Effectively Using Partial Summary Judgment Motions in Patent Cases

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).