By Eric Schweibenz
On July 29, 2010, ALJ E. James Gildea issued the public versions of Order No. 46 (dated July 19, 2010), Order No. 47 (dated July 19, 2010), Order No. 48 (dated July 19, 2010) and Order No. 52 (dated July 20, 2010) in Certain Ceramic Capacitors and Products Containing Same (Inv. No. 337-TA-692).

In Order No. 46, ALJ Gildea denied Respondents Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics America, Inc.’s (collectively, “Samsung”) motion in limine to strike or otherwise preclude Complainants Murata Manufacturing Co. Ltd. and Murata Electronics North America, Inc.’s (collectively, "Murata") use of test data, results, and reports provided by third-party testing laboratories and relied upon by Murata’s experts.  In its motion, Samsung asserted “that there is a lack of foundation needed to demonstrate that the samples that were used by the testing laboratories . . . are authentic, because it cannot be sufficiently demonstrated that there was an adequate chain of custody disclosing that the tested items are what they purport to be.”  In its opposition, Murata asserted that Samsung “failed to present any evidence indicating that the sampled items are not genuine or that they were compromised during testing.”  Further, Murata argued “that a defect in the chain of custody generally goes to the weight of the evidence rather than to its admissibility and that proof of non-tampering is not needed.”  The Commission Investigative Staff (“OUII”) filed an opposition to the motion.  In denying the motion, ALJ Gildea determined that Samsung did not “set forth facts sufficient to demonstrate that the integrity of the testing procedures or the handling of the tested samples was indisputably flawed or unreliable.”

In Order No. 47, ALJ Gildea denied Samsung’s motion in limine “seeking to preclude [Murata] from asserting that the patents-in-suit are infringed under the doctrine of equivalents, except as that doctrine may relate to the manganese value taught by U.S. Patent No. 6,243,254 ('the ‘254 patent').”  In its opposition, Murata “assert[ed] that they do not intend to present evidence in support of the doctrine of equivalence other than with respect to the ‘254 patent,” and thus, the “motion should be denied as moot.”  OUII filed an opposition to the motion asserting that it “is premature inasmuch as [Murata has] not disclosed in any of their responses to interrogatories and expert reports that they have any intention to pursue infringement under the doctrine of equivalents in this Investigation, other than with respect to manganese required by the ‘254 patent.”  In view of the foregoing, ALJ Gildea denied the motion as moot.

In Order No. 48, ALJ Gildea denied Murata’s motion in limine to preclude Samsung “from presenting evidence or asserting argument with respect to allegations of inequitable conduct that were not pleaded in the Response to the Complaint or in any amendments thereto.”  In its motion, Murata asserted, inter alia, that “although Samsung did include some allegations of inequitable conduct in its Response to the Complaint, it did not amend its Response to add other grounds of inequitable conduct which are now included in Samsung’s prehearing brief.”  In opposition, Samsung asserted that “it pled inequitable conduct with respect to all asserted patents” and that “it provided full details of its inequitable defenses to Murata and that [Murata] had full opportunity to conduct discovery relating to those defenses.”  OUII filed an opposition to the motion asserting that Murata did have notice of at least four of the inequitable conduct defenses it sought to exclude at least a month before discovery closed, but did not pursue discovery on these defenses.  In denying the motion, ALJ Gildea found that “Samsung did, during the course of discovery, flesh out a majority of its inequitable conduct theories to such an extent that Murata was in a position to respond to them in its rebuttal reports and its prehearing brief.”  Accordingly, ALJ Gildea determined that Murata “impliedly consented to the existence of [Samsung’s inequitable conduct] defenses” and that Samsung was allowed “to offer relevant and material evidence in support of those defenses” which Murata was informed of “in a timely enough manner to enable Murata to conduct discovery with respect to them and to adequately prepare to counter such evidence.”

In Order No. 52, ALJ Gildea denied Murata’s “motion in limine to deem as established certain facts related to the dielectric composition of the accused capacitor products.”  In its motion, Murata asserted that Samsung provided inconsistent information with respect to the compositions of its accused capacitor products.  Murata further asserted, inter alia, that “because Samsung has failed to explain the inconsistent information it provided, Samsung should be bound by the statements it made in discovery and that [its accused capacitor products] should be deemed to have been manufactured using both sets of information.”  In opposition, Samsung asserted that (i) it complied with Commission Rule 210.27(c) by promptly providing corrected information regarding the composition for some of its accused products upon learning of the errors in the information that it had previously provided and (ii) Murata has not suffered any prejudice.  OUII opposed the motion on similar grounds.  In denying the motion, ALJ Gildea found that “Samsung has complied with Commission Rule 210.27(c) and Murata has failed to show any undue harm or prejudice.”