By Eric Schweibenz
On July 22, 2010, ALJ E. James Gildea issued the public version of Order No. 38 (dated June 29, 2010) in Certain Ceramic Capacitors and Products Containing Same (Inv. No. 337-TA-692).  In the Order, ALJ Gildea denied Respondents Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics America, Inc.’s (collectively, “Samsung”) second motion (see our June 3, 2010 post for information about Samsung’s first motion) for summary determination that claims of U.S. Patent No. 6,266,229 (“the ‘229 patent”) asserted by Complainants Murata Manufacturing Co. Ltd. and Murata Electronics North America, Inc. (collectively, “Murata”) are invalid as anticipated and/or obvious based on certain prior art.

According to Samsung, the asserted claims of the ‘229 patent are directed to a well-known multilayer capacitor design that includes an allegedly novel lead structure featuring a length to width ratio (“L/W ratio”) of about 3 or less, about 0.4 to 3.0, or about 0.4 to 1.3.  Samsung argued that the claimed L/W ratio is not novel because capacitors sold by AVX Corp. (“AVX”) that included lead structures having the claimed L/W ratio were sold in the U.S. approximately 10 years before the filing date of the ‘229 patent application.  Samsung further argued that U.S. Patent No. 4,831,494 (“the Arnold patent”) “teaches every limitation of the asserted claims of the ‘229 patent, except, potentially, the specifically claimed L/W ratio of the electrode tabs,” and that “[i]t would have been obvious to combine Arnold and the [AVX] products, both of which were developed by IBM to provide effective decoupling capacitors that minimize inductance, particularly self-inductance.”

In opposition, Murata argued that neither the AVX products nor the Arnold patent “teach or suggest any ratios of the length to the width L/W of any of the lead electrodes” of the asserted claims of the ‘229 patent, which are directed to peripheral terminated capacitors and do not apply to end terminated capacitors or face terminated capacitors such as the AVX products and the Arnold patent capacitors.

ALJ Gildea determined that genuine material issues of fact remained and good cause did not exist to grant Samsung’s motion.  Specifically, ALJ Gildea found that the parties and their respective experts disputed (1) whether a person of ordinary skill in the art would consider the AVX capacitors to be prior art, (2) the L/W ratios, if any, that were disclosed in the alleged prior art, (3) whether any such L/W ratios anticipate those claimed in the ‘229 patent, and (4) the scope and content of the prior art with respect to the underlying considerations for obviousness, including secondary considerations.  Thus, ALJ Gildea determined that Samsung failed to meet its burden of showing by clear and convincing evidence that every element of the asserted claims was disclosed in a single prior art reference, or that the asserted claims would have been obvious to one of ordinary skill in the art at the time the invention was made.