L-3 Communs. Corp. v. Sony Corp.

A physical embodiment of the invention was required to show actual reduction to practice.

Opinion (Andrews): L-3 Communications Corp. ("L-3") sued Sony Corporation ("Sony") alleging Sony infringed two of its patents. L-3 moved for partial summary judgment that its Patent No. 5,541,654 (the “Robert's patent”) was not invalid under Patent No. 5,543,848 (the “Xerox patent”). The Robert's patent was filed June 17, 1993, the Xerox patent was filed August 31, 1993. Sony argued that the Xerox patent was prior art alleging that it was reduced to practice before the critical date of the Roberts patent. Under 35 U.S.C. § 102(g) (which has been amended by the America Invents Act), a patent applicant is entitled to a patent for her invention unless, prior to the applicant's invention, “the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.” Sony argued that an invention disclosure form that indicated that the Xerox invention had been “shown to be workable in [a computer model],” showed sufficient reduction to practice to make the Xerox patent prior art. To show actual reduction to practice, however, “there must be a physical embodiment.” Because Sony could not show that a physical embodiment of the Xerox invention existed before the Robert's patent's critical date, it could not show actual reduction to practice. Sony also argued that deposition testimony asserting that the minimum length of time required to draft a patent application was two to four months, showed constructive reduction to practice prior to the Robert's patent's critical date. Testimony that merely establishes a period of time within which an act occurred does not establish a date earlier than the last day of that period. Because the last date of the asserted time period was after the critical date of the Robert's patent, the Court held that Sony could not show constructive reduction to practice. Accordingly, the Court GRANTED L-3's motion.