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