Abbott Biotechnology Ltd.

Filing 422

Judge F. Dennis Saylor, IV: ORDER entered. MEMORANDUM AND ORDER. The motion of defendant Centocor Ortho Biotech, Inc., tobifurcate the trial is DENIED. (Maynard, Timothy)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
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ABBOTT BIOTECHNOLOGY LTD. and
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ABBVIE INC.,
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Plaintiffs,
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v.
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CENTOCOR ORTHO BIOTECH, INC.,
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Defendant.
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_______________________________________)

Civil Action No.
09-40089-FDS

MEMORANDUM AND ORDER ON
MOTION TO BIFURCATE
SAYLOR, J.
This is a patent dispute involving pharmaceutical products used to treat certain
autoimmune diseases. Plaintiffs Abbott Biotechnology Ltd. and AbbVie Inc. (collectively
“Abbott”) seek a judgment that the drug Simponi, manufactured by defendant Centocor Ortho
Biotech, Inc., infringes its patents to the extent that it is used with the drug methotrexate to treat
rheumatoid arthritis.1 Centocor seeks declarations of non-infringement and invalidity of
Abbott’s patents.
Centocor has moved to separate the issue of willfulness from the larger infringement
dispute by bifurcation of the upcoming trial between the parties.2 For the reasons set forth

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During the pendency of this litigation, Abbott Laboratories changed its name to AbbVie Inc.
Accordingly, the case caption has been altered.
2

Centocor has also renewed an earlier motion for summary judgment on the issue of willfulness. The Court
recognizes that disposing of the summary judgment motion could moot the motion for bifurcation. However,
because the bifurcation issue implicates trial scheduling and requires a briefer analysis, the Court will address it first.

below, the motion to bifurcate will be denied.
I.

Background
Abbott initiated this action against Centocor in May 2009. In April 2014, the Court

denied Centocor’s motions for summary judgment. Centocor filed a renewed motion for
summary judgment on the issue of willful infringement in August 2014, moving in the
alternative for bifurcation of trial on that issue. The Court heard argument on these and other
motions on October 16, 2014.
II.

Discussion
Pursuant to Fed. R. Civ. P. 42(b), the question of bifurcation is wholly within this Court's

discretion. See Data Gen. Corp. v. Grumman Sys. Support Corp., 795 F. Supp. 501, 503 (D.
Mass. 1992), aff’d, 36 F.3d 1147 (1st Cir. 1994), abrogated on other grounds by Reed Elsevier,
Inc. v. Muchnick, 559 U.S. 154 (2010). Separation is “not to be routinely ordered.” Id. (citing
Advisory Committee Note to the 1966 amendment of Rule 42(b)).
Defendant contends that bifurcation is necessary to avoid jury confusion and waste of
time, principally because a willfulness inquiry raises questions of defendant’s subjective intent
that are not otherwise relevant. Absent bifurcation, jurors will be asked to separate their
assessment of defendant’s subjective intent from their determination of the remaining issues in
the case. But this challenge is not unique to this case: it confronts every jury in every patent
case with a willful infringement claim. Yet bifurcation, even in patent cases, is the exception
and not the rule. SenoRX, Inc. v. Hologic, Inc., 920 F. Supp. 2d 565, 568 (2013).3 Centocor has

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One study found that less than five percent of jury trials in patent cases between September 2004 and July
2010 were bifurcated. Christopher B. Seaman, Willful Patent Infringement and Enhanced Damages After In Re
Seagate: An Empirical Study, 97 Iowa L. Rev. 417, 463 (2012).

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not demonstrated that the particular circumstances of this case trigger that exception.
In at least one important respect, bifurcation is even less warranted in this case than in the
typical willful infringement context. Many patent defendants are faced with a difficult choice in
determining how to defend against a claim of willfulness: whether to utilize an advice-ofcounsel defense, thereby waiving the attorney-client privilege as to that communication, or to
instead forgo the defense in order to preserve the privilege. This is the so-called Quantum
dilemma. See Quantum Corp. v. Tandon Corp., 940 F.2d 642, 643-44 (Fed. Cir. 1991). A
defendant facing this dilemma has a stronger argument for bifurcation, as a bifurcated trial would
better protect its privilege rights (since waiver would not become necessary unless and until the
defendant is found liable). But Centocor is not facing this dilemma—it has already asserted its
advice-of-counsel defense and waived the attorney-client privilege.
Furthermore, bifurcation can result in undue prejudice to the plaintiff. See Trading
Techs. Int’l, Inc. v. eSpeed, Inc., 431 F. Supp. 2d 834, 841 (N.D. Ill. 2006) (“Bifurcation would
result in prejudice to plaintiff, who, along with facing a substantial delay in final determination
of the action, would be forced to present the same evidence in two separate trials.”). If nothing
else, the arguments on waste of jury time can go in both directions—presenting all of the
evidence once, during one trial, is arguably more efficient than separating out one issue on the
possibility that it may not require resolution. Absent a more compelling need for bifurcation in
this case, these dueling considerations merit denying the motion.

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III.

Conclusion
For the foregoing reasons, the motion of defendant Centocor Ortho Biotech, Inc., to

bifurcate the trial is DENIED.
So Ordered.

/s/ F. Dennis Saylor
F. Dennis Saylor IV
United States District Judge

Dated: October 27, 2014

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