Opinion
Case No. EDCV 01-796 RT (SGx).
April 7, 2004
The court, Judge Robert J Timlin, has read and considered plaintiff/counter-defendant Alfa Leisure, Inc ("Alfa")'s motion for summary judgment on defendant/counter-claimant King of the Road ("KOR")'s affirmative defenses and counterclaims alleging that U.S. Patent No RE37,351 ("the '351 patent") is invalid, pursuant to Fed R Civ P Rule 56 ("Rule 56") The court has also considered the response of KOR, Alfa's reply, and Alfa's statement regarding KOR's genuine issues of fact Based on such consideration, the court concludes as follows
I. BACKGROUND
Alfa filed a complaint against KOR for patent infringement KOR filed an answer to Alfa's complaint and counterclaims Alfa filed a reply to the counterclaims. The court granted KOR's motion for leave to amend its answer and counterclaims to include an affirmative defense and counterclaim based on inequitable conduct
Alfa filed the instant renewed motion for partial summary judgment on the following affirmative defenses and counterclaims of KOR
1) The '351 patent is invalid under 35 U S C § 101,
2) The '351 patent is invalid under 35 U S C § 102(c), (d), (e), and (f),
3) The '351 patent is invalid under 35 U S C § 112,
4) Estoppel, and
5) Claims 1-67 of the '351 patent are invalid under 35 U S C § 102(a), (b), and (g)
KOR also filed a motion for summary judgment on the basis that the '351 patent is invalid under 35 U S C § 103, under the doctrine of obviousness
After a hearing pursuant to Markman v. Westview Instruments, Inc, 517 U S 370, 118 S Ct 1384 (1996) ("Markman hearing"), the court construed as a matter of law that the following terms were to be given their ordinary meanings "chassis", "chassis section", "first elevated section", and "first elevated chassis section"
II. KOR'S CONSENT TO DISMISSAL
In its response to the instant motion, KOR agrees that the discovery in this matter has not established the following affirmative defenses and counterclaims
1) The '351 patent is invalid under 35 U S C § 101,
2) The '351 patent is invalid under 35 U S C § 102(c), (d), (e), and (f),
3) The '351 patent is invalid under 35 U S C § 112,
4) Estoppel
KOR explicitly consents to the dismissal of these defenses and counterclaims The court, therefore, will grant Alfa's motion for partial summary judgment as to those affirmative defenses and counterclaims
III. ANALYSIS
A Standard Applicable to Cross Motions for Summary JudgmentWhen deciding cross-motions for summary judgment, a district court has the responsibility of examining the record to ensure that no disputed issues of fact exist, despite the parties' assurances to that effect Fair Housing Council of Riverside County, Inc v. Riverside Two, 249 F 3d 1132, 1136-37 (9th Cir 2001), Elsinore Christian Center v. City of Lake Elsinore, 291 F Supp 2d 1083, 1088 (C D Cal 2003) Although the district court has no obligation to "search through a voluminous record" for evidence of disputed facts, Nilsson, Robbins, Dalgarn, Berliner, Carson Wurst v. Louisiana Hydrolec, 854 F 2d 1538, 1545 (9th Cir 1988), the court still has a duty to review the evidence properly submitted in support of cross-motions for summary judgment to determine whether that evidence demonstrates a genuine issue of material fact Fair Housing Council, 249 F 3d at 1137 ("[A] simultaneous cross-motion is another means to bring to the district court's attention a controversy over the facts")
Here, the instant motion differs from KOR's motion for summary judgment as to the invalidity of the '351 patent, because where Alfa's motion is premised on adjudicating KOR's claims of invalidity under 35 U S C § 102 ("§ 102"), KOR's motion relies upon 35 U S C § 103 ("§ 103") Where § 102 focuses on the novelty requirement for patents, § 103 is concerned with the non-obviousness requirement Although the two motions are similar, they deal with entirely separate affirmative defenses and counterclaims, accordingly, they cannot be considered to be true cross-motions The court, therefore, will only consider the proposed uncontroverted facts submitted in conjunction with the instant motion
B Legal Standard for Summary Judgment Motions
Under Federal Rule of Civil Procedure 56 ("Rule 56"), a district court may grant summary judgment where "the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show 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 Supreme Court and the Ninth Circuit have established the following standards for consideration of such motions "If the party moving for summary judgment meets its initial burden of identifying for the court the portions of the materials on file that it believes demonstrate the absence of any genuine issue of material fact," the burden of production then shifts so that "the nonmoving party must set forth, by affidavit or as otherwise provided in Rule 56, `specific facts showing that there is a genuine issue for trial'"T W Elec Serv, Inc v. Pac Elec Contractors Ass'n, 809 F 2d 626, 630 (9th Cir 1987) (quoting Fed R Civ P 56(e), and citing Kaiser Cement Corp v. Fischbach Moore, Inc, 793 F 2d 1100 (9th Cir 1986), and Celotex Corp v. Catrett, 477 U S 317, 106 S Ct 2548 (1986)) With respect to the specific facts offered by the nonmoving party, the court does not make credibility determinations or weigh conflicting evidence, and is required to draw all inferences in the light most favorable to the nonmoving party See T W Elec Serv, 809 F 2d at 630-31 (citing Matsushita Elec Indus Co v. Zenith Radio Corp, 475 U S 574, 106 S Ct 1348 (1986))
Rule 56(c) requires entry of summary judgment "after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial" Celotex, 477 U S at 322, 106 S Ct at 2553 In order to defeat a motion for summary judgment, the plaintiff must present significant probative evidence tending to support the complaint See Rand v. Rowland, 154 F 3d 952, 963 (9th Cir 1998), T W Elec Serv, 809 F 2d at 630 The mere existence of a scintilla of evidence in support of the nonmoving party's position is insufficient "[T]here must be evidence on which the jury could reasonably find for the [nonmoving party]" Anderson v. Liberty Lobby, Inc, 477 U S 242, 252, 106 S Ct 2505, 2512 (1986) This court thus applies to either party's motion for summary judgment the same standard as for a motion for directed verdict "[W]hether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law" Id
In its brief "Statement of Genuine Issues of Fact re Plaintiff's Motion for Summary Judgment Dismissing Defendant's Affirmative Defenses and Counterclaims," KOR does not dispute any particular statement of fact by specifying which facts are controverted and stating the evidence showing such dispute, as required by Local Rule 56-2 Rather, KOR makes a blanket statement that there is a genuine issue of fact as to "[w]hether claims 1-67 of the patent-in-suit are invalid pursuant to 35 U S C § 102(a), (b), or (g)
In addition, Local Rule 56-3 states that
[i]n determining any motion for summary judgment, the Court will assume that the material facts as claimed and adequately supported by the moving party are admitted to exist without controversy except to the extent that such material facts are (a) included in the "Statement of Genuine Issues" and (b) controverted by declaration or other written evidence filed in opposition to the motion (emphasis added)
Because KOR did not dispute any particular fact, as submitted by Alfa in its statement of uncontroverted facts, all facts submitted and properly supported by admissible evidence are deemed to be admitted
As to the counterclaim and affirmative defense asserting that claims 1-67 of the '351 patent are invalid under 35 U S C § 102 (a), (b), and (g), Alfa has met its burden of identifying from the evidentiary materials that there is an absence of any genuine issues of material fact as to the subject affirmative defense and counterclaim As stated, KOR has not set forth any probative evidence creating any genuine issue of material fact for trial
Issued patents enjoy a presumption of validity Medical Instrumentation and Diagnostics Corp v. Elekta AB, 344 F 3d 1205, 1220 (Fed Cir 2003), Schumer v. Lab Computer Sys, 308 F 3d 1304, 1315-16 (Fed Cir 2002) The '351 patent, therefore, is presumed valid unless KOR produces evidence establishing its invalidity Here, where KOR challenges the validity of the '351 patent under 35 U S C § 102(a), (b), and (g), it must come forward with evidence of a prima facie case of invalidity Kaufman Co, Inc v. Lantech, Inc, 807 F 2d 970, 974 (Fed Cir 1986) It has not done so Consequently, the court concludes as a matter of law that Alfa's motion for partial summary judgment on KOR's affirmative defense/counterclaim that the '351 patent is invalid under 35 U S C § 102(a), (b), and (g) should be granted
IV. DISPOSITION
ACCORDINGLY, IT IS ORDERED THATPlaintiff/counter-defendant Alfa's renewed motion for partial summary judgment on defendant/counter-claimant KOR's affirmative defenses/counterclaims that
1) the '351 patent is invalid under 35 U S C § 101,
2) the '351 patent is invalid under 35 U S C § 102(c), (d), (e), and (f),
3) the '351 patent is invalid under 35 U S C § 112,
4) Alfa cannot enforce the '351 patent due to estoppel, and
5) the '351 patent is invalid under 35 U S C § 102(a), (b), and (g) is GRANTED