By Eric Schweibenz
On June 7, 2010, ALJ E. James Gildea issued the public version of Order No. 27 (dated May 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 substantive responses to Samsung’s Interrogatory No. 120.

In its motion, Samsung asserted that Murata refused to provide information regarding its prior art products that would allegedly invalidate claim 3 of the patent-in-suit.  In particular, Samsung sought the “identity of capacitors designed and manufactured by Murata prior to 1998 that have 150 or more electrodes.”  Samsung asserted that such information was relevant to the issues of obviousness and inequitable conduct.  In support of its motion, Samsung argued that not only had Murata mass produced such products but that two Murata products, identified by Samsung as having certain characteristic claimed in claim 3 of the patent-in-suit, demonstrated that “the increase to 200 or more electrodes was an obvious extension of the technology.”  Samsung also argued that providing such information was not overly broad or unduly burdensome in view of its other interrogatories.

In its opposition, Murata asserted that it had already responded in good faith to multiple rounds of discovery including prior interrogatories from Samsung that requested similar information.  Murata also asserted that Interrogatory No. 120 was overly broad and irrelevant.  Further, Murata argued that there was likely no benefit to be had in reviewing its documents for a third time because Murata was unlikely to locate responsive information.

In denying Samsung’s motion, ALJ Gildea determined that Murata had met its burden to demonstrate that the information Samsung requested was either duplicative or was beyond the scope of discovery.  In this regard, ALJ Gildea noted that in response to other similar interrogatories from Samsung, Murata had “identified four pre-1998 products having 200 or more internal electrodes and zero pre-1998 products having 180-200 internal electrodes.”   Additionally, ALJ Gildea found that Samsung “failed to tailor Interrogatory No. 120 to include only products that meet any of those other limitations” of claim 3 of the patent-in-suit, and failed to explain how a capacitor having 150 internal electrodes might otherwise be relevant to the determination of obviousness or inequitable conduct.  Lastly, ALJ Gildea found that “the evidence Samsung presents to show that additional information exists that is responsive to Interrogatory No. 120 is insufficient to outweigh the burden to Murata of reviewing the pre-1998 documents for a third time.”