By Eric Schweibenz
On June 7, 2010, ALJ E. James Gildea issued the public version of Order No. 26 (dated May 14, 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 claim 3 of U.S. Patent No. 6,014,309 (the ‘309 patent) is invalid as anticipated and obvious over the prior art.

According to the Order, Samsung argued that claim 3 of the ‘309 patent is anticipated by a Japanese patent application (the “Nakano reference”).  Samsung further argued that claim 3 is rendered obvious in view of Nakano, U.S. Patent No. 6,160,472 (the “Arashi reference”), and a paper published in Europe in 1996.  The Commission Investigative Staff (“OUII”) supported Samsung’s motion, and submitted a response further asserting that claim 3 is also anticipated by the Arashi reference.  Complainants Murata Manufacturing Co., Ltd. and Murata Electronics North America, Inc.’s (collectively, “Murata”) filed a motion requesting leave to respond to this new argument raised in OUII’s response to Samsung’s motion, which the ALJ granted in the Order.  Samsung opposed Murata’s motion for leave on the grounds that Murata failed to comply with Ground Rule 2.2.  OUII did not respond to Murata’s motion for leave.

As an initial matter, ALJ Gildea found that Samsung’s objection that Murata failed to comply with Ground Rule 2.2 since Murata’s motion for leave was submitted more than ten days after OUII’s response was misplaced.  Under the Commission’s rules, any nonmoving party may file opposing affidavits within ten days after service of a motion for summary determination.  If an opposing party does not respond to such a motion, then summary determination may be rendered against that party, if appropriate.  Furthermore, a nonmoving party who does not respond to a motion may be deemed to have consented to the relief requested in the motion.  The ALJ noted that OUII’s position with respect to the relief requested by Samsung is not one of opposition, but instead a separate request for summary determination that claim 3 is anticipated by the Arashi patent (even though OUII relies on documents accompanying Samsung’s motion).  The ALJ therefore rejected Samsung’s objection to Murata’s motion for leave, finding that Murata’s response to OUII’s “response” is, in effect, not a motion but an opposition to OUII’s summary determination motion.

With respect to Samsung’s argument that the Nakano reference anticipates claim 3 of the ‘309 patent, the ALJ found that there are several material facts asserted by Samsung that are denied by Murata, particularly facts relevant to the issue of whether the Nakano reference includes certain elements of claim 3 regarding thickness and volume ratios of certain components.

Regarding OUII’s argument that claim 3 of the ‘309 patent is anticipated by the Arashi reference, ALJ Gildea found that a factual dispute existed with respect to various interpretations of both patents, particularly OUII’s arguments about whether and to what extent the Arashi reference teaches the volume ratio disclosed in claim 3.