By Eric Schweibenz
On January 15, 2014, ALJ David P. Shaw issued the public versions of Order No. 36 (dated January 14, 2014) and Order No. 37 (dated January 14, 2014) in Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (Inv. No. 337-TA-882).

According to Order No. 36, Respondent LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc. (collectively, “LG”) moved for summary determination that the asserted claims of U.S. Patent Nos. 8,045,952 (the ‘952 patent) and 8,050,652 (the ‘652 patent) are invalid due to improper inventorship.  Specifically, LG argued that the testimony of the two named inventors, as well as Complainant Black Hills Media LLC’s (“BHM”) interrogatory responses, showed that a third individual contributed to at least one asserted claim of each patent.  The Commission Investigative Staff (“OUII”) supported LG’s motion.  ALJ Shaw denied the motion, however, finding that the evidence showed only that the allegedly omitted inventor (1) had discussions with the named inventors regarding the general business goal of allowing immigrants to listen to radio stations from their homeland, and (2) worked on the initial business concept that led to the formation of company where all three individuals worked, neither of which demonstrated clearly and convincingly that the allegedly omitted inventor contributed significantly to the claimed inventions.  Likewise, the ALJ found that BHM’s interrogatory response relied on by LG merely identified the allegedly omitted inventor as a person with knowledge of the inventors of the ‘952 and ‘652 patents, and does not state that such person is himself an inventor.

According to Order No. 37, Respondent Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) moved for partial summary determination that the all the asserted claims of U.S. Patent No. 6,618,593 (the ‘593 patent) are invalid for attempting to cover a device or system, as well as a method for using same, within a single claim.  In particular, Samsung argued that “[a]s written, one of ordinary skill in the art cannot tell whether infringement occurs when a manufacturer or service provider assembles a system including two mobile devices and a central unit, or when the system performs the claimed steps of storing, receiving, and transmitting information.”  The OUII opposed Samsung’s motion.  ALJ Shaw agreed with the OUI and denied the motion, finding that genuine issues of fact exist as to whether a person of ordinary skill in the art would consider the asserted claims “not amenable to construction” or “insolubly ambiguous” as required for a finding of indefiniteness under 35 U.S.C. § 112, ¶ 2.