United States District Court, N.D. Illinois, Eastern Division
LEROY G. HAGENBUCH, Plaintiff,
SONRAI SYSTEMS, Defendant.
MEMORANDUM OPINION AND ORDER
THOMAS M. DURKIN, District Judge.
LeRoy G. Hagenbuch has sued defendant Sonrai Systems ("Sonrai") for allegedly infringing U.S. Patent No. 5, 644, 489 (the "489 Patent") and U.S. Patent No. 5, 416, 706 (the "706 Patent") (collectively, "Patents-in-Suit"). R. 1. Sonrai has moved for summary judgment, arguing that the Patents-in-Suit expired on June 13, 2006 pursuant to a terminal disclaimer filed in a parent application of the Patents-in-Suit. For the following reasons, the Court grants Sonrai's motion for summary judgment.
Hagenbuch is the inventor and owner of numerous patents. R. 1 ¶¶ 2, 11, 14. The Patents-in-Suit relate to certain types of material collection systems. R. 1 ¶¶ 15, 14; see also R. 1-2. The Patents-in-Suit arose from a series of "continuation applications" stemming from U.S. Application Serial No. 08/102, 531 (the "531 Application") (issued as U.S. Patent No. 5, 327, 347 (the "347 Patent")). See infra Part II. The 531 Application itself was the result of a string of "file wrapper" continuations under then 37 C.F.R. § 1.62 ("Rule 62"). A file wrapper continuation under Rule 62 had the effect of abandoning the previous application but importing all of the contents from that previous application, including the prosecution history, into a new application. Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 204 F.3d 1368, 1371 n.1 (Fed. Cir. 2000) ("[A] 37 C.F.R. § 1.62 (1995) Rule 62 continuation application required the application to utilize the file wrapper and contents of the prior application.'") (quoting 37 C.F.R. § 1.62(e)). When an applicant filed a file wrapper continuation, the application received a new application number. See In re Bogese, 303 F.3d 1362, 1364 (Fed. Cir. 2002). In this case, the 531 Application was originally U.S. Application Serial No. 351, 179 ("179 Application").
The patent system only permits a single patent to be granted for a single invention. In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997). If a patent examiner suspects that an inventor is trying to extend the monopoly of a previous patent by filing a new patent with similar claims, he will reject the application for "obviousness type double-patenting." Id. During the prosecution of the 179 Application, Hagenbuch faced an "obviousness type double-patenting rejection" in light of his previous patent, U.S. Patent No. 4, 839, 835 (the "835 Patent"). R. 40 ¶ 2. One of the ways to cure an obviousness type double-patenting rejection is to file a terminal disclaimer under 35 U.S.C. § 253 during the prosecution of the patent. In re Longi, 759 F.2d 887, 894 (Fed. Cir. 1985). A terminal disclaimer disclaims any period of time after the expiration of the previous patent, meaning that the current patent will expire at the same time as the previous patent. See 37 C.F.R. § 1.321(b). In response to the rejection, Hagenbuch filed a terminal disclaimer modeled on the 1993 MPEP's form disclaimer:
I hereby disclaim the terminal part of any patent granted on the above-identified application, which would extend beyond the expiration date of the full statutory term of United States Patent No. 4, 839, 835....
R. 33-15 at 2 (emphasis added). Hagenbuch abandoned the 179 application, filed then abandoned another Rule 62 application (Application No. 964, 126 ("126 Application")), then filed the 531 Application. During the prosecution of that application, the examiner reinstated the double-patenting rejection because the disclaimer in the parent application "was worded in such that it did not apply to any subsequently filed applications claiming benefit under 35 U.S.C. § 120." R. 33-16 at 3. The examiner added that "upon receipt and approval of the new terminal disclaimer, this application can be placed in a condition for allowance." Id. at 4. Hagenbuch then filed a new disclaimer:
I hereby disclaim the terminal part of any patent granted on the above-identified application or any continuation of it under 35 U.S.C. subsection 120, which would extend beyond the expiration date of the full statutory term of United States Patent No. 4, 839, 835 and hereby agree that any patent so granted on the above-identified application or continuation of it shall be enforceable only for and during such period that the legal title to the patent shall be the same as the legal title to United States Patent No. 4, 839, 835. I understand that this agreement runs with any patent granted on the above-identified application or continuation of it and that it is binding upon the grantor, its successors or assigns.
R. 38 ¶ 8 (emphasis added). The USPTO issued a notice of allowance approximately a month after Hagenbuch filed the terminal disclaimer without any further remarks from the examiner. R. 37-1 at 15-16. The 531 Application issued on July 5, 1994 as U.S. Patent No. 5, 327, 347 (the "347 Patent"). R. 33-2.
Summary judgment is appropriate if "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a); see Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). To defeat summary judgment, the non-moving party must produce more than a "mere scintilla of evidence, " meaning "evidence on which [a] jury could reasonably find for the non-moving party." Harris N.A. v. Hershey, 711 F.3d 794, 798 (7th Cir. 2013) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986)). In ruling on the motion, the Court considers the entire evidentiary record and "view[s] all facts and draw[s] all inferences in the light most favorable to the non-moving party." Ball v. Kotter, 723 F.3d 813, 821 (7th Cir. 2013); Egan Marine Corp. v. Great Am. Ins. Co., 665 F.3d 800, 811 (7th Cir. 2011).
Sonrai argues that the terminal disclaimer in the 531 Application applies to the Patents-in-Suit, causing them to expire when the 835 Patent expired on June 13, 2006. If so, the Patents-in-Suit are unenforceable. See 35 U.S.C. § 286 ("Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action."). Hagenbuch argues that the terminal disclaimer applies only to the patent that issued from the 531 Application (i.e., the 347 Patent). R. 37 at 3. If so, his lawsuit ...