Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

Effectively Using Partial Summary Judgment Motions in Patent Cases

By Ted M. Sichelman
December 30, 2004

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).

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Legal Possession: What Does It Mean? Image

Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.

The Anti-Assignment Override Provisions Image

UCC Sections 9406(d) and 9408(a) are one of the most powerful, yet least understood, sections of the Uniform Commercial Code. On their face, they appear to override anti-assignment provisions in agreements that would limit the grant of a security interest. But do these sections really work?