ITC May Enforce A Consent Order Against A Party To An Investigation When The Party Aids A Third Party’s Importation Of Products In Violation Of The Consent Order

In uPI Semiconductor Corp. v. International Trade Commission, Nos. 13-1157, -1159 (Fed. Cir. Sept. 25, 2014), the Federal Circuit affirmed the ITC's determination that uPI Semiconductor Corp. ("uPI") violated a Consent Order regarding formerly accused products, affirmed the ITC's modified penalty for the violation, reversed the ITC's determination of no violation regarding uPI's post-Consent Order products, and remanded for further proceedings.

uPI and Richtek Technology Corp. and Richtek USA, Inc. (collectively "Richtek") design and sell DC-DC controllers, which convert direct current from one voltage to another. uPI was founded by former Richtek employees. uPI's chips are imported into the United States either directly or as incorporated into downstream devices.

Richtek filed a complaint with the ITC, alleging that uPI misappropriated Richtek's trade secrets and accusing uPI of importing products infringing Richtek's patents, including U.S. Patent Nos. 7,315,190 ("the '190 patent"); 6,414,470 ("the 470 patent"); and 7,132,717 ("the '717 patent"). After the evidentiary hearing, uPI moved to terminate the investigation by offering to enter into a Consent Order that, among other things, prohibited uPI from importing, selling, or offering for sale, or knowingly aiding, abetting, encouraging, participating in, or inducing the importation, sale, offers for sale, or use of products infringing certain claims of the '190, '470, and '717 patents or products using Richtek's asserted trade secrets. The ALJ entered the Consent Order over Richtek's objection.

Approximately one year after entry of the Consent Order, Richtek filed an Enforcement Complaint alleging that uPI violated the Consent Order. The ALJ entered an Enforcement Initial Determination ("EID") that considered both the products accused in the prior investigation ("the formerly accused products") and products allegedly developed and produced after entry of the Consent Order ("the post-Consent Order products"). The ALJ found that the formerly accused products infringed the '190, '470, and '717 patents, and also incorporated Richtek's trade secrets, and that the post-Consent Order products infringed the '470 and '717 patents but were independently developed and not produced using Richtek's trade secrets. The EID also assessed a civil penalty, finding that a violation of the Consent Order had occurred for seventy-five days. The full Commission reviewed the EID and sustained the ALJ's findings...