Effectively Using Partial Summary Judgment Motions in Patent Cases

While not fully disposing of a case, partial summary judgment motions ' even when denied ' may effectively limit the scope of issues for trial. Knowing how the contours of the applicable federal rule, namely, Federal Rule of Civil Procedure 56, apply in the patent arena can be especially advantageous in complex patent matters involving multiple legal and factual issues. There are two particularly worthwhile topics for patent cases: first, the extent to which the courts differ over what is appropriate for decision upon a motion for partial summary judgment; and second, the requirements for “establishing” facts for the purposes of trial, even when a partial summary judgment motion is denied.

The Scope of Partial Summary Judgment in Patent Actions

Most courts and commentators find that partial summary judgment is appropriate for not only entire legal claims but also parts of claims and non-dispositive issues related to a claim, including defenses. For instance, in Advanced Semiconductor Materials America, Inc. v. Applied Materials, Inc., 1995 WL 419747 at *2-*4 (N.D. Cal. 1995), the respected Judge Ronald Whyte, after a lengthy review of applicable cases and treatises, found that a motion for partial summary judgment is proper to resolve elements of a legal claim, such as infringement. Relying upon 6(2) Moore's Federal Practice '56.20 (1993) and scattered case law, Judge Whyte reasoned that “the purpose of summary judgment is met when the summary adjudication of preliminary issues, such as infringement, helps to focus the issues to be litigated, thus conserving judicial resources.” Id. at *3. See also In re Townshend Patent Litigation, 2004 WL 1920009, at *6 (N.D. Cal. 2004) (noting that it would deny defendant's license defense “sua sponte pursuant to Federal Rule of Civil Procedure 56(d) unless [defendant] can identify additional evidence sufficient to raise an issue of material fact”); Joy Techs., Inc. v. Quigg, 732 F. Supp. 227 (D.D.C. 1990) (establishing under Rule 56(d) the scope and content of the prior art, the differences between the prior art and the claimed invention, and the level of ordinary skill in the art).

The principle of Advanced Semiconductor may be extended to cover issues such as validity, enforceability, and even whether an accused device embodies a particular element or sub-element of an asserted patent claim. See, e.g., Scam Instrument Corp. v. Control Data Corp., 458 F.2d 885 (7th Cir. 1972) (validity); PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 12 F. Supp.2d 69 (D. Mass. 1998) (inventorship). By selectively using partial summary judgment with respect to elements of a particular legal claim, litigators may effectively narrow issues to be tried when there is a genuine dispute of material fact regarding other elements of the claim. This is especially so when the patent claims at issue cover multiple technologies. A patent action plaintiff, for example, may wish to make a partial summary judgment motion to show that the first three elements of a process patent claim have been met, expressly leaving the last two elements for the jury.

To be sure, only in jurisdictions that allow partial summary judgment on less than whole claims would such a motion be viable. Although the weight of authority supports partial summary judgment for less than entire claims, there is ample case law and authority otherwise. For instance, according to the treatise 27A Federal Procedure, Lawyers' Edition '62:638 (1996), partial summary judgment is not appropriate to resolve a portion of a claim. Several courts have so held. See, e.g., Edward Lowe Indus., Inc. v. Oil-Dri Corp. of America, 1995 WL 683761, at *2 (N.D. Ill. 1995) (“The court may not narrow the issues for trial under Rule 56(d) unless Marcal's partial summary judgment motion could dispose of an entire claim of infringement. … “); New Jersey Auto. Ins. Plan v. Sciarra, 103 F. Supp.2d 388, 398 (D.N.J. 1998) (“Nothing in this rule can be read to allow partial summary judgment on only one portion of a claim.”); Arado v. General Fire Extinguisher Corp., 626 F. Supp. 506, 509 (N.D. Ill. 1985) (finding that Rule 56(d) does not support adjudication on less than a single claim); but cf. Scam Instrument, 458 F.2d at 889 (7th Cir. 1972) (“it is well settled that, in a proper case, the validity of a patent may be determined by use of summary judgment procedure”); see generally Schwarzer, Tashima & Wagstaffe, Federal Civil Procedure Before Trial '14:40 (1994) (noting split and collecting cases). Furthermore, partial summary judgment is not appropriate merely to resolve factual issues. See, e.g., In re U.S. Grant Hotel Ass'n Ltd. Securities Litigation, Fed. Sec. L. Rep. '95,703 (S.D. Cal. 1990); Mendenhall v. Barber-Greene Co., 531 F. Supp. 947 (N.D. Ill. 1981) (finding that the alleged patent infringer was not entitled under Rule 56(d) to an order limiting the filing dates of the two patents in suit); 10A Wright & Miller, Federal Practice and Procedure '2737 (2004). In any event, many jurisdictions have never squarely considered the issue of whether partial summary judgment is appropriate to resolve partial legal claims ' especially in the patent arena ' and there is certainly room for novel arguments on this score. Thus, counsel seeking to determine (or defend) portions of claims are advised to check the relevant district's case law on Rule 56.

Establishing Facts for Purposes of Trial

Another critical area involving partial summary judgment in patent actions is the use of Rule 56(d) to have the court “establish” particular facts for purposes of trial, even when a motion for partial summary judgment is denied. Under FRCP 56(d), if a judgment “is not rendered upon the whole case … the court … shall if practicable ascertain what material facts exist without substantial controversy.” These facts “shall be deemed established” for purposes of trial, even if the party benefiting from the findings lost the motion for partial summary judgment. FRCP 56(d); see, e.g., Lies v. Farrell Lines, Inc., 641 F.2d 765, 768-69 & n.3 (9th Cir. 1981) (quoting FRCP 56(d) and approving the use of the rule to narrow issues for trial). Many times, the established facts may be matters of mixed law-and-fact. See, e.g., Gillette v. Delmore, 886 F.2d 1194, 1197-1199 (9th Cir. 1989). For example, a party may wish to establish for purposes of trial that a certain procedure is sufficient to meet a patent claim element, thereby eliminating that factual determination from the purview of the jury.

Critical to a fact being “established” for purposes of trial is the requirement of Rule 56(d) that a court “specify [ ] the facts that appear without substantial controversy.” Griffin v. Griffin, 327 U.S. 220, 226 (1946). This is especially so in the context of a failed motion for partial summary judgment. See, e.g., Northern District of California Civil Local Rule 56-3 (“Statements contained in an order of the Court denying a motion for summary judgment or summary adjudication shall not constitute issues deemed established for purposes of the trial of the case, unless the Court so specifies.”).

If a party or its attorney fails to request in its motion (or opposition to a motion) that the court make a Rule 56(d) determination, the court may refuse to specify uncontroverted facts as “established” for purposes of trial. See, e.g., Williams v. Sinclair, 529 F.2d 1383 (9th Cir. 1975) (rejecting request for determination of facts when party did not request such until 8 months after original summary judgment ruling). Counsel requesting a finding of uncontroverted facts may remind the court of the significant benefits to judicial economy of these determinations, especially in view of the numerous complex technical issues usually present in a patent case trial. See, e.g., Rivera-Flores v. Puerto Rico Telephone Company, 64 F.3d 742, 747-48 (1st Cir. 1995). Moreover, attorneys may point out that by the court not establishing otherwise uncontroverted facts, given the limited time to try a case, such inaction would “confuse and complicate” the trial by reducing the time available for the jury to examine truly disputed factual issues. Lies, 641 F.2d at 769 n.3. Conversely, an attorney may wish to file or oppose a Rule 56(d) motion, specifically requesting that certain facts ' even if decided for purposes of the broader partial summary judgment motion ' not be established for purposes of trial. See, e.g., Burgans v. New York Cent. R.R. Co., 192 F. Supp. 222 (S.D.N.Y. 1961) (noting that determinations of otherwise uncontested facts under Rule 56(d) are not favored).

Thus, it is strategically critical for counsel to pay close attention to facts that might be found as “established” by a judge upon deciding a motion for partial summary judgment. This is particularly so given that after a judge issues an order granting or denying partial summary judgment, the parties are often estopped from requesting that certain facts in their favor be expressly established for purposes of trial. See, e.g., Securities & Exchange Comm'n v. Thrasher, 152 F. Supp.2d 291 (S.D.N.Y. 2001) (finding that Rule 56(d) does not authorize the parties to request factual determinations independent of the original summary judgment motion). Of course, parties may always wish to argue that a judge implicitly found facts as uncontroverted and so specified those facts as established for purposes of trial. Several courts have found that despite the lack of an express determination in a partial summary judgment order under Rule 56(d), the order has been specific enough to establish particular facts for trial. See, e.g., Rivera-Flores, 64 F.3d at 748 (“Although it is unquestionably advisable for the [district] court to announce its intention to enter such an order, Rule 56(d) does not make it compulsory.”).

Conclusion: Wise Use of Partial Summary Judgment

Because the scope of partial summary judgment varies, attorneys should be careful to check the relevant jurisdiction's case law. With this caveat in mind, partial summary judgment may be used effectively in patent actions to narrow the scope of issues and establish facts for trial, even in the event a motion is ultimately denied.

While not fully disposing of a case, partial summary judgment motions ' even when denied ' may effectively limit the scope of issues for trial. Knowing how the contours of the applicable federal rule, namely, Federal Rule of Civil Procedure 56, apply in the patent arena can be especially advantageous in complex patent matters involving multiple legal and factual issues. There are two particularly worthwhile topics for patent cases: first, the extent to which the courts differ over what is appropriate for decision upon a motion for partial summary judgment; and second, the requirements for “establishing” facts for the purposes of trial, even when a partial summary judgment motion is denied.

The Scope of Partial Summary Judgment in Patent Actions

Most courts and commentators find that partial summary judgment is appropriate for not only entire legal claims but also parts of claims and non-dispositive issues related to a claim, including defenses. For instance, in Advanced Semiconductor Materials America, Inc. v. Applied Materials, Inc., 1995 WL 419747 at *2-*4 (N.D. Cal. 1995), the respected Judge Ronald Whyte, after a lengthy review of applicable cases and treatises, found that a motion for partial summary judgment is proper to resolve elements of a legal claim, such as infringement. Relying upon 6(2) Moore's Federal Practice '56.20 (1993) and scattered case law, Judge Whyte reasoned that “the purpose of summary judgment is met when the summary adjudication of preliminary issues, such as infringement, helps to focus the issues to be litigated, thus conserving judicial resources.” Id. at *3. See also In re Townshend Patent Litigation, 2004 WL 1920009, at *6 (N.D. Cal. 2004) (noting that it would deny defendant's license defense “sua sponte pursuant to Federal Rule of Civil Procedure 56(d) unless [defendant] can identify additional evidence sufficient to raise an issue of material fact”); Joy Techs., Inc. v. Quigg, 732 F. Supp. 227 (D.D.C. 1990) (establishing under Rule 56(d) the scope and content of the prior art, the differences between the prior art and the claimed invention, and the level of ordinary skill in the art).

The principle of Advanced Semiconductor may be extended to cover issues such as validity, enforceability, and even whether an accused device embodies a particular element or sub-element of an asserted patent claim. See, e.g., Scam Instrument Corp. v. Control Data Corp. , 458 F.2d 885 (7th Cir. 1972) (validity); PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 12 F. Supp.2d 69 (D. Mass. 1998) (inventorship). By selectively using partial summary judgment with respect to elements of a particular legal claim, litigators may effectively narrow issues to be tried when there is a genuine dispute of material fact regarding other elements of the claim. This is especially so when the patent claims at issue cover multiple technologies. A patent action plaintiff, for example, may wish to make a partial summary judgment motion to show that the first three elements of a process patent claim have been met, expressly leaving the last two elements for the jury.

To be sure, only in jurisdictions that allow partial summary judgment on less than whole claims would such a motion be viable. Although the weight of authority supports partial summary judgment for less than entire claims, there is ample case law and authority otherwise. For instance, according to the treatise 27A Federal Procedure, Lawyers' Edition '62:638 (1996), partial summary judgment is not appropriate to resolve a portion of a claim. Several courts have so held. See, e.g., Edward Lowe Indus., Inc. v. Oil-Dri Corp. of America, 1995 WL 683761, at *2 (N.D. Ill. 1995) (“The court may not narrow the issues for trial under Rule 56(d) unless Marcal's partial summary judgment motion could dispose of an entire claim of infringement. … “); New Jersey Auto. Ins. Plan v. Sciarra , 103 F. Supp.2d 388, 398 (D.N.J. 1998) (“Nothing in this rule can be read to allow partial summary judgment on only one portion of a claim.”); Arado v. General Fire Extinguisher Corp., 626 F. Supp. 506, 509 (N.D. Ill. 1985) (finding that Rule 56(d) does not support adjudication on less than a single claim); but cf. Scam Instrument, 458 F.2d at 889 (7th Cir. 1972) (“it is well settled that, in a proper case, the validity of a patent may be determined by use of summary judgment procedure”); see generally Schwarzer, Tashima & Wagstaffe, Federal Civil Procedure Before Trial '14:40 (1994) (noting split and collecting cases). Furthermore, partial summary judgment is not appropriate merely to resolve factual issues. See, e.g., In re U.S. Grant Hotel Ass'n Ltd. Securities Litigation, Fed. Sec. L. Rep. '95,703 (S.D. Cal. 1990); Mendenhall v. Barber-Greene Co., 531 F. Supp. 947 (N.D. Ill. 1981) (finding that the alleged patent infringer was not entitled under Rule 56(d) to an order limiting the filing dates of the two patents in suit); 10A Wright & Miller, Federal Practice and Procedure '2737 (2004). In any event, many jurisdictions have never squarely considered the issue of whether partial summary judgment is appropriate to resolve partial legal claims ' especially in the patent arena ' and there is certainly room for novel arguments on this score. Thus, counsel seeking to determine (or defend) portions of claims are advised to check the relevant district's case law on Rule 56.

Establishing Facts for Purposes of Trial

Another critical area involving partial summary judgment in patent actions is the use of Rule 56(d) to have the court “establish” particular facts for purposes of trial, even when a motion for partial summary judgment is denied. Under FRCP 56(d), if a judgment “is not rendered upon the whole case … the court … shall if practicable ascertain what material facts exist without substantial controversy.” These facts “shall be deemed established” for purposes of trial, even if the party benefiting from the findings lost the motion for partial summary judgment. FRCP 56(d); see, e.g., Lies v. Farrell Lines, Inc., 641 F.2d 765, 768-69 & n.3 (9th Cir. 1981) (quoting FRCP 56(d) and approving the use of the rule to narrow issues for trial). Many times, the established facts may be matters of mixed law-and-fact. See, e.g., Gillette v. Delmore , 886 F.2d 1194, 1197-1199 (9th Cir. 1989). For example, a party may wish to establish for purposes of trial that a certain procedure is sufficient to meet a patent claim element, thereby eliminating that factual determination from the purview of the jury.

Critical to a fact being “established” for purposes of trial is the requirement of Rule 56(d) that a court “specify [ ] the facts that appear without substantial controversy.” Griffin v. Griffin , 327 U.S. 220, 226 (1946). This is especially so in the context of a failed motion for partial summary judgment. See, e.g., Northern District of California Civil Local Rule 56-3 (“Statements contained in an order of the Court denying a motion for summary judgment or summary adjudication shall not constitute issues deemed established for purposes of the trial of the case, unless the Court so specifies.”).

If a party or its attorney fails to request in its motion (or opposition to a motion) that the court make a Rule 56(d) determination, the court may refuse to specify uncontroverted facts as “established” for purposes of trial. See, e.g., Williams v. Sinclair , 529 F.2d 1383 (9th Cir. 1975) (rejecting request for determination of facts when party did not request such until 8 months after original summary judgment ruling). Counsel requesting a finding of uncontroverted facts may remind the court of the significant benefits to judicial economy of these determinations, especially in view of the numerous complex technical issues usually present in a patent case trial. See, e.g., Rivera-Flores v. Puerto Rico Telephone Company , 64 F.3d 742, 747-48 (1st Cir. 1995). Moreover, attorneys may point out that by the court not establishing otherwise uncontroverted facts, given the limited time to try a case, such inaction would “confuse and complicate” the trial by reducing the time available for the jury to examine truly disputed factual issues. Lies, 641 F.2d at 769 n.3. Conversely, an attorney may wish to file or oppose a Rule 56(d) motion, specifically requesting that certain facts ' even if decided for purposes of the broader partial summary judgment motion ' not be established for purposes of trial. See, e.g., Burgans v. New York Cent. R.R. Co., 192 F. Supp. 222 (S.D.N.Y. 1961) (noting that determinations of otherwise uncontested facts under Rule 56(d) are not favored).

Thus, it is strategically critical for counsel to pay close attention to facts that might be found as “established” by a judge upon deciding a motion for partial summary judgment. This is particularly so given that after a judge issues an order granting or denying partial summary judgment, the parties are often estopped from requesting that certain facts in their favor be expressly established for purposes of trial. See, e.g., Securities & Exchange Comm'n v. Thrasher, 152 F. Supp.2d 291 (S.D.N.Y. 2001) (finding that Rule 56(d) does not authorize the parties to request factual determinations independent of the original summary judgment motion). Of course, parties may always wish to argue that a judge implicitly found facts as uncontroverted and so specified those facts as established for purposes of trial. Several courts have found that despite the lack of an express determination in a partial summary judgment order under Rule 56(d), the order has been specific enough to establish particular facts for trial. See, e.g., Rivera-Flores, 64 F.3d at 748 (“Although it is unquestionably advisable for the [district] court to announce its intention to enter such an order, Rule 56(d) does not make it compulsory.”).

Conclusion: Wise Use of Partial Summary Judgment

Because the scope of partial summary judgment varies, attorneys should be careful to check the relevant jurisdiction's case law. With this caveat in mind, partial summary judgment may be used effectively in patent actions to narrow the scope of issues and establish facts for trial, even in the event a motion is ultimately denied.