Sorensen v. Kyocera International, et al

Plaintiff's Opposition to Jt Mtn for Leave to File Summary Judgment of No Liability Prior to Issuance of Reexam Certificate


SAMPLE PLEADING from FreelanceLaw attorney Melody A. Kramer

During the stay of a patent infringement case pending reexamination of the patent (which expired during reexamination), the accused infringer defendants asked the district court to make an exception to stay to allow defendants to file a dispositive motion (a motion for summary judgment on intervening rights/claim continuity), without the other side being allowed to file any motions, conduct any discovery, and without any claim construction being performed. Furthermore, the Court is being asked, within the proposed motion, to rewrite U.S. patent laws to allow an “amendment in effect” finding in a patent that is explicitly impossible to amend in reexamination, and to expand statutes that by their very terms relate only to “amended claims” to relate to “unamended claims.”

The sole, and non-precedential, case cited in support of defendants' argument for “amendment in effect” is a very recent district court opinion in Univ. of Virginia Patent Foundation v. General Elec. Co., 2010 WL 4502599 (W.D.Va. Nov. 9, 2010). The Western District of Virginia is the first federal court in the country to find that cancellation of a claim in reexamination can create an “amendment in effect” and further trigger elimination of claim continuity under 35 U.S.C. § 252.

No federal court in this country, with the exception of the Univ. of Virginia case, has ever found that § 252 denial of claim continuity can arise in the absence of amendment. Furthermore, the current case was materially different from the Univ. of Virginia case in that the subject patent was prohibited from being amended because of its expiration early into the reexam process.

(co-written with Patricia A. Shackelford, Esq.)

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Reference Info:Legal Memoranda: Motions for Summary Judgment/Adjudication | Federal, 9th Circuit, California | United States

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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