On April 28 2009, ALJ Robert K. Rogers, Jr. issued Order No. 25 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers denied Respondent LSI Corporation’s (“LSI”) motion for summary determination that claims 1-3, 5, and 7-9 of U.S. Patent No. 6,714,055 (the “‘055 patent”) are invalid.

In its motion, LSI argued that U.S. Patent No. 4,779,013 to Tanaka (“Tanaka”) anticipates claims 1-3 and 7-9 of the ‘055 patent and that claim 5 of the ‘055 patent is obvious in light of the combination of U.S. Patent No. 5,854,560 to Chow (“Chow”) and a 1997 journal article entitled “A Low Power-Noise Output Driver with an Adaptive Characteristic Applicable to a Wide Range of Loading Conditions” (“Choy Article”), or the combination of U.S. Patent No. 6,066,958 to Taniguchi (“Taniguchi”) and the Choy Article.

In response, Complainant Qimonda AG (“Qimonda”) asserted that Tanaka does not anticipate claims 1-3 and 7-9 of the ‘055 patent because it does not disclose “a control device having … two inverters” as required by independent claim 1.  Regarding obviousness of claim 5, Qimonda asserted that (1) there is no evidence that a person of ordinary skill in the art would have found the combination of Chow and the Choy Article feasible because the circuits disclosed therein “are not amenable to wholesale substitution of elements”; (2) the proposed combination of Chow and the Choy Article would not function properly; (3) the Chow Article teaches away from the combination proposed by LSI; (4) the combination of Taniguchi and the Choy Article would not lead a person of ordinary skill in the art to take two halves of preexisting circuits and join them together; (5) “Taniguchi teaches away from the combination asserted by LSI”; and (5) neither Taniguchi nor the Choy Article teach the design of an output driver device that can easily comply with a multiplicity of specification.  The Commission Investigative Staff filed a response opposing LSI’s motion.

In the order, ALJ Rogers determined that a finding of invalidity was inappropriate because Qimonda raised a genuine issue of material fact regarding the issues of anticipation and obviousness.  Specifically, ALJ Rogers found that the parties offered conflicting expert testimony regarding what was depicted in Tanaka and whether or not one of ordinary skill in the art at the time of the invention would have looked to combine the prior art references asserted by LSI.  Accordingly, ALJ Rogers denied LSI’s motion for summary determination.