Hypertherm, Inc. v. American Torch Tip Company

Filing 393

ORDER denying as moot 373 Motion for Protective Order; terminating 376 Objection to Magistrate Judge's Decision (Rule 72(a)) - magistrate judge's order is vacated; granting 377 Motion for Hearing re 376 Objecti on to Magistrate Judge's Decision (Rule 72(a)) ; denying as moot 382 Motion to Quash ; denying as moot 384 Motion for Protective Order; denying as moot 385 Motion for Protective Order; Motions to compel 368 and 370 denied without prejudice to renew if appropriate after patent claims are resolved. So Ordered by Judge Joseph A. DiClerico, Jr. (dae) Modified on 12/24/2008 to add relationship to Docs 368 and 370.(dae).

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Hypertherm, Inc. v. American Torch Tip Company Civil No. 05-cv-373-JD Opinion No. 2008 DNH 214

ORDER This case began as a patent infringement action. A year

later, American Torch Tip Company ("ATTC") filed a counterclaim as part of its amended answer, alleging eleven counts of antitrust violations and unfair competition. The case was

bifurcated to address the patent infringement claims first, followed by the counterclaim. Discovery closed a year and a half

ago for the patent infringement claims but remains open for the counterclaim. A dispute has arisen about discovery of information pertaining to the invalidity of United States Patent No. 5,310,988 ("`988 patent") for purposes of the counterclaim. A

telephonic hearing was held on December 22, 2008, to consider the parties' motions and objections pertaining to the disputed

discovery.

ATTC seeks discovery on the issue of patent Hypertherm contends that the

invalidity for its counterclaim.

issue of invalidity is not relevant to the counterclaim and will be decided in the context the patent infringement claims. ATTC

argues that rulings pertaining to the patent claims do not apply to the counterclaim. The law of the case doctrine provides that "`when a court decides upon a rule of law, that decision should continue to govern the same issues in subsequent stages of the same case.'" Naser Jewelers, Inc. v. City of Concord, 538 F.3d 17, 20 (1st Cir. 2008) (quoting Arizona v. California, 460 U.S. 605, 618 (1983)). A court's ruling on the validity or invalidity of a

patent becomes law of the case for subsequent proceedings unless an exception to the doctrine applies. Ormco Corp. v. Align Issues

Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007).

decided in the first half of a bifurcated case become law of the case for the remainder of the proceedings. In re Innotron

Diganotics, 800 F.2d 1077, 1085 (Fed. Cir. 1986).

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In this case, the issue of patent validity will be addressed in the context of the patent infringement claims, which are scheduled for trial in February. Once that decision has been

made, either in response to a motion or following trial, if necessary, the court will address the issue of whether ATTC may seek discovery on patent invalidity for purposes of the counterclaim, and in the event discovery is allowed on this issue a new discovery schedule will be set.

Conclusion The plaintiff's objection to the magistrate judges' ruling on the defendant's motion to compel (document no. 376) has been considered, and the magistrate judge's order is vacated. The

plaintiff's motion for a hearing (doc. no. 377) is granted, and a hearing was held on December 22, 2008. Discovery on the invalidity of the patents in suit, for purposes of the counterclaim, will be stayed pending the determination of that issue in the context of the patent infringement claims. The defendant's motions to compel (doc.

nos. 368 and 370) are denied without prejudice to renew, if

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appropriate, after the patent claims are resolved.

The

plaintiff's motions for protective orders (doc. nos. 373, 384, and 385) and to quash (doc. no. 382) are denied as moot, given the stay of discovery on the patent invalidity issue.

SO ORDERED.

____________________________ Joseph A. DiClerico, Jr. United States District Judge December 23, 2008 cc: Jill C. Anderson, Esquire Jacob K. Baron, Esquire Steven M. Bauer, Esquire Lucas M. Blower, Esquire Colin G. Cabral, Esquire Seth M. Cannon, Esquire Joseph A. Capraro, Jr., Esquire Christopher J. Carney, Esquire Jeffery M. Cross, Esquire Joseph T. Cattilo, Esquire Ami D. Gandhi, Esquire Maia H. Harris, Esquire Marc H. Kallish, Esquire Rhett R. Krulla, Esquire Jonathan A. Lax, Esquire Richard C. Nelson, Esquire W. Scott O'Connell, Esquire Jeremy P. Oczek, Esquire Richard D. Rochford, Jr., Esquire David W. Ruoff, Esquire John T. Shapiro, Esquire John M. Skeriotis, Esquire Benjamin M. Stern, Esquire Wayne Tang, Esquire

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