The opinion of the court was delivered by: LOUIS POLLAK, Senior District Judge
Plaintiffs, Sprinturf, Incorporated ("Sprinturf') and Hank Julicher
("Julicher"), filed a complaint against Southwest Recreational
Industries, Incorporated ("Southwest") and Villanova University
("Villanova") for patent infringement. Plaintiffs seek judgment for past
infringement and injunctive relief against further infringement of the
claims of United States Patent No. 5,976,645, entitled Vertically
Draining, Rubber-filled Synthetic Turf and Method of Manufacture ("`645
Patent"). Presently before the court is defendants' Motion to Bifurcate
Liability from Damages and to Stay All Proceedings on Damages until a
Trial of Liability Has Been Completed (#33). For the reasons set forth
below, defendants' motion is hereby denied.
Rule 42(b) of the Federal Rules of Civil Procedure states:
The court, in furtherance of convenience or to
avoid prejudice, or when separate trials
will be conducive to expedition and economy, may order
a separate trial of any claim, cross-claim,
counterclaim, or third-party claim, or of any separate
issue or of any number of claims . . . or issues,
always preserving inviolate the right of trial by jury
as declared by the Seventh Amendment to the
Constitution or as given by a statute of the United
The decision to bifurcate is a "matter to be decided on a case-by-case
basis and must be subject to an informed discretion by the trial judge in
each instance." Lis v. Robert Packer Hosp, 579 F.2d 819, 824 (3d Cir.
1978). The party seeking bifurcation has the burden of demonstrating that
judicial economy would be promoted and that no party would be prejudiced
by separate trials. Spectra-Physics Lasers, Inc. v. Uniphase Corp.,
144 F.R.D. 99, 101 (N.D. Cal. 1992). In order to determine if bifurcation
would be appropriate, courts have assessed whether the litigation
contains certain features that carry the potential to confuse the jury,
such as: (1) the need to review a myriad of documents to resolve damages
issues; (2) complex infringement issues; (3) multiple patents, infringing
products, claims, counterclaims, or parties; and (4) the probability that
the defendant would prevail on the infringement issue. See Real v.
Bunn-O-Matic Corp., 195 F.R.D. 618, 621 (N.D. Ill. 2000) (surveying and
synthesizing the case law on bifurcation in patent litigation).
Additionally, in order to respect the Seventh Amendment guarantee of a
fair trial, "separate trial of a particular issue cannot be ordered in
the first instance when the issue is so interwoven with the other issues
in the case that it cannot be submitted to the jury independently of the
others without confusion and uncertainty that would amount to a denial of
a fair trial." Wright & Miller, Federal Practice § 2391 (1995); Gasoline
Prods. Co. v. Champlin Refining Co., 283 U.S. 494, 500 (1931). While
courts have held separate trials on liability and damage issues in patent
cases with more frequency than in other types of cases, the
employment of separate trials remains the exception rather than the
rule. Real, 195 F.R.D. at 620.
In attempting to meet their burden, defendants articulate several
reasons why this court should grant the Rule 42(b) motion. First,
defendants claim that bifurcation carries a great potential to expedite
the resolution of this case, either through a favorable verdict for
Southwest on the issue of liability or, if Southwest does not prevail,
through settlement. Second, defendants claim that bifurcation is
necessary because the issue of damages in this case will be complex and,
if tried in conjunction with infringement issues, will confuse a jury.
Third, defendants claim that bifurcation will not result in the
presentation of overlapping issues to different juries, and, therefore,
that the Seventh Amendment will not preclude the bifurcation of liability
and damages. Fourth, defendants claim that due to the extensive,
burdensome, and costly process of discovery pertaining to damages, the
delay in holding a separate damages trial until after a verdict on
liability will serve the interests of expedition and judicial economy.
Defendants' arguments fail to demonstrate the need for this court to
deviate from the conventional single trial rule. Their first assertion is
nothing more than speculative. In fact, the validation of this type of
self-serving argument, without more, would permit all defendants in all
cases to sever liability from damages. See Reading Tube Corp. v.
Employers Ins. of Wausau, 944 F. Supp. 398, 404 (E.D. Pa. 1996) (holding
that defendant cannot "successfully argue that it should prevail on its
motion for separate trials because it believes that [plaintiff] will not
be able to meet its burden of establishing liability, and it wishes to
avoid issues of damages altogether").
To support their additional arguments, defendants rely upon a series of
cases granting bifurcation of liability from damages in the context of
patent litigation. See e.g., Smith v. Alyeska
Pipeline Serv. Co., 538 F. Supp. 977, 982-83 (D. Del. 1982). Defendants'
reliance on Alyeska and its progeny, however, is misplaced. In granting
the motion to bifurcate, the Alyeska court reasoned that the "issue of
damages is complex and that the issues of liability and damages do not
overlap." Id. at 983. The court emphasized that the defendants did not
rely on the general assertion of the complexity of the damage issue,
but, instead, "expressly represented to the Court that to resolve the
damage issue will require a review of millions of documents and require
extensive time both during discovery and at trial." Id. at 983-984.
Here, while defendants claim that a determination of damages will be
"extremely complex-particularly because the defendants will seek a
"reasonably royalty" test to compute damages while the plaintiffs will
employ a "lost profits" damage analysis and because each side will retain
their own experts-defendants have failed to indicate why the presentation
of damages evidence would be any more complex than in the typical patent
case and why damages and liability evidence could not be presented
together. Additionally, defendants have not identified which aspects of
the damages issue will be particularly difficult for jurors to
comprehend, and unlike Alyeska, they have not suggested that the damages
trial will require the production and inspection of "millions of
In fact, this case is more akin to the scenario in Real, in which the
court denied defendant's motion for bifurcation. As in the present case,
Real involved one patent, one claim and one allegedly infringing
product, and the defendants did not proffer evidence to show the
complexity of damages computation, the complexity of the technology and
liability issues, or the complexity of procedural issues. See Real, 195
F.R.D. at 620-22. Additionally, in Real, there was an overlapping of
issues within the damage and liability phases of a trial, an issue with
respect to which the Real court noted that a single trial would serve the
interests of judicial economy, whereas with two separate trials, "it is
not only possible, but probable, that repeated discovery disputes will
arise over whether requested discovery is related to liability, damages,
willfulness, or all of these issues," thereby leading to extended delay,
unnecessary paperwork, more legal fees, and increased judicial
intervention. See id. at 624.
Thus, it is hereby ORDERED that defendants' Motion to Bifurcate
Liability from Damages and Motion to Stay All Proceedings on Damages
until a Trial of Liability Has Been Completed (#33) is DENIED.
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