Free Order on Motion for Summary Judgment - District Court of Delaware - Delaware

Case 1:04-cv—01373-KAJ Document 474 Filed 10/30/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
AMPEX CORPORATION, )
Plaintiff, g
v. g Civil Action No. O4-1373-KAJ
EASTMAN KODAK COMPANY, ALTEK g
CORPORATION, and CHINON )
INDUSTRIES, INC., )
Defendants. g
MEMORANDUM ORDER
I. Introduction
This is a patent infringement case. I have recently issued an opinion on claim
construction, to which one may refer for background information on the dispute.
(Docket Item ["D.I."] 472.) Presently I have before me a number of motions for
summaryjudgment, including cross—motions for summaryjudgment with respect to the
Defendants" charge that plaintiff, Ampex Corporation ("Ampex"), engaged in
inequitable conduct during the prosecution ofthe ‘121 patent. (D.l. 283; D.l. 291.)
Those cross-motions are the subject of this Memorandum Order.
ll. Standard of Review
Federal Rule of Civil Procedure 56 provides that summaryjudgment shall be
entered if "there is no genuine issue as to any material fact and the moving party is
entitled to judgment as a matter of law." The "availability of summaryjudgment turn[s]
‘Defendant Chinon Industries, Inc. was acquired by defendant Eastman Kodak
Company, through a subsidiary, and therefore no longer exists as a separate entity.
(D.l. 356 at 1 n.1.)

Case 1:04-cv—01373-KAJ Document 474 Filed 10/30/2006 Page 2 of 4
on whether a properjury question [has been] presented." Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 249 (1986). "[T]he judge‘s function is not himself to weigh the
evidence and determine the truth ofthe matter but to determine whether there is a
genuine issue for trial." Id. ln making that determination, one must draw all inferences
from the evidence in the non-moving parties’ favor. ld. at 255; Eastman Kodak Co. v.
Image Technical Services, Inc., 504 U.S. 451, 456 (1992).
III. Discussion
The combined six briefs the parties have filed on the cross-motions serve only to
support the observation that charges of inequitable conduct are particularly ill-suited to
resolution by summaryjudgment, because they often involve questions of intent and
materlality. "lf the facts of materlallty or intent are reasonably disputed, the issue is not
amenable to summary disposition." Baker Oil Tools, Inc. v. Geo Vann, Inc., 828 F.2d
1558, 1566 (Fed. Cir. 1987). The question of intent is especially problematic because,
intent being a subjective state of mind, the proof "requires the fact finder to evaluate all
the facts and circumstances in each case. Such an evaluation is rarely enabled in
summary proceedings? Paragon Podiatry Laboratory, Inc. v. KLM Laboratories,
Inc.,984 F.2d 1182, 1190 (Fed. Cir. 1993) (emphasis as quoted; quoting KangaROOS
U.S.A., Inc. v. Ca/don Inc., 778 F.2d 1571, 1577 (Fed. Cir. 1985); internal quotation
marks omitted).
Ampex argues in this case that, among other things, the additional prior art
Defendants point to is merely cumulative of that which was already before the examiner
(D.l. 284 at 2; D.l. 372 at 1), while Defendants, of course, take the opposite position.
2

Case 1:04-cv—01373-KAJ Document 474 Filed 10/30/2006 Page 3 of 4
(D.l. 365 at 2; D.l. 418 at 7.) Ampex also contends that the Defendants are seeking to
infer intent solely from the alleged materiality of the additional prior art (D.l. 372 at 25),
while Defendants say that there is additional evidence showing that the applicants for
the ‘121 patent had culpable intent (D.l. 418 at 12-13). In short, materiality and intent
are both hotly contested, and I cannot, on the present record, grant summaryjudgment
for either side.
Here, as sometimes happens, the parties have moved for summaryjudgment
when it is plain that neither side can meet the requirements of Rule 56. Indeed, in
opposing the Defendants’ motion for summaryjudgment of inequitable conduct, Ampex
listed thirty-seven questions which it characterized as "disputed issues of fact." (D.l.
372 at 27-29.) Then, inexplicably, it filed its own motion for summaryjudgment that
there was no inequitable conduct in the prosecution ofthe ‘121 patent. (D.l. 283.)
While the cross-motions are not perfectly overlapping, they overlap in so significant a
degree that it is hard to fathom why Ampex would argue, rightly, that there are
numerous factual issues associated with the inequitable conduct charge but then say in
the next breath that it should be granted summaryjudgment on that defense. Since
neither side can demonstrate the absence of disputed issues of material fact or
entitlement to judgment as a matter of law, the cross-motions are meritIess.2
2The parties in this case asked judicial assistance in interpreting dozens of claim
terms. While that invitation was largely declined, I did provide construction of several
terms as the foundation for deciding the parties' summaryjudgment motions and
bringing this matter to trial. (See D.l. 472.) In addition to their seven summary
judgment motions, the parties have briefed a dispute over the admissibility of expert
testimony, and, of course, motions in limine. Suffice it to say that, for everyone's sake,
the parties could usefully have foregone the filing of these cross-motions on inequitable
conduct
3

Case 1:04-cv—01373-KAJ Document 474 Filed 10/30/2006 Page 4 of 4
IV. Conclusion
Based on the foregoing reasons and authorities, it is hereby ORDERED that
Ampex’s motion for summaryjudgment that the ‘121 patent is not unenforceable due to
alleged inequitable conduct (D.l. 283) and the Defendants’ motion for summary
judgment of inequitable conduct (D.I. 291) are DENIED.
I .·’/ V
. 4 .4
_. I _ OV;
U, I D STATES DISTRICT UDGE
October 30, 2006 . [ lnnnl
Wilmington, Delaware
4