On November 17, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 47C (dated October 14, 2009).  The order denied summary determination motions filed by Complainant Saxon Innovations, LLC (“Saxon”) and Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLP (collectively, “Samsung”) in Certain Electronic Devices, Including Handheld Wireless Communications Devices (Inv. No. 337-TA-667/673).

Both parties filed motions for summary determination on August 25, 2009.  Saxon’s motion sought a determination that U.S. Patent No. 5,608,873 (the ‘873 patent) was not invalid under 35 U.S.C. § 102(e) and was not unenforceable due to inequitable conduct.  Samsung filed a motion seeking summary determination that the ‘873 patent was unenforceable due to inequitable conduct.

According to the order, Saxon argued that the disclosure of the ‘873 patent pre-dates the filing dates of three references asserted by Samsung to invalidate the ‘873 patent.  Saxon pointed to a signed invention disclosure and the testimony of Samsung’s expert in which, Saxon argued, the expert agreed that the invention disclosure satisfied every element of claims 1 and 13 of the ‘873 patent.  The Commission Investigative Staff (the "Staff") agreed and supported Saxon’s motion.  ALJ Rogers, however, found that there were genuine issues of material fact to be determined, including whether the invention disclosure corroborates claims 1 and 13 of the ‘873 patent and whether the invention disclosure discloses the substance of any other claims of the ‘873 patent.

ALJ Rogers also denied Saxon’s motion regarding inequitable conduct, holding that there are genuine issues of material fact relating to both materiality and intent.

In its inequitable conduct motion, Samsung asserted that the attorney who prosecuted the ‘873 patent failed to disclose the existence of another similar patent (owned, at that time, by the same company) he was also prosecuting.  According to Samsung, had the PTO examiner known about this other application, such examiner would have issued rejections based on anticipation, obviousness and/or obviousness-type double patenting.  Samsung also asserted that the similarity between the applications would also lead to inventorship issues, as the patents list different inventors.  The Staff took the position that the prosecution of the other application was material, but that there are factual issues to be determined.  ALJ Rogers held that there are genuine issues of material fact regarding intent to deceive and, therefore, denied Samsung’s motion.