The opinion of the court was delivered by: CONABOY
We consider here Defendant's motion for summary judgment. For the reasons stated, it will be denied.
By complaint filed March 22, 1985 the Plaintiff claims to be the owner of a number of patents on a "class of compounds" which are designed to absorb a wide band of infrared rays and are used in a variety of lenses in several different ways. The Plaintiff further claims the Defendant has infringed and continues to infringe upon these patents and seeks to enjoin further infringement and to recover damages, costs and attorney's fees.
While other numbered patents are referenced throughout this case, we are concerned here primarily with U.S. Letters Patent No. 3,251,881, issued March 17, 1966; U.S. Letters Patent No. 3,575,871, issued April 20, 1971; U.S. Letters Patent No. 3,484,467, issued December 16, 1969; and U.S. Letters Patent No. 3,670,025, issued June 13, 1972. They are hereinafter referred to as '881, '871, '467 and '025.
The Defendant, in response, argues that the claims under '871 are subject to a statutory bar of a French Patent previously issued on the same invention, and that the claims under '467, '871 and '025 are invalid on account of double patenting or extension of the monopoly of '881 which expired May 17, 1983.
Defendant argues further that because there are no operable facts in dispute, that it is entitled to judgment as a matter of law as to these claims.
On the issue of infringement and validity, both sides agree the issue of patent infringement is a question of fact, Ziegler v. Phillips Petroleum Co., 483 F.2d 858, 867 (5th Cir.) cert. denied, 414 U.S. 1079, 94 S. Ct. 597, 38 L. Ed. 2d 485 (1973), while the ultimate question of patent validity is one of law, Bird Provision Co. v. Owens Country Sausage, Inc., 568 F.2d 369 (5th Cir. 1978). Even when the ultimate issue is a legal one, the conclusions of law must be based on the result of several factual inquiries. See, e.g., Graham v. John Deere Company of Kansas City, 383 U.S. 1, 17, 86 S. Ct. 684, 693, 15 L. Ed. 2d 545 (1966); Control Components, Inc. v. Valtek Inc., 609 F.2d 763, 766 (5th Cir. 1980); Parker v. Motorola, Inc., 524 F.2d 518, 531 (5th Cir. 1975), cert. denied, 425 U.S. 975, 96 S. Ct. 2175, 48 LEd. 2d 799 (1976). See also Studiengesellschaft Kohle v. Eastman Kodak Co., 616 F.2d 1315 (1980).
On the issue of double patenting or illegal continuation, the first question in the analysis is: Is the same invention being claimed twice? 35 U.S.C. § 101 prevents two patents from issuing on the same invention. See, e.g., In re Boylan, 392 F.2d 1017, 55 CCPA 1041 (1968). As we have said many times, "invention" here means what is defined by the claims, whether new or old, obvious or unobvious; it must not be used in the ancient sense of "patentable invention," or hopeless confusion will ensue. By "same invention" we mean identical subject matter. Thus the invention defined by a claim reciting "halogen" is not the same as that defined by a claim reciting "chlorine", because the former is broader than the latter. On the other hand, claims may be differently worded and still define the same invention. Thus a claim reciting a length of "thirty-six inches" defines the same invention as a claim reciting a length of "three feet," if all other limitations are identical. . . . A good test, and probably the only objective test, for "same invention," is whether one of the claims could be literally infringed without literally infringing the other. If it could be, the claims do not define identically the same invention. This is essentially the test applied in In re Eckel, 393 F.2d 848, 55 CCPA 1068 (1968).
If the same invention is not being claimed twice, a second question must be asked. The second analysis question is: Does any claim in the application define merely an obvious variation of an invention disclosed and claimed in the patent?
If the answer to the second question is no, there is no double patenting involved and no terminal disclaimer need be filed. If the answer is yes, a terminal disclaimer is required to prevent undue timewise extension of monopoly. Application of Vogel, 57 C.C.P.A. 920, 422 F.2d 438 (1970).
On the motion, as such, we point out that in order for a moving party to prevail on a motion for summary judgment, he must show (a) that there is no genuine issue as to any material fact, and (b) that he is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); See Wright & Miller, Federal Practice and Procedure: Civil Section 2712. Thus the Court cannot try issues of fact on a Rule 56 motion, but only is empowered to determine whether there are issues to be tried. Janek v. Celebrezze, 336 F.2d 828 (3d Cir. 1964). Finally, in determining whether an issue of material fact does exist, all inferences must be drawn against the moving party. See 6 Moore's Federal Practice para. 56.04.
Gleaned from the submissions, the briefs and oral argument, the parties' respective positions are as follows:
The '881 patent is directed to a class of procursor compounds whose immediate and ultimate derivatives are claimed in the '025 and '467 patents, respectively. The '871 patent in turn covers methods of using, or compositions of matter containing, these derivatives. The '881 patent discloses no utility for the compounds claimed therein except in the preparation of the infrared absorbers claimed in the '467 patent in suit or in the '769 patent also owned by plaintiff. This disclosure of utility did not constitute a separate invention, but was the sine qua non for patentability of the intermediates.
The infrared-absorbing properties of the aminium and diimonium salts derived from the amino compounds claimed in the '881 patent were, in the words of the court in In re Higgins, "the properties and characteristics on which patentability was premised". They were therefore "an essential part of the invention claimed" in the '881 patent. Plaintiff now relies on these very same properties to support the continued enforcement of the '467, '871 and '025 patents, thereby allowing it to dominate the only disclosed use of the compounds claimed in the expired '881 patent and thus extend the monopoly of that ...