stating “[c]ross motions are no more than a claim by each side that it alone is entitled to summary judgment, and the making of such inherently contradictory claims does not constitute ... that the losing party waives judicial ... determination whether genuine issues of material fact exist”
How later courts described this case
- stating “[c]ross motions are no more than a claim by each side that it alone is entitled to summary judgment, and the making of such inherently contradictory claims does not constitute ... that the losing party waives judicial ... determination whether genuine issues of material fact exist”
- holding that despite the “inherently contradictory claims” | presented by parties each arguing they are entitled to summary judgment, if any | genuine issues of material fact exist, they “must be disposed of by a plenary trial | and not on summary judgment.”
- “the making of such inherently contradictory claims [i.e., cross motions for summary judgment] does not constitute an agreement that if one is rejected the other is necessarily justified or that the losing party waives judicial consideration and determination whether genuine issues of material fact exist.”
- “Cross-motions are no more than a claim by each side that it alone is entitled to summary judgment, and the making of such inherently contradictory claims does not constitute ... that the losing party waives judicial ... determination whether genuine issues of material fact exist.”
Written by the judges who cited it.
The opinion
GERALD McLAUGHLIN, Circuit Judge
(dissenting).
In this patent case plaintiff sued defendant for infringement. Defendant moved for summary judgment on the ground that the patent is invalid and not infringed. It stated that “There is no genuine issue as to any fact material to disposition of this motion and defendant is believed entitled to judgment as a matter of law.” Appellant agrees that in such situation summary judgment procedure is correct practice. See Allen-Bradley Co. v. Air Reduction Co., Inc., 391 F.2d 282 (3 Cir. 1968). Supporting its motion re validity it presented the prior art cited by the Patent Office in the matter- together with prior art not cited by said Office. Plaintiff in his brief opposing a finding in favor of the defendant on said motion made the following affirmative statement concerning the use of summary judgment in this particular instance.
“While summary judgment is a difficult remedy to obtain in a patent case, we are in accord with its application here. As a result of defense counsel’s diligent research the Court has before it all of the necessary prior art to determine validity.” The trial judge properly construing plaintiff’s view as complete acceptance of the summary judgment procedure for determination of the base question as to the validity of the suit patent, proceeded to an exhaustive examination of the evidence thereon. His fundamental test for the granting of a design patent was that it “must be based upon invention of a new, original and ornamental design non-obvious to a person of ordinary skill in the art.” That is the sound teaching of Judge Kalodner’s opinion in R. M. Palmer Co. v. Luden’s, Inc., 236 F.2d 496 (3 Cir. 1956) which states the basic law here involved. The single claim of appellant’s patent consists of reference to the drawings of same which are the only descriptive specifications of the patent. After study of all the related prior art, which is presented at length in his opinion, the district judge concluded that the plaintiff merely combined elements which were all prior art; that plaintiff was most familiar with that prior art and by an ordinary designer’s regrouping of it came up with his pool design. The whole evidence plainly justifies the court’s holding.
Much of plaintiff-appellant’s briefs are devoted to a labored effort at denying that he had flatly conceded that “the Court has before it all of the necessary prior art to determine validity” and that therefore he was in accord with the use of the summary judgment procedure to so determine the all important question of validity of the patent. There is nothing now advanced in appellant’s briefs from which can be inferred a genuine fact controversy regarding the patent’s validity. The statutory presumption of validity is urged as a last resort but that falls as it should in the face of the impressive lack of the same *249 statute’s essentials for patentability. Clearly the appellant’s pool design is not new; it shows no skill that rises to invention; compared to the prior art it fails in any original inventive ornamentation.
Appellant, in asserting his afterthought contentions, would now have it that the holding below is contrary to Graham v. John Deere Co., 383 U.S. 1 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966). Actually, the district judge primarily relied upon that landmark decision for his findings in this appeal. In Graham, Mr. Justice Clark for the Court, laid down the fundamental principle that:
“While the ultimate question of patent validity is one of law, A. & P. Co. v. Supermarket Equipment Corp., supra, [ 340 U.S. 147 ] at 155 [ 71 S.Ct. 127, 131 , 95 L.Ed. 162 ], the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.”
The trial judge meticulously followed the above guidelines. He passed upon all of the prior art and ascertained the differences between the latter and the Rains patent. He resolved the level of ordinary skill in the pertinent art. Strictly observing the Graham requirements, he determined from all of the above that there were no non-obvious arrangements in the Rains pool, that there were no genuine facts at issue regarding the validity of the said patent. Appellant’s deliberate attempted repudiation of his carefully considered conclusion in his brief to the district judge that there were no true questions of fact on the validity issue, glaringly reveals how right he was the first time when he admitted that there were no genuine questions of fact in the validity issue and that the latter was properly before the court on motion for summary judgment.
I would affirm the judgment of the District Court.