By Eric Schweibenz
On April 30, 2010, ALJ E. James Gildea issued the public version of Order No. 18 (dated April 20, 2010) in Certain Ceramic Capacitors and Products Containing Same (Inv. No. 337-TA-692).  In the Order, ALJ Gildea denied Respondents Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics America, Inc.’s (collectively, “Samsung”) motion to compel Complainants Murata Manufacturing Co. Ltd. and Murata Electronics North America, Inc. (collectively, “Murata”) to provide Takashi Hiramatsu, an inventor of U.S. Patent No. 6,243,254 (the ‘254 patent), for additional deposition testimony.

In support of the motion, Samsung argued that although Mr. Hiramatsu was previously deposed in Japan, Samsung could not complete the deposition because of Mr. Hiramatsu’s alleged evasiveness and lack of preparedness to testify regarding his invention.  Specifically, Samsung argued that Mr. Hiramatsu did not review any documents in preparation for the deposition and used his lack of familiarity with the documents related to the ‘254 patent as an excuse to introduce delay and avoid providing substantive testimony.  Consequently, Samsung asked that Mr. Hiramatsu be produced for additional questioning.

Murata opposed the motion, arguing that Mr. Hiramatsu recalls little regarding the events surrounding the invention of the ‘254 patent, which occurred over 12 years ago, and that inventor testimony is considered extrinsic evidence and given less weight than the claims, specification, and prosecution history.  Murata also noted that Mr. Hiramatsu was deposed in his individual capacity, not as a corporate designee, and thus had no obligation to prepare for the deposition.  Additionally, according to Murata, Samsung provided certain documents only during the deposition itself, Mr. Hiramatsu therefore had no opportunity to familiarize himself with those documents.  The Commission Investigative Staff (“OUII”) also opposed the motion, noting that it was unclear to OUII whether continuing the deposition would result in additional substantive testimony.

In the Order, ALJ Gildea determined that there was no evidence in the record that counsel for Murata prevented Mr. Hiramatsu from answering the questions asked, nor was there any evidence that Mr. Hiramatsu intentionally delayed the deposition, evaded questions from counsel for Samsung, or “repeatedly avoided providing substantive answers to questions by acting as if he could not understand the words used in the examining attorney's questions.”  ALJ Gildea thus denied the motion to compel, determining that it was unclear whether continuing to depose Mr. Hiramatsu would provide any additional information sought by Samsung, or even that a deposition was the best method to obtain such information.