STC.UNM v. Intel Corporation
MEMORANDUM OPINION AND ORDER by District Judge Robert C. Brack DENYING 145 MOTION to Bifurcate and Early Trial on Damages. Related document(s): 152 Response in Opposition to Motion, 146 Memorandum in Support, (yc)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW MEXICO
No. 10-cv-1077 RB/WDS
MEMORANDUM OPINION AND ORDER
This matter is before the court on Plaintiff STC UNM’s Motion for Bifurcation and Early
Trial on Damages (Doc. 145, filed September 27, 2011) and Memorandum filed in support
thereof (Doc. 146, filed September 27, 2011). Jurisdiction arises under 28 U.S.C. § 1338. The
issue has been fully briefed and is now ready for decision. Having considered the submissions
and arguments of counsel, relevant law, and being otherwise fully advised, the Court DENIES
This matter arises from Defendant Intel Corporation’s (“Intel”’s) alleged infringement of
patent rights1 held by STC UNM (“STC”), the patent arm of the University of New Mexico,
relating to photolithography techniques used in the manufacture of semiconductors. STC moves
to bifurcate damages from liability and to conduct an early trial on damages prior to the
mandatory settlement conference required by District of New Mexico Local Rule 16.2. In
support of its motion, STC contends that an early bifurcated damage trial will enhance the
STC UNM is the owner-by-assignment of the alleged infringed patent entitled “Method
and Apparatus for Extending Spatial Frequencies in Photolithography Images,” United States
Patent No. 6,042,998.
likelihood of early settlement, will save the parties time, money, and effort, and is within the
discretion of the Court. Intel responds that such “reverse bifurcation” is a “drastic and
extraordinary procedure that has never been used in a patent case,” (doc. 152 at 1), that it would
not be efficient nor economical, that liability and damages issues will inevitably overlap, leading
to duplicative presentation of evidence, and that it would be severely prejudicial to Intel because
it would run the risk of juror confusion.
Federal Rule of Civil Procedure 42(b) authorizes district courts to “order a separate trial
of one or more separate issues, claims, crossclaims, counterclaims, or third-party claims” where
it would aid convenience, avoid prejudice, and expedite and economize case management. FED.
R. CIV. PROC. 42(b). Bifurcation “is not to be routinely ordered” but may be “encouraged where
experience has demonstrated its worth.” Advisory Committee Note to 1966 Amendment.
Generally, the movant bears the burden of showing that separate trials are proper in light of the
general principle that a single trial tends to reduce delay, expense and inconvenience. Belisle v.
BNSF Ry. Co., 697 F. Supp. 2d 1233, 1250 (D. Kan. 2010). “Bifurcation in patent cases, as in
others, is the exception, not the rule.” Real v. Bunn-O-Matic Corp., 195 F.R.D. 618, 620 (N.D.
Reverse bifurcation of liability and damages is a sub-species of bifurcation most often
employed in large, complex product liability cases. See e.g., Jenkins v. Raymark Industries, Inc.,
782 F.2d 468, 473 n.8 (5th Cir. 1986) (“ ‘Reverse bifurcation’ originated in the Third Circuit as a
means of processing that circuit’s backlog of asbestos-related cases.”); Nye v. Ingersoll Rand
Co., 2011 WL 4017741 at *3 (D.N.J. Sept. 8, 2011) (“[W]hile so-called reverse bifurcation has
found some favor in the area of complex personal injury torts, it remains relatively uncommon in
ordinary litigation.”) This procedure is most useful where the parties “have excellent
information about the likelihood of success on the issue of liability and the real sticking points
are the individual issues of causation and damages.” Simon v. Philip Morris Inc., 200 F.R.D. 21,
32 (E.D.N.Y. 2001). Although trial courts have significant discretion in determining whether to
order bifurcation of liability and damages, courts abuse this discretion in ordering bifurcation
that is unfair or prejudicial to a party. Angelo v. Armstrong World Indus., Inc., 11 F.3d 957, 964
(10th Cir. 1993). However, “[b]ifurcation is not an abuse of discretion if [the interests listed in
Rule 42(b)] favor separation of issues and the issues are clearly separable.” Id.
The Court is unpersuaded that reverse bifurcation would further the interests expressed in
Rule 42(b). First, in regard to expedition and economy, STC argues that in contrast to a two-plus
week liability trial, a damages trial would last only one to two days and would center primarily
upon opinion testimony from each party’s damages experts. Id. Thus, STC argues that in trying
damages alone, “one sees a substantial savings of time, money, and effort . . . .” Accepting these
statements as true, STC still offers no rationale as to why damages should be determined before
liability except that “[t]he outcome of such an abbreviated damage trial . . . would definitively
inform each of the parties of the stakes in this case . . . [and] [t]he subsequent settlement
conference would be held in an atmosphere of precise knowledge of damages.” Id. at 5. STC
therefore premises its contention that reverse bifurcation would save time and money on the
assumption that a definitive damages calculation would facilitate early settlement. STC asserts
no other basis for reversing the ordinary progression of trial.
STC’s reasoning is frankly too speculative at this point to justify ordering reverse
bifurcation, a mechanism other courts have labeled “extraordinary” and “drastic.” Nye, 2011 WL
4017741 at *3 (citing cases). Liability in this case is a hotly-contested issue and Intel has
continually maintained that it has numerous meritorious defenses to STC’s claims. Although
Intel certainly has an incentive to engage in posturing as to the extent of its confidence, at this
point there is nothing to suggest Intel has any intention of abandoning its defenses. Further, STC
appears to assume that a jury would find damages in a manner that creates actual pressure on the
parties – and more likely, pressure on Intel – to settle. The Court does not see any credible
foundation for this assumption. Finally, reverse bifurcation may be a more useful tool in cases
where the cost to the parties of litigating a case significantly outweighs the case’s overall value.
Under those circumstances, an early damages determination may force all parties to re-evaluate
whether a case is truly worth litigating. Here, by contrast, STC will seek damages of hundreds
of millions of dollars, see doc. 146 at 2, whereas its estimated litigation costs are comparatively
much smaller. (Doc. 146 at 3) (“In cases where the potential damages at issue exceed $25
million (as this case clearly does), the median litigation cost for each of the parties is $5.5
million.”) The Court therefore finds no signficant reason why reverse bifurcation would facilitate
early settlement in this case, and accordingly cannot find that reverse bifurcation would serve the
interests of economy or efficiency.
STC next contends that the liability and damages issues in this case are clearly separable,
and that the damage issue here is limited to determining a “reasonable royalty” for the patent at
issue. This royalty is calculated via “hypothetical negotiations” over licensing a patent that is
presumed to be valid and infringed. (Doc. 146 at 6). Because the patent is “presumed” to be
valid and infringed in the damages phase, STC argues that liability issues of validity and
infringement are, by definition, separate. Intel focuses its response on the fact that evidence
relevant to a damages determination will also be relevant to liability, leading to duplicative
presentation of information.
When a court bifurcates a case, “[t]he Seventh Amendment requires that [it] . . . ‘divide
issues between separate trials in such a way that the same issue is not reexamined by different
juries.’ ” In re Paoli R.R. Yard PCB Litigation, 113 F.3d 444, 452 n.5 (3d Cir. 1997) (citing
Matter of Rhone-Poulenc Rorer, Inc., 51 F.3d 1293, 1303 (7th Cir. 1995)). While Intel offers
specific examples of evidence it contends would be duplicative, it does not identify specific
issues that would be evaluated – and possibly perceived differently – by separate juries. Nor
does it argue that certain factual determinations belonging to the liability portion of the trial are
necessary precursors to a damages evaluation. However, the Court acknowledges that
overlapping evidence may signal overlapping issues, and agrees that evidence relating to liability
in this case may also be relevant to damages. As stated in Real v. Bunn-O-Matic,
[T]he damages trial cannot be conducted in an evidentiary vacuum. A jury will
have to be familiar with the patents at issue, the products, and the linear guide
industry itself. Therefore, much of the evidence that can be expected to be
introduced in a trial on damages will be duplicative of the evidence that can be
expected to be presented in a trial on liability. If the case were bifurcated, it
would be necessary to revisit the testimony and demonstrative evidence that
previously had been used to explain to the liability jury, . . . It goes without
saying that if proof overlaps substantially, the parties, the witnesses, and the
Court would be inconvenienced by the presentation of the same evidence
Bunn-O-Matic, 195 F.R.D. at 624 (citing THK America, Inc. v. NSK Co. Ltd., 29
U.S.P.Q.2d 2020, 2024 (N.D. Ill. 1993). Although the Court does not determine at this point
whether the issues are clearly separable, the potential for duplicative presentation of evidence
further weighs against the interests of economy, efficiency, and convenience, and counsels
against reverse bifurcation.
Finally, STC contends that far from prejudicing Intel, reverse bifurcation will help Intel
avoid the imposition of a high damage award stemming from jury resentment over Intel’s
repeated denials of liability should the jury find in favor of STC. (See Doc. 146 at 7) (“If the
jurors . . . are even mildly convinced by the denial of culpability, they will resent the repeated,
overstated denials as both dishonest and remorseless. Jury resentment is likely to augment the
damages . . . .”) (quoting Drury Stevenson, Reverse Bifurcation, 75 U. CIN. L. REV. 213, 219
(2006)). Intel counters that reverse bifurcation would be severely prejudicial because it raises
substantial risk of juror confusion.
Although this is not a case where the jury will be required to determine liability and
damages for a large assemblage of patents, the technological issues presented are sufficiently
complex that a jury would likely benefit from the background and context established through
the liability portion of the proceedings. The parties agree that the damages portion of the case
will focus on determining the amount of a “reasonable royalty.” Under patent law, “[a]
‘reasonable royalty’ derives from a hypothetical negotiation between the patentee and the
infringer when the infringement began.” ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 868
(Fed. Cir. 2010). Courts consider a wide variety of relevant factors in determining a reasonable
royalty. Id. (referencing a “comprehensive” list of fifteen factors cited in Georgia–Pacific Corp.
v. United States Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y.1970)). These factors
include considerations of “[t]he nature of the patented invention; the character of the commercial
embodiment of it as owned and produced by the licensor; and the benefits to those who have
used the invention”; “[t]he utility and advantages of the patent property over the old modes or
devices”; and “[t]he established profitability of the product made under the patent; its
commercial success; and its current popularity.” Georgia-Pacific Corp., 318 F. Supp. at 1120.
Again, the Court does not believe that these kinds of determinations can be made “in an
evidentiary vacuum.” Bunn-O-Matic, 195 F.R.D. at 624. A jury’s comprehension of the Georgia
Pacific factors, the success with which it engages them, and its evaluation of an expert’s
credibility regarding them, may be enhanced through familiarity with the patented technology
and accompanying infringement issues. As discussed above, were the Court to order reverse
bifurcation, the background information necessary for the jury to fully understand the damages
evidence may substantially overlap with liability and infringement evidence and result in
duplicative presentation of evidence. Thus, the Court’s interest in both economy and juror
comprehension weighs against reverse bifurcation.2
In sum, the Court finds that reverse bifurcation of damages and liability would not further
the interests of convenience, avoidance of prejudice, or the expedition and economization of case
IT IS ORDERED that Plaintiff STC UNM’s Motion for Bifurcation and Early Trial on
Damages, Doc. 145, is DENIED.
ROBERT C. BRACK
UNITED STATES DISTRICT JUDGE
The Court takes no position at this point on the issue whether traditional bifurcation
would prejudice either party.
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