• ALJ Charneski Rules on Motion for Summary Determination Regarding Invalidity in Certain Flash Memory (337-TA-685)
  • November 18, 2010 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On November 15, 2010, ALJ Carl C. Charneski issued Order No. 38 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) denying Respondents Spansion, Inc. and Spansion LLC’s (collectively, “Spansion”) motion for summary determination of no violation of Section 337 on the ground that the asserted claims of U.S. Patent No. 5,740,065 (the ‘065 patent) are invalid under 35 U.S.C. § 101.

    In support of its motion, Spansion argued that the asserted claims of the ‘065 patent were invalid because they “attempt[ed] to patent the abstract idea of applying a recursive mathematical function with an error correction to a non-specific method of semiconductor manufacture, using parameters measured in a non-specific manner.”  In opposition, Complainant Samsung Electronics Co., Ltd. (“Samsung”) asserted that “Spansion misapplies Supreme Court precedent and further, that it misconstrues the ‘065 patent.”  In this regard, Samsung asserted that “[a] claim drawn to subject matter otherwise statutory does not become non-statutory simply because it uses a mathematical formula” and “the ‘065 patent does not claim the abstract manipulation of numbers and formulas on a computer.”  Similarly, the Commission Investigative Staff (“OUII”) opposed the motion arguing that “the asserted claims protect an industrial process for manufacturing a device, and while the process employs a mathematical equation, the claims do not pre-empt the use of that equation.”  Further, OUII asserted that the ‘065 patent claims “are drawn to an industrial process for manufacturing a semiconductor device using claimed manufacturing equipment - not to a mere mathematical formula with the manufacturing context added as an afterthought.”

    ALJ Charneski denied Spansion’s motion finding that “[w]hile there may be no disputed issues of material fact . . . insofar as the record presently is developed, Samsung and [OUII] offered a more compelling argument for as to why summary determination is not appropriate.”