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 now could possibly obviate the need for a five-day trial a few months later. But this is far from demonstrating that bifurcation would conserve judicial resources. Indeed, after hearing oral argument, the Court reasonably anticipates that both parties would proffer lengthy explanations of the underlying technology to each jury in a bifurcated trial-especially in light of both ASC and Victaulic using a large portion of oral argument to explain the underlying technology to the Court. . . . Since the parties' requested trial lengths and product explanations suggest substantial overlap between the contract and patent issues, bifurcation is unlikely to conserve judicial resources.
The Court was also surprised that the defendant did not dispute the idea that the evidence in the two trials would overlap, as the juries would have to consider the patent issues in the license trial to determine whether the license covered the accused products:
[A]s Victaulic explained during oral argument, bifurcation would not reduce the number of fact or expert witnesses it would need to call at either stage of trial. Rather, nearly all of Victaulic's fact witnesses and its primary expert witness testifying at the first trial would be called-and would provide overlapping testimony-at the second jury trial. . . . Surprisingly, ASC did not dispute Victaulic's position about the need for many overlapping fact and expert witnesses and did not commit to any substantial reduction in witnesses or documentary evidence itself if the Court granted bifurcation. See Tr. of Sept. 28, 2022 at 42 ("disagree[ing]" with the "scope of overlap" only as to allegations of copying and the "origins of the [Accused] [P]roducts" ). Moreover, bifurcation may not obviate the need to discuss the '796 patent while trying ASC's contract claims. In fact, because the definition of "Anvil Product" references "Victaulic's patented structural features," and the '796 patent is defined as a "Victaulic U.S. Patent" in the Settlement Agreement . . . , Victaulic insists that it will need to discuss the '796 patent during trial of ASC's contract claims.
The Court also found that—obviously—two separate trials is a lot more work for the parties and the Court, especially where the defendant wanted the first trial earlier:
The parties . . . would need to engage in substantially more work to prepare witnesses, create trial strategies, organize and produce documents, and undertake the innumerable tasks necessary to prepare for a well-run trial. The Court does not see fit to impose the accelerated burden upon the parties (or upon itself) without a meaningful opportunity to save judicial resources or simplify jury issues. Again, the parties both demonstrated that the Court's savings here would be limited, at best.
Finally, the Court held that the defendant would not be prejudiced by having the jury consider its license defense at the same time as the patent infringement issues, as juries are regularly instructed to "set aside their biases and resolve thorny factual questions." It denied the motion to bifurcate.
There Are Multiple Kinds of Bifurcation—Maybe This Was the Not the Best One
It looks like what the defendants were originally trying to do was get a bench trial on the license and contract interpretation issues, and then have the jury trial on infringement.
That fell through because—shocker!—plaintiff was unwilling to waive it's right to a jury trial. At that point, defendant was left simply asking for two trials with two different juries.
It's worth keeping in mind that there are at least three different ideas that people may mean when they say "bifurcation" (or "trifurcation," etc):
- Discovery and a jury trial on issue 1, followed by discovery and a jury trial on issue 2.
- Discovery on all issues, followed by a jury trial on issue 1, and a separate jury trial if needed on issue 2.
- Discovery on all issues, followed by a trial where the jury first addresses issue 1 and then, if necessary, the same jury addresses issue 2.
Here, it looks like the defendants asked for "bifurcation" in the sense of number 2 above, where one jury (or the Court) addresses their license defense, and then another jury addresses the patent issues.
Given that the Court found that the testimony would overlap—which the defendants did not dispute—they may have been better off asking for bifurcation variety number 3 above. Having the same jury address both issues in sequence, during a single trial, may have been an easier sell than forcing multiple separate trials with repeated trial prep, repeated evidence, and repeated witnesses offering the same testimony.
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