By Eric Schweibenz
On June 2, 2010, ALJ E. James Gildea issued the public version of Order No. 25 (dated May 13, 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 for summary determination that claims of U.S. Patent No. 6,266,229 (the ‘229 patent) asserted by Complainants Murata Manufacturing Co. Ltd. and Murata Electronics North America, Inc. (collectively, "Murata") are invalid as anticipated and obvious.

In their motion, filed on March 19, Samsung argued that the asserted claims of the ‘229 patent are directed to a multilayer capacitor design, which includes an allegedly novel lead structure featuring a length to width ratio ("L/W ratio") of about 3 or less.  Relying upon representations of the prior art within the ‘229 patent, as well as in other references, including U.S. Patent No. 5,880,925 (the “DuPre patent”), Samsung alleged that figures within the ‘229 patent and other references depicted a lead structure with an L/W ratio less than 3.  Samsung also relied upon a pending reexamination of the ‘229 patent, wherein the USPTO recently issued an Office Action rejecting all asserted claims as invalid over the prior art.

In their opposition, Murata argued that no evidence or teaching in the prior art taught the criticality of the L/W ratio claimed in the ‘229 patent.  Specifically, Murata asserted that a person of ordinary skill in the art would view the figures depicting the prior art in the ‘229 patent, or Figure 6 in the DuPre patent, as “conceptual layouts” that “do not teach any relationship between L/W in prior art capacitors,” or that such figures would be recognized as “not drawn to scale and thus do not depict any specific L/W ratio, particularly not a ratio of 3 or less.”

The Commission Investigative Staff in part supported Samsung’s motion, and argued that figures from the DuPre patent showed lead structures roughly square in shape, and which therefore have an L/W ratio of approximately 1.

ALJ Gildea determined that “the parties dispute the L/W ratios, if any, that are disclosed in the prior art, as well as whether any of said L/W ratios anticipate those claimed in the ‘229 patent.”   ALJ Gildea further determined that an Office Action that is issued prior to the completion of the reexamination process does not constitute a final determination regarding patent validity, and in view of the above, “Samsung has failed to meet its burden of showing by clear and convincing evidence that each and every element of the asserted claims of the ‘229 patent are disclosed in a single piece of prior art.”

ALJ Gildea further determined that Samsung’s allegations of obviousness depended on interpretations of figures from the DuPre patent that Murata contested would not be interpreted as drawn to scale, and that, “genuine issues of fact remain with respect to the underlying considerations for obviousness, particularly those relating to the scope and content of the prior art and to secondary considerations.”  Accordingly, ALJ Gildea denied Samsung’s motion in full.