ALJ Charneski Rules On Motion For Summary Determination Regarding Non-Infringement In Certain Flash Memory (337-TA-685)
On December 9, 2010, ALJ Carl C. Charneski issued the public version of Order No. 42 (dated November 18, 2010) in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) denying Respondents Spansion, Inc. and Spansion LLC’s (collectively, “Spansion”) motion for summary determination that claim 12 of U.S. Patent No. 5,740,065 (the ‘065 patent) is not infringed either literally or under the doctrine of equivalents.
In support of its motion, Spansion relied upon the deposition testimony of Complainant Samsung Electronics, Co., Ltd.’s (“Samsung”) expert witness for the proposition that there were no insubstantial differences between features of the accused products and a certain limitation of claim 12. In opposition to the motion, Samsung asserted that (1) “Spansion fails to explain how these purported differences relate to and affect the ‘essential functionality’ of claim 12”, (2) its expert’s comparison was made under a theoretical assumption, (3) the deposition testimony relied upon by Spansion was quoted out of context and “provid[ed] a general answer to an exceptionally general question, and not an answer directed to the ‘essential functionality’ of claim 12”, and (4) Samsung’s expert “provided a function, way, result analysis in support of his opinion that claim 12 of the ‘065 patent is infringed.”
In light of the above, ALJ Charneski found that “Spansion has failed to show that it is entitled to judgment as a matter of law” and denied its motion finding that genuine issues of material fact remained.
