By Eric Schweibenz
On July 20, 2010, ALJ E. James Gildea issued the public version of Order No. 30 (dated June 9, 2010) in Certain Ceramic Capacitors and Products Containing Same (Inv. 337-TA-692) denying Respondents Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics America, Inc.'s (collectively, “Samsung”) motion for summary determination of invalidity.

On March 22, 2010, Samsung moved for summary determination arguing that several claims of U.S. Patent No. 6,243,254 (the ‘254 patent) were invalid under 35 U.S.C. §§ 102 and 103, citing three prior art references.  In addition, Samsung asserted that a number of those claims were also invalid under 35 U.S.C. § 112 as not enabled and lacking written description.  On April 8, 2010 Complainants Murata Manufacturing Co. Ltd. and Murata Electronics North America, Inc. (collectively, “Murata”) filed an opposition to Samsung’s motion.  The Commission Investigative Staff (“OUII”) also filed an opposition to Samsung’s motion on April 8, 2010.

In support of the motion, Samsung argued that the asserted claims of the ‘254 patent were limited during prosecution to covered ceramic compositions made from barium calcium titanate starting materials to which other components are added.  Samsung argued that Murata was now seeking to interpret the asserted claims to cover ceramic compositions formed from barium titanate starting materials to which a calcium-containing component is added.  This broad interpretation, according to Samsung, rendered the ‘254 patent invalid as anticipated and obvious.  Samsung also argued that several asserted claims were not enabled and lacked written description.  Certain claims of the ‘254 patent require “a plurality of inner dielectric layers comprising of Ni or Ni alloy.”  According to Samsung, however, the inventors of the ‘254 patent admitted that nickel and nickel alloy are conductive, not dielectric, and use of nickel or nickel alloy as a dielectric layer is not described in the patent.  Thus, Samsung asserted such claims were invalid for lack of enablement and written description.

With regard to Samsung’s starting material argument, Murata asserted that the claims of the ‘254 patent do not specify a starting material, but rather claim a composition of a final dielectric ceramic.  For example, Murata argued that claim 1 disclosed a final dielectric ceramic with a stated formula at a given calcium concentration.  With that construction in mind, Murata maintained that none of Samsung’s relied-upon prior art, individually or in combination, discloses the dielectric ceramic composition set forth in the claims.  Moreover, according to Murata, Samsung ignored the secondary considerations of non-obviousness, such as evidence of commercial success and copying.  In addressing written description and enablement, Murata agreed that some of the claims contained an error — reciting “inner dielectric layers” rather than “inner electrode layers.”  However, Murata asserted that one of ordinary skill in the art would recognize the drafting error, as the only nickel or nickel alloy structures described in the patent were inner electrodes.

OUII opposed Samsung’s motion arguing that questions existed as to what was disclosed in the prior art and whether several of the claims complied with the written description requirement.  OUII added that none of the three prior art references cited by Samsung used barium calcium titanate as a starting material, which OUII believed to be the starting material used in the asserted claims of the ‘254 patent.

Taking these arguments into consideration, ALJ Gildea determined that summary determination was not appropriate.  According to the Order, ALJ Gildea determined several genuine issues of material fact remained.  With regard to invalidity under 35 U.S.C. §§ 102 and 103, ALJ Gildea determined that questions existed regarding what was disclosed in the prior art and that genuine issues of fact remained with respect to the knowledge of a person of ordinary skill in the art.  In addition, the Order stated that a genuine issue of fact remained as to the underlying considerations for obviousness, particularly relating to commercial success and copying.  Regarding invalidity under 35 U.S.C. §112, ALJ Gildea stated that Samsung had failed to explain how the asserted claims of the ‘254 patent were not enabled.  However, with regard to the written description requirement, the ALJ determined that there was also a dispute regarding the inventors’ possession of the invention of several of the claims.  As a result, ALJ Gildea determined summary determination was not warranted, denying Samsung’s motion.