The opinion of the court was delivered by: Hayes, Judge
The matter before the Court is Defendant's Motion for Summary Judgment Or, in the Alternative, Partial Summary Judgment ("Motion for Summary Judgment"). (Doc. # 184.)
On October 23, 2001, Plaintiff filed this action, alleging that Defendant is infringing one or more claims of United States Patent No. 5,930,798 (the "'798 Patent"). Plaintiff's Complaint additionally alleges that Defendant is "actively inducing others to infringe, and/or committing acts of contributory infringement of one or more claims of the '798 patent." (Compl. ¶ 12.) On May 17, 2002, Defendant filed its Answer, Affirmative Defenses and Counterclaims (Doc. # 67), denying the validity of the '798 Patent and seeking a declaration that the '798 Patent is invalid.
On November 14, 2002, the District Court (Moskowitz, J.) partially stayed the proceedings based on Defendant's Request for Reexamination of the '798 Patent, filed with the United States Patent & Trademark Office ("USPTO") on October 7, 2002, which challenged all 20 claims of the '798 Patent. On July 8, 2005, Plaintiff filed an Amendment of the claims with the USPTO. (Def.'s Br., Doc. # 171, Ex. H at 154.) The Amendment states: "In response to the Office Action and Examiner's Amendment mailed 6/10/2005, and a telephone conversation of today with Examiner Mr. Vincent Trans, Owner respectfully requests the Examiner to Amend Claims 1 and 15 in order to reflect the agreement arrived at between the undersigned and the Examiner during a phone conversation of May 27, 2005." (Def.'s Br., Doc. # 171, Ex. H at 154.) The USPTO issued a Reexamination Certificate on March 7, 2006. (Pl.'s Br., Doc. # 170, Ex. 8 at 152-53.) The Reexamination Certificate states: "Claims 1 and 15 are determined to be patentable as amended. Claims 2-14 and 16-20, dependent on an amended claim, are determined to be patentable." (Pl.'s Br., Doc. # 170, Ex. 8 at 153.)
When the infringement lawsuit resumed in this Court, Defendant argued that the patent claims which were amended during the reexamination reflected substantive changes. Plaintiff argued that the changes were mere clarifications. The Court ordered briefing on the issue and conducted a hearing on December 1, 2006.
On January 25, 2007, the Court issued an Order finding that the changes were substantive. (Doc. # 180.) The Court found that, inter alia, amended claim 1 was broadened when the language changed from "said at least one index" to "at least one said index." (Jan. 25, 2007 Order, Doc. # 180, at 10-13.)
On April 4, 2007, Defendant filed the pending Motion for Summary Judgment. (Doc. # 184.) Defendant moves for summary judgment as to Plaintiff's Complaint and Defendant's Counterclaim, on the basis that the amendments made to the '798 Patent during reexamination broadened the claims, thereby rending them invalid. On May 25, 2007, Plaintiff filed its opposition to the Motion for Summary Judgment, asserting that the Court should find that there is a reasonable construction of the language change in amended claim 1 which would preserve the validity of the claim. Plaintiff argued in the alternative that the Court lacks subject-matter jurisdiction over claims 15-20 of the '798 Patent. On June 11, 2007, the Court heard oral argument on the Motion for Summary Judgment.
On June 11, 2007, Defendant filed its First Amended Answer, Affirmative Defenses and Counterclaims, denying the validity of the '798 Patent and asserting counterclaims pursuant to the Declaratory Judgment Act, seeking a declaration that the '798 Patent is invalid. (Doc. # 192.) On June 29, 2007, Plaintiff filed its Answer to the First Amended Counterclaims. (Doc. # 194.)
In the January 25, 2007 Order, the Court found that the amendments to claim 1 (and dependent claims 2-14) were substantive, because, inter alia, amended claim 1 was broadened when the language changed from "said at least one index" to "at least one said index." (Jan. 25, 2007 Order, Doc. # 180, at 10-13.) Section 305 of the Patent Act states in pertinent part: "No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding. . . ." 35 U.S.C. § 305. Because the Court has found that claim 1 was broadened during reexamination in violation of § 305, summary judgment of invalidity is appropriate as to claim 1 and the dependent claims 2-14. See Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995) ("We conclude that a violation of 35 U.S.C. § 305 is an invalidity defense in a patent infringement action, and therefore the district court, upon finding correctly that the claims at issue were improperly broadened during reexamination in violation of section 305, properly granted Quantum's motion for summary judgment of invalidity."); see also Thermalloy, Inc. v. Aavid Eng'g, 121 F.3d 691, 694 (Fed. Cir. 1997) ("Thermalloy enlarged the scope of the reexamination claims. The district court correctly granted summary judgment of invalidity.").
Plaintiff asserts that summary judgment is inappropriate. Plaintiff asserts that "[w]hen claims are amenable to more than one construction, they should when reasonably possible be interpreted so as to preserve their validity." Modine Mfg. Co. v. U.S. Int'l ...