The Final Turn

• Author: Ronald K. Fierstein
• Profession: Lawyer on the team of litigators from the prestigious patent law firm of Fish & Neave
• Pages: 319-331

319

CHAPT ER 18

THE FINAL TURN

With at least a “presumptive” trial date in place, the next major obstacle

on the path to the courthouse was Kodak’s request for partial summary

judgment made in April 1979. This was critical because both parties knew

that if Kodak was successful, Polaroid would seriously have to question

the viability of its case at trial on the remaining patents, making a speedy

resolution of the litigation on terms favorable to Kodak very likely. The

motion was finally going to be argued to the court on September 19, 1980.

The essence of any summary judgment motion is that there are no

genuine issues of fact material to an adjudication of a claim that need to

be determined at a trial and that on the basis of those undisputed facts the

law requires a finding for the party seeking summary judgment. Kodak’s

argument was that Rogers’ invention merely involved putting together

elements from two earlier Polaroid patents, both issued in the name of

Land. Therefore, the court could rule that the Rogers patents were invalid

because they did not meet the patentability standard of being a discovery

that would not have been obvious to one of ordinary skill in the art.

In his rebuttal before Judge Zobel, Kerr had urged on behalf of Polaroid

that “there are two separate, distinct and fundamental reasons why Kodak’s

motion for partial summary judgment should be denied.” First, Kerr asserted

that there were genuine issues of material fact that could be decided “only by

a full-dress trial on the merits, during which the court will have the benefit of

live expert testimony, subject to thorough cross-examination. Indeed,” noted

Kerr, “a full array of such issues virtually leaps out of the voluminous papers

filed on this motion.” Second, Kerr urged the position that even if no genu-

ine issues of material fact existed, Kodak’s arguments “do not come close to

showing that the Rogers patents are invalid. On the contrary,” Kerr contin-

ued, “the totality of the papers before the court constitute a highly persuasive

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