By Memorandum Order entered by the Honorable Richard G. Andrews in L-3 Communications Corporation v. Sony Corporation, et al., Civil Action No. 10-734-RGA (D.Del., October 16, 2013), the Court denied Plaintiff L-3 Communications Corporation’s Motion for Partial Summary Judgment that U.S. Patent No. 5,541,654 (the ”Roberts patent”) is not invalid in light of U.S. Patent No. 5,543,838 (the “Xerox patent”).

The Roberts patent was filed on June 17, 1993. The Xerox patent was allegedly filed on August 31, 1993. In the action, Defendants asserted that the Xerox patent was prior art under 35 U.S.C. §102(g), based on a reduction to practice prior to the critical date of the Roberts patent. Id. at 1. However, in order to prove that the Xerox patent was prior art under section 102(g), Defendants had to show either (i) that the invention was actually reduced to practice prior to June 17, 1993, or (ii) that there was a diligent pursuit of a constructive reduction to practice between June 16, 1993 and August 31, 1993. Id. Because Defendants could not prove either, the Court granted L-3 Communications Corporation’s Motion for Partial Summary Judgment. Id. at 1-3.

A complete copy of the Memorandum Order is attached.