My mother used to sing the song High Hopes – you know, the one about the ant trying to move the rubber tree plant? Noninfringement summary judgment motions always remind me of that song because it’s often difficult to get those across the finish lines when the standard precludes granting the motion if there are genuine disputes of material fact. This order shows how parties on both sides address the all-important factual dispute question for these motions.
As she is smiling, the woman in the picture is most definitely not the plaintiff in this case from the Sherman Division involving gym lockers gone horribly, horribly wrong.
Today saw one summary judgment ruling and five Dauberts roll out from the chambers downstairs across the street, making things about as busy downstairs this week as they were when this photo of Judge Payne’s future courtroom was taken in 1940-ish. So let’s take a quick look, shall we?
This is a proposed national class action dealing with annuity contracts. Defendants sought summary judgment as to the plaintiff’s breach of fiduciary duty and breach of contract claims. The Court’s ruling had something for each side.
It’s one of those transition days at the office as my last two October trials either settled or were continued within 24 hours of each other yesterday after a whirlwind last couple of weeks full of activity getting both ready for their respective pretrial conferences. You know the kind of day I’m talking about – closing files, stacking up the documents to be shredded, trying to clean up the mess my to do list has become, and having the usual existential debate – am I happy or sad that I’m not as busy as I was two days ago.Hmm. In terms of specifics, this morning it means I’m in the office early enough to tack on another post before the daily weblog email deadline of 8 am, and I thought this order seeking partial summary judgment on the issue of damages, which deals with marking issues.
Two of patent litigants’ favorite topics come together in this afternoon’s essay by Judge Payne ruling on a defendant’s motion for partial summary judgment of willful infringement. (Ever wonder why “infringement” has an “e” and “judgment” doesn’t? I have, but just the once). So crack open a peanut butter cup, and let’s see what the Court had to say.
A release defense exists where, for example, a patent holder licenses its patent to a manufacturer. The manufacturer is released from future claims. If the agreement extended to the manufacturer and its customers, the customers would have a license defense against the patent holder. So, for example, let’s say Wile E. Coyote licenses a manufacturer of avian shoewear and its customers. His claims against the Roadrunner for selling the manufacturer’s shoes to his feathered friends would be released as well. This was the situation presented in a set of cases set to go to trial Monday week. This morning the Court granted the motion, which would have the effect of eliminating the plaintiff’s claims against other manufacturers’ products arising out of their use of parts from the original licensed party.
An improper inventorship defense rests on the statutory requirement that a patent is invalid if more or fewer than the true inventors are named.
A defense of “derivation”, on the other hand, requires proof of both prior conception of the invention by another and communication of that conception to the patentee.
Both defenses require proof by clear and convincing evidence.
This case presents an interesting situation in which the defendant claimed that the plaintiff wasn’t the inventor, but did not identify who else was. Given that the procedural context was the plaintiff’s motion for summary judgment as to the defendant’s improper inventorship defense, the issue presented was thus whether Defendant had created a genuine issue of material fact regarding its defenses of improper inventorship and derivation.
On the derivation defense, the issue was whether the Defendant had adduced proof that the “entirety” of the invention was conceived by others.
Sometimes the reasons for the denial of a summary judgment motion are as instructive as the reasons for a grant. They can educate the reader on what sorts of grounds just aren’t going to work, and why. This was the case with a recent decision by Judge Payne in Marshall.
One of the most haunting moments of the season finale of the original Twin Peaks in 1992 was Jimmy Scott singing Under the Sycamore Trees as things got really, really weird. I think of this song whenever I read opinions in Sycamore IP Holdings v. AT&T, which gave us more to consider recently. Actually, much, much more.