In a recent memorandum order, Judge Richard G. Andrews granted plaintiff’s motion for partial summary judgment that U.S. Patent No. 5,541,654 (“the ‘654 Patent”) is not invalid in view of U.S. Patent No. 5,534,838 (“the ‘838 Patent”). L-3 Communications Corp. v. Sony Corp. et al., C.A. No. 10-734-RGA (D. Del. Oct. 16, 2013). The ‘654 Patent was filed on June 17, 1993, and the ‘838 Patent was filed on August 31, 1993. Id. at 1. As Judge Andrews explained, in order to prove that the ‘838 Patent “is prior art under 102(g), Defendants must show that the invention was actually reduced to practice prior to June 17, 1993, or that there was a diligent pursuit of a constructive reduction to practice between June 16, 1993 and August 31, 1993, the filing date of the [‘838 Patent].” Id.
Judge Andrews first found that defendants failed to demonstrate actual reduction to practice before June 17, 1993. Id. at 1-2. Defendants contended that actual reduction to practice was demonstrated via computer simulation. Id. Judge Andrews held, however, that “a computer simulation is not sufficient in order to show an actual reduction to practice. In order to establish an actual reduction to practice, there must be a physical embodiment.” Id. at 2. Judge Andrews also found that defendants failed to show a diligent pursuit of a constructive reduction to practice. Id. at 3. Defendants relied on the inventor’s deposition testimony which indicated that it took “at a minimum, two to four months to draft an application.” Id. Judge Andrews found that “[a]s a matter of law, this is not sufficient to establish two and a half months of diligence.” Id.