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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

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