ALJ Essex Denies Motion For Summary Determination Of Invalidity In Certain Consumer Electronics And Display Devices (337-TA-836)
On October 31, 2012, ALJ Theodore R. Essex issued Order No. 22 denying Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. and Samsung Telecommunications America, LLC’s (collectively, “Samsung”) motion for a summary determination of invalidity of U.S. Patent No. 5,717,881 (the ‘881 patent) in Certain Consumer Electronics and Display Devices and Products Containing Same (Inv. No. 337-TA-836).
According to the Order, Samsung argued that claim 1 of the ‘881 patent is invalid based on indefiniteness under 35 U.S.C. § 112, ¶ 2. Specifically, Samsung asserted that the second and third means-plus-function claim elements were “facially invalid” because the specification failed to disclose the structure required under 35 U.S.C. § 112, ¶ 6. Samsung argued that the specification disclosed only “black boxes” and a brief description of their function. Samsung asserted that the specification completely lacks circuitry and logic elements and, therefore, no testimony or hearing was necessary to make a determination of invalidity.
Complainant Graphics Properties Holdings, Inc. (“GPH”) argued that Samsung’s assertion that the disputed claim elements were “facially invalid” missed the mark on the correct burden of proof. GPH asserted that Samsung failed to “show by clear and convincing evidence that the specification lacks adequate structure that could be understood by one skilled in the art as able to perform the recited functions.” Additionally, GPH argued that the specification disclosed a detailed description of the disputed claim elements’ various functions. In support of this argument, GPH provided a declaration submitted by its expert, Dr. Conte, to show that a person of ordinary skill in the art would be able to create the claimed invention using the detailed description and hardware description languages such as Verilog or VRDL. GPH concluded in arguing that, at the least, it has created a disputed issue of fact.
The Commission Investigative Staff (“OUII”) also opposed the motion. OUII argued that “there are issues of material fact regarding whether one of ordinary skill in the art would read the specification of the ‘881 Patent to disclose the necessary structures.” In support of its argument, OUII pointed to several sections of the specification where the specification arguably discloses several structural elements.
After considering the arguments, ALJ Essex agreed with both GPH and OUII and denied Samsung’s motion. ALJ Essex held that “there are disputed issues of fact as to how a person of ordinary skill would read the specification, interpret the functions and algorithms disclosed in that specification, and even who the person of ordinary skill would be.”