09
Jun
By Eric Schweibenz
On June 7, 2010, ALJ E. James Gildea issued the public version of Order No. 28 (dated May 21, 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 all of the asserted claims of Complainants Murata Manufacturing Co., Ltd. and Murata Electronics North America, Inc.’s (collectively, “Murata”) U.S. Patent No. 6,377,439 (the ‘439 patent) are invalid as anticipated and obvious over the prior art.

According to the Order, Samsung argued that all of the asserted claims of the ‘439 patent are invalid as anticipated by an article by KEMET Electronics Corp. (the “KEMET reference”).  Samsung further argued that certain asserted claims are anticipated by Japanese Patent App. No. H9-129493 to Masuda (the “Masuda application”), and that an additional asserted claim is invalid as obvious over the Masuda application in view of admitted prior art therein.  Finally, Samsung argued that all of the asserted claims are invalid as obvious over Japanese Patent App. Pub. No. H10-22161 to Noji (the “Noji application”) in view of Japanese Unexamined Patent App. Pub. No. S61-183913 to Kukutsu (the “Kukutsu application”).

The Order further notes that the Commission Investigative Staff (“OUII”) argued that certain asserted claims of the ‘439 patent are invalid as anticipated by the Masuda application and that an additional claim is obvious over Masuda in view of the KEMET reference or in view of the Noji application.

With respect to the KEMET reference, Samsung argued that the reference qualifies as a prior art “printed publication” under 35 U.S.C. § 102(b) because it was published more than one year prior to the ‘439 patent’s filing date.  Murata responded that the KEMET reference is not a proper 102(b) reference because it was not publically available more than a year prior to the ‘439 patent’s filing date.  ALJ Gildea found that there was evidence on both sides of the public availability question, and that therefore there existed genuine issues of material fact that precluded summary determination.  Accordingly, ALJ Gildea denied the portion of Samsung’s motion dealing with anticipation of the asserted claims of the ‘439 patent by the KEMET reference.

As to the Masuda application, Samsung and OUII argued that that reference anticipates certain asserted claims of the ‘439 patent and renders obvious an additional asserted claim in view of the admitted prior art therein, the KEMET reference, and the Noji application.  However, ALJ Gildea found that Samsung and OUII had failed to prove by clear and convincing evidence that the Masuda application disclosed “a plurality of inner electrodes disposed in the sintered ceramic block such that said plurality of inner electrodes overlap, in a thickness direction, with one another via ceramic layers,” as required by the asserted claims.  Specifically, there was a dispute between the parties as to the meaning of the claim phrase “such that said plurality of inner electrodes overlap, in the thickness direction,” which was critical to a determination of whether the Masuda application disclosed the limitation in question.  Accordingly, ALJ Gildea found that summary determination was inappropriate on this issue and that “a hearing on the merits is necessary before arriving at a correct claim interpretation.”

As to Samsung’s argument that the asserted claims of the ‘439 patent are obvious over the Noji application in view of the Kukutsu application, ALJ Gildea found that Samsung had failed to prove by clear and convincing evidence that the Noji application discloses “a plurality of inner electrodes disposed in the sintered ceramic block such that said plurality of inner electrodes overlap, in a thickness direction, with one another via ceramic layers.”  Moreover, Samsung had not alleged that this limitation was present in the Kukutsu application.  Accordingly, ALJ Gildea denied the part of Samsung’s motion dealing with obviousness over the Noji application in view of the Kukutsu application.  Samsung’s motion for summary determination of invalidity was thus denied in full.
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