By Memorandum Opinion entered by The Honorable Leonard P. Stark in Exelis Inc. v. Cellco Partnership, et al., C.A. No. 09-190-LPS (D.Del., November 6, 2012), the Court issued its rulings on several motions for summary judgment and Daubert motions filed by plaintiff and defendants. Among other things, the Court denied defendants’ motion for summary judgment asserting invalidity of U.S. Patent No. 5,365,450 (“the ‘450 patent”) on grounds that plaintiff violated 35 U.S.C. § 305 by pursuing reexamination of the ‘450 patent for an improper purposes. Id. at 8.

In their motion, defendants contended that plaintiff pursued reexamination for the purpose of “fixing” the claim construction ruling rendered by Chief Judge Sleet in a prior action that involved the ‘450 patent. Id. at 7. During that prior action, Chief Judge Sleet issued a claim construction ruling that was later vacated by the Court on joint motion of the parties after the parties reached a settlement. Id. at 2.

In denying defendants’ motion for summary judgment of invalidity under Section 305, the Court found that “no reasonable fact finder could conclude that Plaintiff violated Section 305 by pursuing reexamination of the ‘450 patent for an improper purpose.” Id. at 7. The Court noted that plaintiff identified several proper purposes for seeking reexamination, including to address the prior art asserted in the prior litigation and to correct typographical errors in the original patent claims, and defendants offered no evidence - other than their mere suspicions – to counter plaintiff’s contentions. Id. at 7. Thus, the Court denied defendants’ motion for summary judgment and found that plaintiff was entitled to summary judgment that the reexamination was not filed for an improper purpose. Id. at 8.

A complete copy of the Memorandum Opinion is attached.