By Eric Schweibenz
On December 22, 2010, ALJ Carl C. Charneski issued the public versions of Order No. 44 (dated November 30, 2010), Order No. 45 (dated November 30, 2010), and Order No. 47 (dated December 1, 2010) in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685).

In Order No. 44, ALJ Charneski granted Complainant Samsung Electronics, Co., Ltd.’s (“Samsung”) motion for summary determination that Respondents Alpine Electronics, Inc. and Alpine Electronics of America, Inc. (collectively, “Alpine”) have met the importation requirement of 19 U.S.C. § 1337(a)(1)(B).  In support of its motion, Samsung alleged that Alpine infringes the asserted claims of U.S. Patent No. 5,740,065 (the ‘065 patent), and “identifie[d] the accused products that infringe the ‘065 patent as including, but not limited to,” certain products of Respondents Spansion, Inc. and Spansion LLC. (collectively, “Spansion”).  In granting Samsung’s motion, ALJ Charneski determined that “there is no real dispute in substance” given that “Alpine concedes that ‘the Commission has jurisdiction over certain Alpine downstream products containing Spansion chips that are imported into the United States’” and that “Alpine admitted that it has sold for importation and sold after importation products in the United States.” 

Similarly, in Order No. 45, ALJ Charneski granted Samsung’s motion for summary determination that Respondents D-Link Corporation and D-Link Systems, Inc. (collectively, “D-Link”) have met the importation requirement of 19 U.S.C. § 1337(a)(1)(B).  According to the order, ALJ Charneski noted that D-Link did not dispute that the Commission has jurisdiction over certain D-Link products that contain a Spansion chip and that have been imported into the United States.  Finding “no real dispute in substance”, ALJ Charneski granted Samsung’s motion.

In Order No. 47, ALJ Charneski denied Spansion’s motion for summary determination that the asserted claims of the ‘065 patent are not infringed or are invalid for indefiniteness under 35 U.S.C. § 112.  In support of its motion, Spansion asserted that with respect to the issue of infringement, Samsung’s expert “confirmed that the claims require use of Equation (1) - the patent’s only disclosure for accumulatively average working conditions . . ..”  Spansion also asserted that the claims were invalid as indefinite, “if not limited to implementation of Equation (1).”  In this regard, Spansion asserted that Samsung’s expert “also verified that unless the claims are limited to implementing Equation (1), they are unquestionably invalid under 35 U.S.C. § 112, ¶2 as indefinite.”  Samsung opposed the motion asserting that the expert testimony relied upon by Spansion “is taken out of context and is incomplete.”  Further, Samsung asserted that its expert “did not limit the ‘accumulatively averaging” claim phrase to Equation (1)” but that “Equation (1) teach[es] the use of a moving average, not the strained ever-increasing average that Spansion wrongly interpreted it to mean.”  Accordingly, ALJ Charneski found that “there exist genuine issues as to material facts” and “that Spansion is not, at this time, entitled to judgment as a matter of law.”