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Judge Stark resolves various summary judgment motions, considering such issues as whether plaintiff improperly broadened claim scope during reexamination and intervening rights

Judge Leonard P. Stark recently considered the parties’ pending motions for summary judgment and Daubert motions, denying most of them. Exelis Inc. v. Cellco Partnership (d/b/a Verizon Wireless), et al., C.A. No. 09-190-LPS (D. Del. Nov. 6, 2012). The parties cross moved for summary judgment on the issue of whether Exelis improperly broadened a claim during reexamination and whether Exelis sought reexamination for an improper purpose. Id. at 4. Judge Stark denied both motions without prejudice to renew during post-trial briefing because, while both parties asked the Court to compare “just the scope of the original [claim] term to the reexamined scope of the same term[,]” Judge Stark felt there was uncertainty as to whether the proper comparison should be between “the reexamined claim and ‘each and every claim of the [original] patent.’” Id. at 5 (quoting MPEP § 2258.III.A) (emphasis in original).

Judge Stark granted-in-part Defendants’ partial motion for summary judgment of non-infringement. Id. at 16. One of the bases for Defendants’ motion was that “intervening rights should apply to every claim of the ‘450 patent as a result of claim amendments made during reexamination.” Id. at 17. Exelis argued that intervening rights should not apply to claim 1, but Judge Stark disagreed because, like the other claims, claim 1 was “substantively changed” during reexamination. Id. at 18. Exelis argued that the amendments, “were added only for the sake of clarification[.]” But, for example, Judge Stark noted that “[o]riginal claim 1 . . . did not require a specific ‘origin’ for satellite position data[,]” while amended claim 1 required that the satellite position data be received “from each of the in-view GPS satellites.” Id. at 20 (emphasis omitted). Significantly Plaintiff urged the Examiner that the amended claim was distinguishable from the prior art because of the distinction as to origin of the data and the Examiner referred to this argument as a reason for allowance. Id. at 20-21.

Judge Stark also granted-in-part Exelis’s motion for summary judgment as to Defendants’ affirmative defenses. Id. at 21. Regarding laches, Judge Stark granted Exelis’s motion because the patent was in reexamination for much of the relevant time period. Id. at 22. “[T]he pendency of reexamination is a legitimate excuse for purposes of laches.” Id. Furthermore, because it was undisputed that Defendants knew of the patent during the entire laches period, even though suit wasn’t filed until 2009, Judge Stark found that Defendants failed to articulate “sufficient evidence from which a reasonable factfinder could find prejudice of a kind necessary for Defendants to prevail on their affirmative defense of laches.” Id. at 23.

Judge Stark also denied the parties’ cross-motions for summary judgment of validity/invalidity under 35 U.S.C. § 112 (Id. at 8-16) as well as the parties’ Daubert motions. Id. at 24-


Exelis Inc. v. Cellco Partnership (d/b/a Verizon Wireless), et al., C.A. No. 09-190-LPS (D. Del. Nov. 6, 20…

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