Frank, see doc 35, e.Digitals responce to JVC's CE motion...page 26.
"E. Alternatively, E.Digital Proposes That The Court Postpone Decision On The Motion Until After Completion Of Markman
To the extent the Court is inclined to grant the Motion, e.Digital requests
that the Court postpone a final ruling until after completion of claim construction
proceedings. Inquiry into whether two claims are identical after reexamination
should not occur until after formal claim construction.
See, e.g., Sorensen v.
Emerson Elec. Co
. , 2011 WL 6752559, at*5-7 (S.D.Cal. Dec. 22, 2011) (holding
that “[t]he process for determining whether there is a substantive change between
the pre- and post-reexamination versions of a patent claim requires the Court to
perform the same type of analysis as when resolving a typical claim construction
dispute” and, so consequently, the Court should wait to determine the proper
construction of claims at issue in the pre- and post-reexamination context until
after the benefit of full claim construction proceedings);
Etagz, Inc. v. Quiksilver,
Inc.
2012 WL 2135497 (C.D. 2012) at *2.
It would be unjust and unduly prejudicial to grant this Motion prior to the
parties being able to conduct discovery or before the Court conducts a claim
construction hearing.
See, Eakin Enterprises, Inc. v. Specialty Sales LLC
, 2012
WL 2445154, *10 (E.D. Cal. 2012) (denying without prejudice invalidity summary
judgment motion filed concurrently with a motion to dismiss since the court had
not yet construed the claims and the parties had not yet engaged in any discovery
as “[n]ormally it is not advisable to proceed with the claim construction process
until at least some substantive discovery has taken place”). Allowing claim
construction proceedings to go forward will allow the parties to conduct claim
construction discovery and allow e.Digital to provide expert witness testimony, if
necessary, to testify as to, among other things, how a person of ordinary skill in the
art would understand the amended claims and the additional reexamination history.
doni
