Victaulic Company v. Anvil International, LLC
MEMORANDUM ORDER: An Oral Argument is set for 9/28/2022 at 3:00 PM in Courtroom 6B regarding 258 Motion for Bifurcation. Signed by Judge Gregory B. Williams on 9/19/22. (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
Civil Action No. 20-887-GBW
ASC ENGINEERED SOLUTIONS, LLC,
On July 21 , 2022, Defendant ASC Engineered Solutions ("ASC") filed a Motion for
Bifurcation ohhis action ("the Motion"). D.I. 258. ASC has proposed that, before the Court tries
patent infringement, invalidity, and damages to a jury, the Court should first try several of ASC ' s
contract-related defenses to a jury or via a bench trial: (1 ) ASC ' s counterclaim that "seeks a judicial
declaration that all of [Defendant] Victaulic [Company ' s ("Victualic")] patent infringement
claims are barred by the license grant or the covenant not to sue, or both, under the" Settlement
and License Agreement, Release, and Covenant Not to Sue between the parties to this suit-and
related corporations-with an effective date of October 12, 2016 (the "Settlement Agreement,"
D.I. 22, Ex. A.); (2) ASC ' s defense "that this suit is barred by the Settlement Agreement"; and (3)
ASC ' s counterclaim that Victaulic breached the Settlement Agreement when it brought this suit.
See D.I. 259 at 4. Victaulic opposes bifurcation on efficiency and fairness grounds. D.I. 261 at 2.
ASC has requested oral argument as to the Motion. D.I. 265 .
The Settlement Agreement selects Delaware law. D.I. 22, Ex. A § 11.5. Under Delaware
law, "[t]he proper interpretation of language in a contract, while analytically a question of fact, is
treated as a question oflaw . . . ." Stone v. Nationstar Mortg. LLC, 2020 WL 4037337, at *5 (Del.
Ch. July 6, 2020) (internal quotation marks and citation omitted). The Settlement Agreement
grants ASC a license to sell "any Anvil Product" worldwide. D.I. 22, Ex. A§§ 1, 2.6. Victaulic
also agrees not to sue ASC "in connection with the manufacture, use, offer to sell, sale, importation
or other disposition of any Anvil Product [worldwide] ... during" the life of, among others, U.S.
Patent No. 7,712,796 ("the ' 796 patent"). Id at §§ 1, 2.5, 9.1. The ' 796 patent is now "the sole
patent-in-suit." D.I. 259 at 1. "Anvil Product" is defined as follows:
Anvil International' s SlideLOK couplings of all current (and future sizes which are
scaled versions of current sizes) as listed in and illustrated by the drawings in
Schedule A . . . (the "Listed Couplings"), including variations thereof, such
variations including, updates or improvements thereto and future versions or
revisions thereof .. . ; provided that such variations do not: (a) result in a coupling
that is more than colorably different from the Listed Couplings relative to
Victaulic' s patented structural features, appearance, functionality, or method of
assembly; or (b) result in a coupling that is the same as, or only colorably different
from, the Current Victaulic Couplings relative to Victaulic' s patented structural
features, appearance, functionality, or method of assembly.
D.I. 22, Ex. A§ 1. The Court has not yet provided a final interpretation of "Anvil Product." See
Tr. ofHr' g of Dec. 17, 2021, at 48 :20--49:6 (discussing the possibility that the Court would need
to consider extrinsic evidence because the parties "didn't have a meeting of the minds").
On November 18, 2020, the Court scheduled a final pretrial conference for September 28,
2022 at 3:00 PM. D.I. 31. After the completion of claim construction (D.I. 124) and fact discovery
(D.I. 259 at 1), the denial of an early motion for summary judgment (D.I. 110) on the contract
issues (D.I. 259 at 1), and the submission of the parties' pretrial order (D.I. 269) and proposed jury
instructions (D.I. 270; D.I. 271 ; D.I. 272; D.I. 273 ; D.I. 274), this case was reassigned to Judge
Gregory Williams on September 7, 2022. Pending now are Victaulic' s three Motions for Summary
Judgment (D.I. 193 ; D.I. 197; D.I. 201 ), ASC 's Motion to Exclude certain opinions ofVictaulic' s
expert witnesses (D.I. 212), the Motion, and pretrial matters (e.g. , D.I. 269; D.I. 270).
The Court cannot address the parties' outstanding motions and be prepared to resolve
outstanding pretrial issues by September 28, 2022. Instead, the Court will use this time to hear
oral argument on ASC ' s Motion. The Court asks that the parties come prepared to discuss a twopart trial in which one jury shall consider contract issues and another jury, if necessary and sitting
later, shall consider patent infringement, invalidity, and damages.
To assist the Court in its review of the Motion, the Court asks that ASC provide letter
briefing of no more than three (3) pages on the definition of "Anvil Product" by 5:00 PM on
Wednesday, September 21 , 2022. The letter briefing shall (1) specify a proposed definition of
"Anvil Product" that the Court would use to instruct the jury, (2) provide citations to case law and
the docket in support of the proposed definition, (3) explain whether, and, if so, why, the Court
must consider extrinsic evidence to construe the definition, and (4) explain whether the Court must
incorporate language from the ' 796 patent into its definition. Victaulic shall provide responsive
letter briefing of no more than three (3) pages by 5:00 PM on Friday, September 23 , 2022 that
includes its own proposed definition, addresses the same topics, and responds to ASC ' s briefing.
The parties shall provide three (3) paper courtesy copies of any briefing and cited docket entries
that are pertinent to the Court's review thereof.
WHEREFORE, at Wilmington this 19th day of September 2022, IT IS HEREBY
ORDERED that the parties shall appear on September 28, 2022 at 3 :00 PM in Courtroom 6B for
oral argument on ASC ' s Motion for Bifurcation (D.I. 258) and that the parties shall provide letter
briefing to the Court on the topics and in accordance with the sche
e set forth above.
UNITED STATES DISTRICT JUDGE
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