UNIVERSITY OF PITTSBURGH OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCTION v. VARIAN MEDICAL SYSTEMS, INC.

Filing 488

ORDER DENYING 468 Defendant's Motion for the Court to Certify Question Under 28 U.S.C. 1292 and Motion to Stay. Signed by Judge Arthur J. Schwab on 1/18/2012. (lcb)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
UNIVERSITY OF PITTSBURGH OF
THE COMMONWEALTH SYSTEM
OF HIGHER EDUCATION,
Plaintiff,

08cv1307
ELECTRONICALLY
FILED

v.
VARIAN MEDICAL SYSTEMS, INC.,
Defendant.
ORDER OF COURT DENYING DEFENDANT’S MERITLESS MOTION FOR
THE COURT TO CERTIFY QUESTION UNDER 28 U.S.C. § 1292 AND
UNTIMELY MOTION TO STAY (FILED ON THE EVE OF TRIAL) (Doc. No. 468)
This Court has handled this particular case (“Varian II”) since June 16, 2008, and its
prodigy (“Varian I”) since March 13, 2007, through their sundry hills, detours, and trails,
without even one day of trial on any issue. Currently pending before the Court are defendant’s
Motion for the Court to Certify Question Under 28 U.S.C. § 1292 and Motion to Stay (doc. no.
468), filed literally on the eve of trial (i.e., 3 business days left until the commencement of trial
on January 23, 2012). The Court has also reviewed plaintiff’s Response in Opposition to
Defendant’s Motion for Certificate of Appealability (doc. no. 469).

A. Standard
The standard for determining if a District Court Order should be certified for appeal is:
When a district judge, in making in a civil action an order not otherwise
appealable under this section, shall be of the opinion that such order involves a
controlling question of law as to which there is substantial ground for difference
of opinion and that an immediate appeal from the order may materially advance
the ultimate termination of the litigation, he shall so state in writing in such
order . . . . 28 U.S.C. § 1292(b).

“There are no established criteria for making the decision other than those set forth in the
statute.” Wirtgen America, Inc. v. CMI Corp., 1997 WL 632798, at *2 (Fed. Cir. 1997).
Accordingly, “disagreement [with the District Court’s decision] does not make the district court's
order an appropriate one for interlocutory review.” Parkson Corp. v. Fruit of the Loom, Inc.,
1993 WL 51346, at *1 (Fed. Cir. 1993).

B. Willfulness Trial
The dispute relevant to the present Motions began with the parties’ cross-motions for
summary judgment on various issues. In particular, defendant moved for summary judgment on
the issue of willfulness, and argued that willfulness was a simple, straight-forward issue which
should be decided in its favor. Defendant spent only six pages setting forth its position as to the
simplicity of this issue and the purportedly overwhelming evidence in its favor in that regard
(doc. no. 365). Plaintiff responded that, despite disputes as to a few facts, which created a
genuine issue of material facts and require denial of defendant’s motion for summary judgment,
the issue of willfulness was simple and straight-forward (doc. no. 399, 8 pages). See also
Defendant’s Reply brief (doc. no. 416, 4 pages).
While the Court denied defendant’s Motion for Partial Summary Judgment as to the issue
of willfulness, the Court took defendant at its word that willfulness was a simple, straightforward issue, and thus set a trial date and a pre-trial schedule on this singular issue. In response,
defendant has engaged in a number of tactical maneuvers to delay the trial on this particular issue
and now argues that the willfulness issue requires a complex, multi-faceted trial. Defendant has
provided no explanation as to why a matter that was fully briefed in only six pages, and
characterized as a simple, fact-driven issue, has now purportedly become extremely complex.

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Defendant’s Motions (doc. no. 468) seek to complicate the issue set to be tried in less
than a week. 1 These Motions are an example of why patent litigation has become so lengthy in
duration and expensive in its resolution. It is also an example of taking something that, in
defendant’s view, was a very simple issue, only two months ago, and now attempts to make the
same issue almost as big as the entire case.
In order to avoid a trial on the merits of willfulness, defendant now takes the position
that: (1) the trial needs to be re-scheduled to a time of its convenience and (2) the issues set to be
tried must be done so in the order that best favors defendant. In addition, defendant now appears
to be arguing that a full trial on its purported invalidity defenses must occur first and then the
invalidity defenses must be fully re-litigated in the willfulness portion of the case.

1

Defendant’s Motions were filed on Sunday, January 15, 2012, two days after the Preliminary
Pre-trial Conference on January 13, 2012, held to discuss issues pertaining to trial, and the day
before the Federal holiday of January 16, 2012. Since December 21, 2012, the parties have been
aware that the trial, set to begin on January 23, 2012, and would focus “on the very narrow issue
of willfulness (see doc. no. 365 at 44-50, doc. no. 399 at 33-41, and doc. no. 416 at 24-27).”
Doc. No. 426. Instead of promptly filing the Motions, the Motions were filed 24 days after the
parties were aware of the trial’s scope. Furthermore, the Motions were filed after the parties
submitted Final Joint Pre-trial Stipulations (Doc. No. 464) and Joint Exhibit List (Doc. No. 462).
The Court had also issued a ruling further clarifying the scope of the trial on the issue of
willfulness (Doc. No. 459), Final Voir Dire (Doc. No. 467), and Preliminary Jury Instructions
(Doc. No. 458). Defendant could have filed these Motions much earlier in the proceedings and
the filing of such Motions eight days prior to the start of trial is untimely. The Court conducted
the Final Pre-trial conference yesterday, January 17, 2012. Doc. No. 485.
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C. The Case is Fully Pre-Tried and Ready For Jury Selection Next Monday, January 23,
2012
Defendant Varian waited until numerous preliminary and often final Court rulings on
voire dire, admissibility of exhibits, deposition designation, witnesses, preliminary jury
instructions, and final jury instructions - - waited until defendant knew whether in its opinion the
trial rulings were favorable or unfavorable - - and only then, sought to stop the trial.
The following list of selected docket entries since January 10, 2012, demonstrates that the
case is ready for trial.
01/10/2012

ORDER. The Final Pretrial Conference set for January
17, 2012 at 1:30 p.m. shall continue day-to-day
thereafter (January 18, 19, and 20, 2012) until
concluded, and therefore, trial counsel shall be prepared
to attend all conferences. Signed by Judge Arthur J.
Schwab on 1-10-12. Text-only entry; no PDF document
will issue. This text-only entry constitutes the Order of
the Court or Notice on the matter. (Moschetta, Nicole)
(Entered: 01/10/2012)

01/10/2012

ORDER. Each party shall submit its proposed order
implementing their positions as set forth in the Joint
Submission Regarding Issues to Be Tried Thereon and
Proposed Verdict Slip (at doc. no. 446), on or before
4:00 p.m. on January 11, 2012. Signed by Judge Arthur
J. Schwab on 1-10-12. Text-only entry; no PDF
document will issue. This text-only entry constitutes the
Order of the Court or Notice on the matter. (Moschetta,
Nicole) (Entered: 01/10/2012)

01/10/2012

449

Proposed Voir Dire by VARIAN MEDICAL
SYSTEMS, INC. (Sneath, Henry) (Entered: 01/10/2012)

01/10/2012

450

Proposed Voir Dire by UNIVERSITY OF
PITTSBURGH OF THE COMMONWEALTH
SYSTEM OF HIGHER EDUCATION. (Quinn,
William) (Entered: 01/10/2012)

01/11/2012

451

Revised Proposed Supplemental Voir Dire Questions by
VARIAN MEDICAL SYSTEMS, INC. (Sneath, Henry)
Modified on 1/12/2012 to add additional docket text.
(ksa) (Entered: 01/11/2012)
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01/11/2012

453

VOIR DIRE (eca) (Entered: 01/11/2012)

01/11/2012

454

WITNESSES WHO MAY BE CALLED TO TESTIFY
AT TRIAL. (eca) (Entered: 01/11/2012)

01/11/2012

455

Proposed Order (Regarding Joint Submission Docket #
446 ) by VARIAN MEDICAL SYSTEMS, INC.
(Sneath, Henry) Modified on 1/12/2012 document
linkage corrected. Document linked to document 446 .
(ksa) (Entered: 01/11/2012)

01/11/2012

456 Proposed Order Regarding the Joint Submission
Regarding Issues to be Tried to the Jury (Doc. No. 446 )
by UNIVERSITY OF PITTSBURGH OF THE
COMMONWEALTH SYSTEM OF HIGHER
EDUCATION. (Quinn, William) Modified on 1/12/2012
document linkage corrected. Document linked to
document 446 . (ksa) (Entered: 01/11/2012)

01/11/2012

457

Joint Proposed Jury Instructions by UNIVERSITY OF
PITTSBURGH OF THE COMMONWEALTH
SYSTEM OF HIGHER EDUCATION, VARIAN
MEDICAL SYSTEMS, INC. (Quinn, William)
Modified on 1/12/2012 to add additional docket text.
(ksa) (Entered: 01/11/2012)

01/12/2012

458

PRELIMINARY JURY INSTRUCTIONS. (eca)
(Entered: 01/12/2012)

01/12/2012

459

ORDER OF COURT re: Scope of Trial on the Issue of
Willfulness. Signed by Judge Arthur J. Schwab on
01/12/12. (eca) (Entered: 01/12/2012)

01/12/2012

460

AMENDED VOIR DIRE. (eca) (Entered: 01/12/2012)

01/12/2012

461

Exhibit List (Joint Exhibit List Chart) by UNIVERSITY
OF PITTSBURGH OF THE COMMONWEALTH
SYSTEM OF HIGHER EDUCATION, VARIAN
MEDICAL SYSTEMS, INC.. (Quinn, William)
(Entered: 01/12/2012)

01/12/2012

463 STIPULATION (Proposed Joint Pre-trial Stipulation)
by UNIVERSITY OF PITTSBURGH OF THE
COMMONWEALTH SYSTEM OF HIGHER
EDUCATION. (Quinn, William) (Entered: 01/13/2012)

01/13/2012

464 STIPULATION (Final Joint Pre-Trial Stipulation) by
UNIVERSITY OF PITTSBURGH OF THE
COMMONWEALTH SYSTEM OF HIGHER
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EDUCATION, VARIAN MEDICAL SYSTEMS, INC..
(Attachments: # 1 Exhibit (Attachment A)) (Quinn,
William) (Entered: 01/13/2012)
01/13/2012

465 MEMORANDUM ORDER RE: Reference to Lack of
Opinion Letter from Counsel (Doc. No. 446 at
(III)(2)(C). Defendant's objection to Plaintiff presenting
"evidence or argument on Varian's decision not to
disclose an Opinion of Counsel concerning the '554
patent" is SUSTAINED. See 455 at 5, para. 3. Signed
by Judge Arthur J. Schwab on 1/13/2012. (lcb) (Entered:
01/13/2012)

01/13/2012

466 Minute Entry for proceedings held before Judge Arthur
J. Schwab: Initial Pretrial Conference held on
1/13/2012. (Court Reporter: Karen Earley) (eca)
(Entered: 01/13/2012)

01/13/2012

467 FINAL VOIR DIRE. (eca) (Entered: 01/13/2012)

01/15/2012

468 MOTION for the Court to Certify Question Under 28
USC 1292 by VARIAN MEDICAL SYSTEMS, INC.
(Attachments: # 1 Exhibit A, # 2 Proposed Order)
(Sneath, Henry) Modified on 1/17/2012 to correctly title
motion. (ksa) (Entered: 01/15/2012)

01/15/2012

469 RESPONSE IN OPPOSITION to 468 Motion for
Certificate of Appealability, filed by UNIVERSITY OF
PITTSBURGH OF THE COMMONWEALTH
SYSTEM OF HIGHER EDUCATION. (Quinn,
William) Modified on 1/17/2012

01/15/2012

477 BRIEF in Opposition re 468 Motion for Miscellaneous
Relief filed by UNIVERSITY OF PITTSBURGH OF
THE COMMONWEALTH SYSTEM OF HIGHER
EDUCATION. "Document previously filed
electronically" (ksa) (Entered: 01/17/2012)

01/16/2012

470

01/16/2012

471 Proposed Jury Instructions (Revised Joint Proposed
Final Jury Instructions) by UNIVERSITY OF
PITTSBURGH OF THE COMMONWEALTH

Proposed Jury Instructions (Revised Joint Proposed
Preliminary Jury Instructions) by UNIVERSITY OF
PITTSBURGH OF THE COMMONWEALTH
SYSTEM OF HIGHER EDUCATION, VARIAN
MEDICAL SYSTEMS, INC. (Sneath, Henry) (Entered:
01/16/2012)

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SYSTEM OF HIGHER EDUCATION, VARIAN
MEDICAL SYSTEMS, INC. (Sneath, Henry) (Entered:
01/16/2012)
01/16/2012

472 AMENDED PROPOSED VERDICT FORM by
UNIVERSITY OF PITTSBURGH OF THE
COMMONWEALTH SYSTEM OF HIGHER
EDUCATION. (Quinn, William) Modified on
1/17/2012 to add additional docket text. (ksa) (Entered:
01/16/2012)

01/16/2012

473 Exhibit List (Plaintiff's Amended Exhibit List Chart) by
UNIVERSITY OF PITTSBURGH OF THE
COMMONWEALTH SYSTEM OF HIGHER
EDUCATION. (Quinn, William) (Entered: 01/16/2012)

01/16/2012

474 PROPOSED VERDICT FORM by VARIAN
MEDICAL SYSTEMS, INC. (Sneath, Henry) (Entered:
01/16/2012)

01/16/2012

475 OBJECTIONS to Defendants Witnesses to be Offered
by way of Deposition re 438 Witness List by
UNIVERSITY OF PITTSBURGH OF THE
COMMONWEALTH SYSTEM OF HIGHER
EDUCATION. (Quinn, William) (Entered: 01/16/2012)

01/17/2012

476 Exhibit List (Amended) by VARIAN MEDICAL
SYSTEMS, INC.. (Sneath, Henry) (Entered:
01/17/2012)

01/17/2012

ORDER Response/Briefing Schedule re 475 Objections.
Defendant shall file Response to doc. no. 475 by noon
today (1/17/2012), in light of 1:30 p.m. Final Pretrial
Conference. Defendant may incorporate by reference
any prior document by way of response. Signed by
Judge Arthur J. Schwab on 1-17-12. Text-only entry; no
PDF document will issue. This text-only entry
constitutes the Order of the Court or Notice on the
matter. (Moschetta, Nicole) (Entered: 01/17/2012)

01/17/2012

ORDER selecting and adopting 472 Proposed Verdict
Form (at pages 1-4) filed by UNIVERSITY OF
PITTSBURGH OF THE COMMONWEALTH
SYSTEM OF HIGHER EDUCATION as the Verdict
Form to be used at the upcoming trial set to commence
on January 23, 2012. Counsel for plaintiff shall email a
copy of said document in Word format (adding
signature lines for all jurors and deleting the notation to
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Presiding Juror (instead using the term Foreperson)) by
11:00 a.m. today. Signed by Judge Arthur J. Schwab on
1-17-12. Text-only entry; no PDF document will issue.
This text-only entry constitutes the Order of the Court or
Notice on the matter. (Moschetta, Nicole) (Entered:
01/17/2012)
01/17/2012

481

01/17/2012

FINAL (ADDITIONAL) PRELIMINARY JURY
INSTRUCTIONS - PART II. Signed by Judge Arthur J.
Schwab on 1-17-12. (Moschetta, Nicole) (Entered:
01/17/2012)
TEXT ORDER - The Court overrules Defendants
Objections to Plaintiffs Trial Exhibits as set forth on
Plaintiffs Amended Exhibit List Chart (doc. no. 473).
Text-only entry; no PDF document will issue. This textonly entry constitutes the Order of the Court or Notice
on the matter. Signed by Judge Arthur J. Schwab on
1/17/2012. (ms) (Entered: 01/17/2012)

01/17/2012

482

RESPONSE to Plaintiff's Objections to Defendant's
Witnesses to be Offered by Way of Deposition to 475
Objections, filed by VARIAN MEDICAL SYSTEMS,
INC.. (Poppe, Matthew) (Entered: 01/17/2012)

01/17/2012

483

OBJECTIONS to Plaintiff's Witnesses to be Offered by
Way of Deposition) 475 Objections by VARIAN
MEDICAL SYSTEMS, INC.. (Poppe, Matthew)
(Entered: 01/17/2012)

01/17/2012

484

MOTION for Reconsideration re 472 Proposed Verdict
Form, 478 Order (Regarding Adopting Plaintiff's
Proposed Verdict Form) by VARIAN MEDICAL
SYSTEMS, INC.. (Attachments: # 1 Proposed Order)
(Poppe, Matthew) (Entered: 01/17/2012)

01/17/2012

485

Minute Entry for proceedings held before Judge Arthur
J. Schwab: Pretrial Conference held on 1/17/2012.
(Court Reporter: Julie Kienzle) (eca) (Entered:
01/17/2012)

01/17/2012

486

FINAL JURY INSTRUCTIONS. Signed by Judge
Arthur J. Schwab on 1-17-12. (Moschetta, Nicole)
(Entered: 01/17/2012)

01/17/2012

ORDER. By noon on Thursday, January 19, 2012, the
parties shall file a brief stipulation outlining the
remaining issues (if any) that the parties contend need to
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be resolved prior to the entry of Final Judgment and
upon the conclusion of the willfulness trial
(commencing on January 23, 2012)(doc. no. 426), and
the damages trial (commencing on February 21,
2012)(doc. no. 452). Signed by Judge Arthur J. Schwab
on 1-17-12. Text-only entry; no PDF document will
issue. This text-only entry constitutes the Order of the
Court or Notice on the matter. (Moschetta, Nicole)
(Entered: 01/17/2012)
01/18/2012

487

ORDER DENYING 484 Motion for Reconsideration.
Signed by Judge Arthur J. Schwab on 01/18/12. (eca)
(Entered: 01/18/2012)

D. Conclusion
In summary, in a few short months, defendant has changed its contention that willfulness
was a simple issue on which it was entitled to summary judgment, to argue that a trial on this
simple issue, if it went forward, would deny it “due process or the Seventh Amendment rights
under the United States Constitution.” Doc. No. 468, 1. This is not the case. Further, applying
the applicable standard pursuant to 28 U.S.C. § 1292(b), the Court finds that the previous Orders
of Court scheduling a trial on the singular issue of willfulness do not involve a “controlling
question of law” and further, immediate appeal from these Orders will not “materially advance
the ultimate termination of th[is] litigation.” Therefore, the following Order is entered on these
meritless and untimely Motions attempting to halt this trial on the eve before trial.
AND NOW, this 18th day of January 2012, IT IS HEREBY ORDERED that Defendant’s
Motion for the Court to Certify Question under 28 U.S.C. § 1292 and Motion to Stay (doc. no.
468) are DENIED.

\s Arthur J. Schwab
Arthur J. Schwab
United States District Court Judge
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