PUBLIC VERSION

UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C.

In the Matter of CERTAIN SEMICONDUCTOR CHIPS AND PRODUCTS CONTAINING SAME Inv. No. 337-TA-753

RESPONSE OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS TO THE JOINT MOTION TO TERMINATE THE INVESTIGATION AS TO RESPONDENTS MEDIATEK INC., AUDIO PARTNERSHIP PLC AND OPPO DIGITAL INC. ON THE BASIS OF A SETTLEMENT AND PATENT LICENSE AGREEMENT (MTN. DKT. NO. 753-107)

OFFICE OF UNFAIR IMPORT INVESTIGATIONS Lynn I. Levine, Director David O. Lloyd, Supervisory Attorney Daniel L. Girdwood, Investigative Attorney U.S. International Trade Commission 500 E Street, S.W. Suite 401 Washington, D.C. 20436 202.205.3409 (ph) 202.205.2158 (fax)

Public Version: Confidential Version:

April 9, 2012 March 29, 2012

1 The Office of Unfair Import Investigations (OUII) respectfully submits this response to the March 16, 2012 joint motion of Complainant Rambus Inc. (Rambus), Respondent MediaTek Inc. (MediaTek), and MediaTek customers Audio Partnership PLC (Audio Partnership) and Oppo Digital Inc. (Oppo), for partial termination of the investigation on the basis of a settlement and patent license agreement between Rambus and MediaTek. For the reasons explained below OUII supports the motion.1 I. BACKGROUND On December 1, 2010, Rambus filed a Complaint with the Commission alleging a violation of Section 337 by MediaTek, MediaTek customers Audio Partnership and Oppo, and other proposed respondents based upon the importation into the United States, the sale for importation, and the sale within the United States after importation of certain semiconductor chips and products containing same that infringe claims of U.S. Patent Nos. 6,470,405 (the 405 patent); 6,591,353 (the 353 patent); and 7,287,109 (the 109 patent) (collectively, the Barth I Patents). See generally Complaint Under Section 337 of the Tariff Act of 1930, As Amended, EDIS Doc. ID 439133 (Dec. 1, 2012) (Complaint).2 The Commission instituted this investigation as to all of the asserted

OUII notes that the motion appears to have been filed with and served on the presiding Administrative Law Judge two weeks after issuance of the Initial Determination on Violation of Section 337 on March 2, 2012. Because the investigation is now pending before the Commission, OUII treats the motion as if filed directly with the Commission. The Complaint also includes allegations of infringement of U.S. Patent Nos. 7,715,494 (the 494 patent); 7,602,858 (the 858 patent); and 7,602,857 (the 857 patent) (collectively, the Dally patents). However, none of the infringement allegations on the Dally patents was directed at MediaTek or its customer respondents. See Teleconference Tr., EDIS Doc. ID 453574 at 64:15-72:11 (June 30, 2011) (Rambus admitting that MediaTek was not accused of infringing the Dally patents in the Complaint).
2

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2 patents on January 4, 2011. See Notice of Investigation, 76 Fed. Reg. 384 (January 4, 2011). An evidentiary hearing was held on October 12-14 and 17-20, 2011 to adjudicate whether the Respondents have violated Section 337 as to the asserted patents. On March 2, 2012, the presiding Judge issued an Initial Determination in which he found no violation of Section 337 as to any of the accused products. See Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond, EDIS Doc. IDs. 725571 & 725577 (Mar. 2, 2012) (ID). The parties currently await the Commissions decision as to whether to grant review of that ID. On March 16, 2012, Complainant Rambus and Respondents MediaTek, Audio Partnership, and Oppo filed the instant motion in which they seek termination as to these three respondents in view of the Settlement and Patent License Agreement (the Agreement) between Rambus and MediaTek. Motion at 1. If the motion is granted, the investigation will proceed with non-settling supplier Respondents LSI Corp., STMicroelectronics Inc., and STMicroelectronics N.V., and their customer Respondents. II. DISCUSSION A. Compliance with Rule Governing Termination by Settlement

Commission Rule 210.21(a)(2) states in pertinent part that [a]ny party may move at any time for an order to terminate an investigation in whole or in part as to any or all respondents on the basis of a settlement, a licensing or other agreement. 19 C.F.R. 210.21(a)(2). Commission Rule 210.21(b) further specifies that in order for an investigation to be terminated on the basis of a settlement agreement, the motion for termination must include: (1) copies of the settlement agreement, including both a public

PUBLIC VERSION

3 and a confidential version, if necessary; (2) any supplemental agreements; and (3) a statement that there are no other agreements, written or oral, express or implied, between the parties concerning the subject matter of the investigation. 19 C.F.R. 210.21(b). The instant motion to terminate complies with the forgoing requirements. The motion states that [t]here are no other agreements, written or oral, express or implied, between Rambus and any of MediaTek, Audio Partnership, and Oppo concerning the subject matter of this Investigation. Motion at 1. Further, public, confidential, and highly confidential copies of the Agreement, which is confidential to MediaTek and Rambus, are attached to the Motion.3 Memo at 6; Exhibits A-C to Motion. B. Substance of the Agreements

Rambus and MediaTek have negotiated an Agreement that resolves the entire dispute between them relating to this investigation. More specifically, the Agreement memorializes the parties agreement to compromise and settle the disputes arising out of this investigation and related litigation in the U. S. District Court for the Northern District of California. (Agreement, 2.1 (Release by Rambus); id. at 2.5 (Dismissals and Other Provisions Terminating the Disputes); id. at 3.1 (License to MediaTek); id. at 3.2 (Rambus Non-Assertion)). [
3

On March 28, 2012, OUII contacted MediaTek and Rambus regarding the overredaction of information in the confidential and public versions of the Agreements that accompany the motion. In OUIIs view, the complete redaction of certain key provisions, e.g., Sections 2.1, 2.2, 3.1-3.5(d) and 7.4 of the Agreement, from all but the highly confidential version is not warranted. However, both MediaTek and Rambus agreed to OUII disclosing certain aspects of the Agreements to the non-moving Respondents by way of OUIIs motion response. This disclosure appears in Section II(B) below, which cites to and describes at a high level various redacted portions of the Agreements.

PUBLIC VERSION

4 [ ] In addition, Rambus has stipulated to dismissal of its claims of infringement against the products of Audio Partnership and Oppo that are at issue in this investigation. (Agreement, 2.5(a) ([S]uch stipulations for dismissal will dismiss assertions against Audio Partnership Plc and Oppo Digital, Inc.)). [

] The Agreement specifies a five (5) year term. (Agreement, 7.1). Finally, MediaTek agrees to provide the consideration specified in Section 5 of the Agreement, the exact terms of which are redacted in the public version and the confidential version served on the non-moving Respondents. (Agreement, 5). C. Public Interest Considerations

The Administrative Procedure Act states that agencies should consider termination of disputes by the involved parties where the public interest permit[s]. 5 U.S.C. 554(c)(1). OUII has reviewed the confidential, the highly confidential, and the proposed public versions of the Agreements. In OUIIs view, the available information does not indicate that the Agreement between Rambus and MediaTek will harm the public health and welfare, competitive conditions in the U.S. economy, the production of like or directly competitive articles in the U.S., or U.S. consumers. Moreover, the public interest generally favors settlement in order to avoid needless litigation and to conserve public resources. See, e.g., Certain Semiconductor Chips with Minimized Chip Package Size & Products Containing Same, Inv. No. 337-TA-630, Order

PUBLIC VERSION

5 No. 25, at 4 (Sept. 4, 2008) (the termination of a respondent, such as that proposed by the motion, is generally in the public interest); Certain Laser Imageable Lithographic Printing Plates, Inv. No. 337-TA-636, Order No. 7, at 4 (May 16, 2008); Certain Compact Disc and DVD Holders, Inv. No. 337-TA-482, Order No. 11, at 3 (Mar. 7, 2003); Certain Gel-Filled Wrist Rests and Products Containing Same, Inv. No. 337-TA456, Order No. 16, at 5 (May 21, 2002). OUII therefore submits that terminating this investigation as to MediaTek and its customers Audio Partnership and Oppo based on the aforementioned Agreements would not be contrary to the public interest. III. CONCLUSION For the reasons stated above, OUII supports the joint motion to terminate the investigation as to MediaTek, Audio Partnership, and Oppo.

Respectfully Submitted, /s/ Daniel L. Girdwood Lynn I. Levine, Director David O. Lloyd, Supervisory Attorney Daniel L. Girdwood, Investigative Attorney OFFICE OF UNFAIR IMPORT INVESTIGATIONS U.S. International Trade Commission 500 E Street S.W., Suite 401 Washington, D.C. 20436 202.205.3409 (ph) 202.205.2158 (fax)

Confidential Version: Public Version:

March 29, 2012 April 9, 2012

PUBLIC VERSION

Certain Semiconductor Chips And Products Containing Same CERTIFICATE OF SERVICE

Inv. No. 337-TA-753

The undersigned certifies that on April 9, 2012, he caused the foregoing (PUBLIC) RESPONSE OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS TO THE JOINT MOTION TO TERMINATE THE INVESTIGATION AS TO RESPONDENTS MEDIATEK INC., AUDIO PARTNERSHIP PLC AND OPPO DIGITAL INC. ON THE BASIS OF A SETTLEMENT AND PATENT LICENSE AGREEMENT to be filed with the Commission, served by hand (2 copies) on Judge Theodore R. Essex (including a courtesy .pdf copy to tamara.foley@usitc.gov), served by hand (1 copy) on the Office of the General Counsel (including a courtesy .pdf copy to sidney.rosenweig@usitc.gov), and served upon the private parties (1 copy each) in the manner indicated below: Complainant Rambus Inc. Christine E. Lehman c/o Finnegan Henderson 901 New York Ave., N.W. Washington, D.C. 20001-4413 202.408.4000 (ph) 202.408.4400 (fax) ITC753-Service@finnegan.com Respondents MediaTek Inc., Cisco Systems Inc., Motorola Mobility Inc., Oppo Digital Inc., and Audio Partnership PLC Thomas Pease c/o Quinn Emanuel 51 Madison Ave., 22nd Floor New York, N.Y. 10010 212.849.7000 212.849.7100 Via Email Via Email

Quinn-ITC-753@quinnemanuel.com 337-753Kenyon@Kenyon.com (secondary counsel for MediaTek, Oppo Digital, and Audio Partnership) S&Jmotorola753@steptoe.com (secondary counsel for Motorola) ciscoITCclientTeam@winston.com (secondary counsel for Cisco)

Respondents LSI Corp. and Seagate Technology Jonathan D. Link c/o Kilpatrick Townsend & Stockton LLP Suite 900 607 14th St., N.W. Washington, D.C. 20005 202.508.5800 (ph) 202.508.5858 (fax) lsirambusitc@kilpatricktownsend.com FM-LSI@fostermurphy.com Respondents ASUSTek Computer Inc., Asus Computer Intl Inc., and HewlettPackard Co., Andrew R. Kopsidas c/o Fish Richardson 1425 K Street, N.W. - 11th Floor Washington, D.C. 20005 202.783.5070 (ph) 202.283.7331 (fax) 337-753Fish@fr.com Respondents STMicroelectronics N.V. and STMicroelectronics Inc. Eric Rusnak c/o K&L Gates 1601 K Street, N.W. Washington, D.C. 20006 202.778.9000 (ph) 202.778.9100 (fax) STMicro_ITC753@klgates.com Via Email Via Email Via Email

Respondent Hitachi Global Storage Tech. Alexander J. Hadjis c/o Morrison & Foerster 2000 Pennsylvania Ave., N.W. Suite 600 Washington, D.C. 20006 202.887.1500 (ph) 202.887.0763 (fax) mofo753-service@mofo.com Respondent Garmin Intl Louis S. Mastriani c/o Adduci, Mastriani & Schaumberg LLP 1133 Connecticut Avenue, 12th Floor Washington, D.C. 20036 202.467.6300 (ph) 202.466.2006 (fax) GAR-3@adduci.com /s/ Daniel L Girdwood Office Of Unfair Import Investigations U.S. International Trade Commission 500 E Street, S.W., Suite 401 Washington, D.C. 20436 202.205.3409 202.205.2158 (Facsimile) Via Email Via Email