A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Bifurcation

Willfulness is something of a bête noir in patent law. By any objective measure, it's all but irrelevant to damages. Although 284 technically allows for up to treble damages, in practice the odds of any enhancement, even if the jury finds that infringement was willful, are no better than 10-20%.

I made this image to go with a whole post I wrote before realizing Andrew had already done the opinion yesterday.  It ha snothing to do with today's post but do try and guess how this was going to work into a truly killer opening anecdote
I made this image to go with a whole post I wrote before realizing Andrew had already done the opinion yesterday. It ha snothing to do with today's post but do try and guess how this was going to work into a truly killer opening anecdote AI-Generated, displayed with permission

But of course, this is not the whole story. The prevailing theory is that it is to plaintiffs' advantage to present a willfulness case in order to cast the defendant as the conniving villain rather than merely a competing manufacturer of dryer sheets or what have you. If nothing else, it makes for a more compelling narrative. And so, the parties will often devote significant resources to keep this objectively marginal issue in or out of the case.

Should all defendant's efforts to slay the issue fail, the last line of defense is typically a motion to bifurcate the issue for trial. This used to be fairly common in the District, with Judge Robinson in particular being a famous proponent of bifurcating damages and willfulness, but it's employed less frequently in recent years.

Last week, Judge Williams denied ...

A Bifurcated Apple
AI-Generated, displayed with permission

Earlier this year Judge Hall bifurcated the upcoming patent trial in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.), keeping Apple's patent claims, the related invalidity and unenforceability defenses, and a portion of a Walker Process anti-trust counterclaim—but moving other claims to a later trial:

ORAL ORDER: Having held a case management conference on March 20, 2024, . . . IT IS HEREBY ORDERED that a 5-day jury trial is scheduled beginning October 21, 2024, with a pretrial conference scheduled for October 4, 2024 at 11:00 AM in courtroom 6D. The remaining claims and defenses in C.A. No. 22-1377 and C.A. No. 22-1378 shall be joined and/or bifurcated for trial such …

Density Column
AI-Generated, displayed with permission

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 …

Order
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,"...