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IP INNOVATION L.L.C. v. LEXMARK INTERNATIONAL

February 4, 2004.

IP INNOVATION L.L.C. and TECHNOLOGY LICENSING CORPORATION, Plaintiffs,
v.
LEXMARK INTERNATIONAL, INC., Defendant



The opinion of the court was delivered by: CHARLES KOCORAS, District Judge

MEMORANDUM OPINION

This matter comes before the court on the motion of Defendant Lexmark International, Inc. ("Lexmark") for summary judgment. For the reasons set forth below, the motion is denied.

BACKGROUND

  In May 1989, J. Carl Cooper submitted a patent application (serial number 07/355, 461, hereinafter "the `461 application") for an invention to the Patent and Trademark Office ("PTO").*fn1 The invention involved an apparatus and method for Page 2 improving the visual quality of output on computer "display devices." The application did not specifically enumerate printers as "display devices." In March 1990, Cooper filed an amendment to the application to insert language pertaining to the use of the invention in printers. The PTO examiner, Tommy Chin, objected to the amendment on the grounds that it involved new matter, i.e., matter not previous included either explicitly or inherently in the language of the unamended application.*fn2 Cooper filed a detailed response to Chin's objections.

  Chin objected to the inclusion of the language pertaining to printers twice more. Cooper replied to the third objection in late June 1993. Chin's response took the form of an advisory action, which indicated that the amendment would be entered but that claims 1-26 and claim 30 of the application were rejected. In July, Cooper petitioned the Commissioner of the PTO regarding Chin's position. Ultimately, the Commissioner ruled that Chin's new matter objections were moot, because the objectionable material had either been cancelled or deleted from the application.

  The following September, Cooper filed an application (serial number 08/119, 610, hereinafter "the `610 application") that on its face purported to be a continuation of the `461 application. Cooper also stated that he wished for the PTO to Page 3 "[e]nter the unentered amendment previously filed on 6/24/93." A new examiner was assigned to the file, and ultimately the patent issued with the printer-specific language included (U.S. Patent No. 5,424,780, hereinafter "the `780 patent").*fn3

  In September 1991, Lexmark began selling printers containing print enhancement technology. The current owners of the patent (IP Innovation LLC and Technology Licensing Corporation, collectively referred to herein as "IP") filed suit, alleging that this technology infringed the `780 patent. Lexmark contends that the effective filing date for the patent is September 13, 1993, the filing date of the `610 application. Thus, they argue, their printers were on sale more than one year prior to the date of the application, rendering the `780 patent invalid under 35 U.S.C. § 102(b). The instant motion seeks summary judgment to that effect.

  LEGAL STANDARD

  Summary judgment is appropriate when the record, viewed in the light most favorable to the nonmoving party, reveals that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. Page 4 Fed.R.Civ.P. 56(c). The moving party bears the initial burden of showing that no genuine issue of material fact exists. Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548 (1986). The burden then shifts to the nonmoving party to show through specific evidence that a triable issue of fact remains on issues on which the nonmovant bears the burden of proof at trial. Id. The nonmovant may not rest upon mere allegations in the pleadings or upon conclusory statements in affidavits; it must go beyond the pleadings and support its contentions with proper documentary evidence. Id. The court considers the record as a whole and draws all reasonable inferences in the light most favorable to the party opposing the motion. Bay v. Cassens Transport Co., 212 F.3d 969, 972 (7th Cir. 2000). A genuine issue of material fact exists when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Insolia v. Philip Morris, Inc., 216 F.3d 596, 599 (7th Cir. 2000); Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 248 (1986). With these principles in mind, we turn the motion before us.

  DISCUSSION

  The ultimate question posed by this motion is simple to state: Is the effective filing date of the `780 patent that of the `461 application (May 1989) or that of the `610 application (September 1993)? Reaching an answer is anything but simple with the materials the parties have supplied, The most serious impediment to resolution of the Page 5 motion is Lexmark's failure to present its facts in a manner consistent with Local Rule 56.1. In short, the holes in the story left after elimination of noncomplying portions of the statement of facts make it impossible for this court to reach any definitive conclusion that Lexmark has shown entitlement to judgment as a matter of law.

  For its part, IP has not made a substantial contribution to fleshing out the case, by advancing general, unsupported denials and legal argument that have no place in a 56.1 statement of facts. Naturally, as the nonmoving party, IP carries a much lesser burden than Lexmark to recount what transpired, but if Lexmark had filed a proper statement of facts, IP would be facing a defeat purely by operation of the rule. See, e.g., Leibforth v. Belvidere Nat'l Bank, 337 F.3d 931, 934 (7th Cir. 2003); Smith v. Lamz, 321 F.3d 680, 683 (7th Cir. 2003); Bordelon v. Chicago Sch. Reform Bd. of Trustees, 233 F.3d 524, 528-29 (7th Cir. 2000).

  Even if the supporting materials were in order, the motion as presented would not be amenable to resolution at this stage. Interestingly, Lexmark does not argue that the `610 application was a continuation-in-part of the `461 application. "A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application." Manual of Patent Examining Procedure, § 201.08. A Page 6 patent issuing from a continuation-in-part will have multiple filing dates, each corresponding to the first appearance of the information in question. See Litton Sys. Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984).

  Lexmark argues that the `610 application included new matter not contained in the `461 application, but they do not take this assertion to its logical next step: the `610 application is a continuation-in-part. Instead, Lexmark argues that IP should be estopped from using the earlier date, which presupposes that the `610 application was a continuation, "A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented." Manual of Patent Examining Procedure, § 201.07. Though a patent issued under a continuation process may result from many successive applications, the patent is deemed to have only one effective filing date: that of the earliest application. See Netscape Communications Corp. v. Konrad, 295 F.3d 1315, 1319 (Fed. Cir. 2002). In support of its estoppel argument, Lexmark offers two theories: 1) Cooper acquiesced to Examiner Chin's conclusions by ...


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