By Eric Schweibenz
On July 29, 2010, ALJ E. James Gildea issued the public version of Order No. 45 (dated July 19, 2010) in Certain Ceramic Capacitors and Products Containing Same (Inv. 337-TA-692), denying Respondents Samsung Electro-Mechanics Co., Ltd.’s and Samsung Electro-Mechanics America, Inc.’s (collectively “Samsung”) motion for summary determination of non-infringement of U.S. Patent No. 6,266,229 (the ‘229 patent).

Although portions of the order were heavily redacted, it appears Samsung argued that any Samsung multilayer ceramic capacitors (“MLCCs”) not designated in the Complaint or expert report of Complainants Murata Manufacturing Co., Ltd. and Murata Electronics North America, Inc. (collectively “Murata”) as infringing the ‘229 patent should be considered non-infringing.  In the alternative, Samsung argued that its MLCCs not specifically accused of infringement should not be subject to an exclusion order.  In opposition, Murata argued that Samsung was seeking an unauthorized advisory opinion since the motion presumed that simply because a particular Samsung MLCC is not alleged to be infringing, it consequently does not infringe.  Murata further argued that in light of Samsung’s alleged failure to provide samples and complete discovery, it was possible that some non-accused capacitors actually do infringe the ‘229 patent.

ALJ Gildea determined that Samsung’s request for a determination that its MLCCs not identified by Murata as accused products do not infringe the ‘229 patent is “irrelevant to this Investigation,” and that such a “‘declaratory judgment’ is outside the scope of a Section 337 investigation, would be contrary to the Commission's objective to conduct expeditious proceedings, and wasteful of the Commission’s, the parties’, and the public’s resources.”  ALJ Gildea further determined that “Samsung is not entitled to an order finding that its non-accused MLCCs are not subject to an exclusion order because such an order would be premature.”