A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Bifurcation

Density Column
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Earlier this month, Judge Williams denied a defendant’s motion to bifurcate a second patent trial in Cirba, Inc. et al v. VMware, Inc., C.A. 19-742, D.I. 1623 (D. Del. Mar. 7, 2023) (oral order). In that case, the patentee had won an initial victory at trial, but the Court later granted a motion for a new trial based on evidentiary issues.

The defendant moved to stay the second trial because nearly all of the patents at issue had been found invalid—or were in danger of being found invalid—during a pending re-exam proceeding. The parties finished briefing, but the Court has not yet ruled or heard oral argument on the motion to stay. …

Un-bifurcated (but probably not worth $42m)
Un-bifurcated (but probably not worth $42m) AI-Generated, displayed with permission

We wrote in December about how Judge Williams granted defendant's motion to bifurcate the jury trial in Board of Regents, the University of Texas System v. Boston Scientific Corp., C.A. No. 18-392-GBW (D. Del.).

That trial went forward starting last week, and the trial extended into this week. As we mentioned before, Judge Williams split the trial into two phases:

  1. Direct infringement and invalidity
  2. Willful infringement, damages, knowledge, and intent for induced infringement

Near the conclusion of Phase 1, plaintiff moved to "unbifurcat[e]" the trial. According to the transcript:

MR. SHORE [for plaintiff]: Your Honor, we would like for the Court to consider over the weekend, not …

Kiwi Split in Half
engin akyurt, Unsplash

In Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-RGA-MPT (D. Del.), the defendant brought counterclaims asserting their own four patents, in addition to the three originally asserted by the plaintiff.

During fact discovery, the plaintiff filed an FRCP 12(c) motion for judgment on the pleadings under § 101. Defendant pushed back, arguing that the motion was untimely—both because it was filed two years into the case (i.e., it was too late), and because of "the Court’s general disfavor of multiple rounds of dispositive motions" (i.e., it was too early). D.I. 115 at 1.

The plaintiff argued that its motion was timely, as FRCP 12(c) just requires the motion to be filed …

We'll just handle this part first...
We'll just handle this part first... Diliara Garifullina, Unsplash

I always think it's worth paying attention to how the judges handle the presentation of evidence at trial, changes that may seem small (like bifurcation) can have a big impact on how the trial actually goes. A bifurcated trial can obviously lead to a much shorter trial, if the defendant prevails on the first phase. But even if it doesn't, bifurcation really impacts the kinds of trial themes that the plaintiff can put up, for example making it harder to paint the defendant as a bad actor from the start.

Judge Williams recognized that effect earlier this month in his order granting bifurcation of a patent trial—and suggested that restricting plaintiff from presenting those themes favors bifurcation:

The Court finds that a reduction in prejudice to BSC weighs in favor of bifurcation. [Defendant] BSC argues that [plaintiff] UT is " likely to tell a story" that UT " got an important patent and told [BSC] about their technology; [BSC] was greedy, intentionally stole the invention," and profited therefrom; and UT "got nothing." D.I. 248 at 10. That story, BSC argues, has nothing "to do with the objective question of whether the [Accused Products] meet[] all the limitations" of the Asserted Claims of the '296 patent . . . or whether the patent is invalid." Id. UT does not challenge BSC's description of UT's likely trial narrative. . . . Rather, UT argues, the need to present a piecemeal case to the jury will prejudice UT. Id.
. . . UT's description of BSC's alleged willful infringement could encourage a jury to find that BSC infringed the '296 patent for reasons unrelated to a comparison of the Accused Products to the Asserted Claims. The Court also [previously] found that "UT's evidence of post-suit willfulness is limited." . . . That finding increases the risk that UT's willfulness evidence could bias the jury's infringement and invalidity decisions. . . . When the Court weighs the risk of prejudice to BSC against the ability to mitigate that prejudice (e.g., through a jury instruction), the Court finds that the potential to reduce prejudice to BSC weighs in favor of bifurcation.

That's interesting, because (obviously) parties very often try to ...

"Your honor, it's like the movie Groundhog Day, but we're repeating a trial..." AI-Generated, displayed with permission

Judge Williams issued a decision on Monday denying a motion to bifurcate a patent case, rejecting bifurcation where it would increase the total time by three days and involve repeating the same evidence.

The defendant moved bifurcate a five-day patent trial into a three-day jury trial on license issues and then, if necessary, a separate five-day trial on infringement.

The Court did not seem eager to sign up for a three-day trial with a significant risk of a second full trial later—especially one that repeats the same explanations of the technology:

The crux of ASC's position is that a two-day reduction in trial …

Brett Jordan, Unsplash

Yesterday, Chief Judge Connolly issued new form scheduling orders for non-Hatch Waxman patent cases.

As always, they are worth reviewing in full, but here are some of the highlights.

Phased Trials

First and foremost, in cases where infringement is alleged, the new form scheduling order defaults to a phased trial with infringement first:

26. Willfulness and Damages. Unless otherwise agreed to by the parties and the Court, the trial will be phased such that the issues of willful infringement and damages will be tried only if there is a finding of infringement.

We noted back in February that Judge Connolly had done this in one trial, and we wondered if it might become a trend. Turns …

Bifurcated Cake
Henry Be, Unsplash

Bifurcation into liability and damages phases used to be common, with former Judge Robinson often splitting liability and damages, at one point saying that “bifurcation is appropriate, if not necessary, in all but exceptional patent cases.” Dutch Branch of Streamserve Dev. AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, 2009 U.S. Dist. LEXIS 76006, at *2 (D. Del. Aug. 26, 2009).

These days, bifurcation still happens here, but it is a bit less common than it was back then.

Earlier this month, though, Chief Judge Connolly raised bifurcation in a way I hadn't heard of, suggesting that the parties split infringement from invalidity and other issues, with jury deliberations in between:

At …

In a recent order, Judge Stark ruled that evidence of willfulness would come in during the liability phase of a jury trial in which liability and damages are being tried separately. The ruling was one of several issued in the lead up to the June jury trial in Sunoco Partners Marketing & Terminals L.P. v. Powder Springs Logistics, LLC, C.A. No. 17-1390-LPS.

In his ruling, Judge Stark noted that "[t]he Court's interest in conservation of resources disfavors Defendants' request,"...

Artists rendition of the author patiently awaiting the return of jury trials
Artists rendition of the author patiently awaiting the return of jury trials We Don’t Deserve Dogs, Marten Bjork, Unsplash

This week brought to light yet another unexpected side effect of COVID-19 -- it's now harder to win a motion to bifurcate.

This interesting tidbit came to light in Judge Hall's opinion in Evertz Microsystems Ltd. v. Lawo Inc., C.A. No. 19-302, D.I. 259 (D. Del. Feb. 23, 2021). The defendant there moved to bifurcate the infringement and damages cases into separate trials near the close of fact discovery. In denying the motion, Judge Hall noted that the prejudice to the plaintiff, and strain on the Court, of holding two separate trials was greater than it would normally be because it was unlikely the second trial could be scheduled for years:

As the parties both know, this Court currently has an extremely congested docket. It would be difficult to schedule an additional trial in this action; thus, Evertz would likely have to wait additional years to have full resolution of its claims.

Id. at 3.

Its also worth noting that Judge Hall called out the "fairly litigious" nature of the case, with the parties "raising numerous discovery disputes before the Court" leading to concerns that "bifurcating and staying the issue of damages will result in (1) duplicate discovery requests and disputes as those already resolved and (2) new disputes over what is appropriately part of the liability phase versus the damages phase" that would further tax the Court." ...