On September 17, 2013, ALJ James E. Gildea issued Order No. 42 in Certain Wireless Communications Equipment and Articles Therein (Inv. No. 337-TA-866).

According to the Order, Complainants Samsung Electronics, Co., Ltd. and Samsung Telecommunications America, LLC (collectively “Samsung”) filed a motion for summary determination that two references, Japanese Application 2008-000199 and its international application published as PCT Publication No. WO 2009/087743 (collectively, “References”), are not prior art with respect to U.S. Patent No. 8,165,081 (the ‘081 patent).  Specifically, Samsung argued that the References are not prior art under 35 U.S.C. §§ 102(a) or 102(b) because they were not published until July 16, 2009 – after the ‘081 patent’s February 4, 2009 filing date.  Furthermore, Samsung asserted that the References are not prior art under 35 U.S.C. § 102(e) because the PCT publication was not published in English.  Accordingly, Samsung argued that the References do not qualify as prior art under 35 U.S.C. § 103(a) because they do not qualify as prior art under 35 U.S.C. § 102. 

In opposition, Respondents Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively, “Ericsson”) argued they have been prejudiced by Samsung failure to comply with the procedural schedule.  Specifically, Ericsson asserted that Samsung waited until Ericsson filed its motion for partial summary determination to reveal their arguments regarding why the References are not prior art.  Furthermore, Ericsson argued that the References are probative of the level of ordinary skill in the art at the time of the alleged invention and that the ‘081 patent was not entitled to claim the benefit of the filing date of the ‘081 patent’s provisional application.  Lastly, Ericsson requested leave to file an amended expert report “that more clearly explains invalidity in view of the other references already charted.”

ALJ Gildea agreed with Samsung and held that the References do not qualify as prior art against the ‘081 patent.  As an initial matter, ALJ Gildea held that his holding does not depend on Ericsson’s arguments regarding the References use as demonstrating the level of ordinary skill in the art and the inability of the ‘081 patent to claim priority to its provisional application; accordingly, ALJ Gildea did not address these arguments.  ALJ Gildea denied Ericsson’s request for leave to file an amended expert report because Samsung’s contention interrogatory responses provided Ericsson with sufficient notice of Samsung’s prior art arguments.  As to Samsung’s prior art arguments, ALJ Gildea determined that there were no disputed material facts that precluded granting the motion.  Specifically, ALJ Gildea held that the filing dates of the ‘081 patent and the References are undisputed.  ALJ Gildea determined that the PCT publication was not published in English because the PCT publication’s English title and abstract were required by the PCT Regulations and did not satisfy § 102(e)’s publication in English requirement.  Lastly, ALJ Gildea held that the References did not qualify as prior art under § 103(a) because the references did not qualify as prior art under § 102.  Accordingly, ALJ Gildea granted Samsung’s Motion for Partial Summary Determination.