22
Nov
By Eric Schweibenz
On November 17, 2010, ALJ Carl C. Charneski issued Order Nos. 40 and 41 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) denying motions by Respondents Spansion, Inc. and Spansion LLC’s (collectively, “Spansion”) and Complainant Samsung Electronics Co., Ltd. (“Samsung”) for summary determination with respect to the validity of the asserted claims of U.S. Patent No. 5,740,065 (the ‘065 patent).

With respect to Order No. 40, Spansion filed a motion for summary determination that all asserted claims of the ‘065 patent are invalid under 35 U.S.C. § 112, ¶ 1 for failing to satisfy the written description and enablement requirements.  Spansion further argued that the asserted claims were also invalid as indefinite under § 112, ¶ 2.  ALJ Charneski denied Spansion’s motion, determining that, “simply put, Spansion’s motion is premature,” because the § 112 issues raised by Spansion could not be resolved without the benefit of a hearing record, including expert testimony.

Regarding Order No. 41, ALJ Charneski denied both a motion for summary determination by Spansion that claim 8 of the ‘065 patent is invalid under 35 U.S.C. § 102 over Japanese unexamined patent application H5-47893 (“Hirosato”), and a similar motion by Samsung that Hirosato does not anticipate claim 8 of the ‘065 patent.  ALJ Charneski determined that both motions could only be decided on an evidentiary record.