`FOR COMPLAINANT GENESIS MICROCHIP (DELAWARE), INC.:
`
`Ruffin B. Cordell, Esq.
`Evelyn G. Heilbrunn, Esq.
`Richard G. Green, Esq.
`FISH & RICHARDSON P.C.
`1425 K, Street, N W , Suite 1100
`Washington, D.C. 20005
`
`David A. Killam, Esq.
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`
`Hugh M. Fain, 111, Esq.
`SPOTTS FAIN CHAPPELL & ANDERSON, P.C.
`41 1 E. Franklin Street
`Suite 600
`Richmond, VA 23219
`
`FOR RESPONDENT MEDIA REALITY TECHNOLOGIES, INC.:
`
`Arthur Wineburg, Esq.
`PILLSBURY WINTHROP LLP
`1133 Connecticut Avenue, N.W.
`Washington, D.C. 22036
`
`

`
`IN THE MATTER OF CERTAIN DISPLAY
`CONTROLLERS AND PRODUCTS CONTAINING SAME
`
`INV. NO. 337-TA-491
`
`Reginald D. Steer, Esq.
`Chang H. Kim, Esq.
`PILLSBURY WINTHROP LLP
`2550 Hanover Street
`Palo Alto, CA 94304-1 1 15
`
`Daniel C. Minteer, Esq.
`James Y.C. Sze, Esq.
`Victor J. Castellucci, Esq.
`PILLSBURY WINTHROP LLP
`101 West Broadway
`Suite 1800
`San Diego, CA 92 10 1
`
`Sarah A. Solomon, Esq.
`PILLSBURY WINTHROP LLP
`1 1682 El Camino Real
`Suite 200
`San Diego, CA 92 130
`
`Susan T. Brown, Esq.
`Daniel E. Yonan, Esq.
`William DeVinney, Esq
`PILLSBURY WINTHROP LLP
`1600 Tysons Boulevard
`McLean, VA 22 102
`
`FOR RESPONDENT TRUMPION MICROELECTRONICS, INC.:
`
`Louis L. Tao, Esq.
`Renee C. Macri, Esq.
`SONNENSCHEIN NATH & ROSENTHAL
`1301 K Street N.W.
`Suite 600, East Tower
`Washington, D.C. 20005
`
`

`
`IN THE MATTER OF CERTAIN DISPLAY
`CONTROLLERS AND PRODUCTS CONTAINING SAME
`
`INV. NO. 337-TA-491
`
`Natalie J. Spears, Esq.
`Edward H. Rice, Esq.
`Marian N. Saito, Esq.
`Thomas J. Burton, Esq.
`Steven M. Lubezny, Esq.
`SONNENSCHEIN NATH & ROSENTHAL
`8000 Sears Tower
`233 South Wacker Drive
`Chicago, IL 60606-6404
`
`Janice Lin, Esq.
`Jennifer Lin, Esq.
`TSAR & TSAI LAW FIRM
`Taipei 106, Taiwan, R.O.C.
`
`FOR RESPONDENT MSTAR SEMICONDUCTOR, INC.:
`
`Lawrence J. Gotts, Esq.
`Michael D. Bednarek, Esq.
`Elizabeth Miller Roesel, Esq.
`SHAW PITTMAN LLP
`1650 Tysons Blvd.
`McLean, VA 22 102
`
`Peter Wang, Esq.
`GENNIA & CONSULTANTS
`6F, No. 164, Sec. 2, Fushing S. Road
`Taipei, Taiwan 106 R.O.C.
`
`PUBLIC MAILING LIST
`
`Sherry Robinson
`LEXIS - NEXIS
`8891 Gander Creek Drive
`Miamisburg, OH 45342
`
`Ronnita Green
`West Group
`Suite 230
`901 Fifteenth Street, N.W.
`Washington, D.C. 20005