Judge Williams Denies Motion to Bifurcate Trial into Contract and Patent Infringement Phases

November 11, 2022

Publication| Intellectual Property

In Victaulic Company v. ASC Engineered Solutions, LLC, No. 20-887-GBW (Oct. 3, 2022), Judge Williams denied the defendant’s request under Fed. R. Civ P. 42(b) first to try the parties’ contract dispute and separately to try their patent infringement dispute later only if needed.  The plaintiff alleged that the defendant manufactured products that fell outside the scope of a license made as part of a settlement agreement and therefore infringed the asserted patent. 

Judge Williams found that bifurcation would neither conserve judicial resources nor simplify the case.  The defendant argued that a judgment in its favor on its contract claims could eliminate the need for some or all of the patent infringement claims.  But the court found that overlapping technical explanations from each side would likely be required for both the contract and patent claims.  In addition, the court noted that each side’s fact and expert witnesses would likely overlap, and splitting the trials would create issues of admissibility not present if all issues were tried together.  Finally, the defendant failed to persuade the court that trying the patent issues would prejudice the trial of the defendant’s contract defenses, since Judge Williams concluded that (if needed) the jury could be instructed to set aside its consideration of certain evidence for certain purposes.  Judge Williams thus exercised his discretion not to bifurcate trial of the disputes in this action.

The decision is available here.     

Key Point:  Although Judge Williams chose not to bifurcate trial here, in the unrelated case of Board of Regents v. Boston Scientific Corp., No. 18-392-GBW (Oct. 6, 2022), Judge Williams has asked the parties to confer as to whether trial of willfulness and damages should be bifurcated from trial of infringement and invalidity, since the court denied a motion for summary judgment of no willfulness but noted that it was “close.”

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