United States District Court, Northern District of Illinois, E.D
December 7, 1981
ROBERT J. MENDENHALL, ET AL., PLAINTIFFS,
BARBER-GREENE COMPANY, DEFENDANT.
The opinion of the court was delivered by: Shadur, District Judge.
MEMORANDUM OPINION AND ORDER
In this patent infringement action defendant Barber-Greene Company
("Barber-Greene") seeks an order under Fed.R.Civ.P.("Rule") 56(d)
limiting the filing dates of the two patents in suit. Barber-Greene's
motion poses the question whether the patents in suit are entitled to the
earlier filing dates of either or both of two prior patents issued to
plaintiff Robert Mendenhall
("Mendenhall").*fn1 For the reasons stated in this memorandum opinion
and order, Barber-Greene's motion is denied.
Rule 56(d) is not an independent provision permitting the singling out
of limited issues on which the Court's advice may be obtained. It is
solely an adjunct to Rules 56(a) to (c) under which a party may move for
summary judgment as to all or part of a claim.*fn2 If such a Rule 56
motion is unsuccessful but in the course of decision the Court determines
that "material facts exist without controversy," Rule 56(d) then directs
that the Court enter "an order specifying the facts that appear without
Indeed this case is illustrative of the reason for the Rule's
structuring. Barber-Greene and its adversaries do not agree whether the
filing dates are "material facts"— or more accurately, whether
Barber-Greene has proved that they are. That question depends on other
issues not ripe for decision because all the facts are not before the
Court.*fn3 This Court cannot determine whether the "material facts"
standard of Rule 56(d) has been met. It will not of course render an
advisory opinion both because of that Rule 56(d) standard and for
Article III and prudential reasons.
Had Barber-Greene filed a Rule 56(a) motion all the issues would be
before the Court with full information necessary to determine whether or
not a Rule 56(d) order as to the filing dates is appropriate.
Barber-Greene has not done so. Rule 56(d) was not intended for the use
to which Barber-Greene attempts to put it.
As indicated at the outset of this memorandum opinion, Barber-Greene's
motion is denied. This opinion does not of course express any views on
the merits, nor does it foreclose renewal of the request for the same
relief as and when it becomes ripe for presentation.