By Eric Schweibenz
On January 29, 2010, ALJ Charles E. Bullock issued the public version of Order No. 28 (dated January 8, 2010) in Certain Flash Memory Chips and Products Containing the Same (Inv. No. 337-TA-664).

According to the Order, Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung International, Inc., Samsung Semiconductor, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) moved for leave to file a supplemental submission in support of their claim constructions regarding one of the patents-in-suit, the ‘877 patent.  Complainants Spansion, Inc. and Spansion LLC (collectively, “Spansion”) opposed the motion.  No response was received from the Commission Investigative Staff.

The basis for Samsung’s motion was an Invention Disclosure Form (“IDF”) related to the ‘877 patent which Spansion produced after the parties completed their claim construction briefing and after the Markman hearing.  Samsung argued that the IDF was relevant to construction of the claim term “selected surface area profile” because it established that the inventors “understood the claimed invention consistent with Respondents’ construction of the claim terms.”  Spansion responded that the IDF was duplicative of intrinsic evidence already before the court, and that Samsung therefore had a full and fair opportunity to present any arguments related to the duplicative information found in the IDF in their briefs and during the Markman hearing.  ALJ Bullock agreed with Spansion that the IDF appeared duplicative of the prosecution history and specification of the ‘877 patent, and further noted that the specification is the single best guide to the meaning of a disputed claim term, and that extrinsic evidence, while permitted to be considered by courts, is generally less reliable than the “intrinsic” patent specification and prosecution history, citing Phllips v. AWH, 415 F.3d 1301 (Fed. Cir. 2005).  Accordingly, Samsung’s motion was denied.