Senorx, Inc. v. Hologic, Inc.

• Decision Date: 30 January 2013
• Docket Number: Civ. Action No. 12–173–LPS–CJB.
• Citation: 920 F.Supp.2d 565
• Parties: SENORX, INC., Plaintiff, v. HOLOGIC, INC., Defendant.
• Court: U.S. District Court — District of Delaware

920 F.Supp.2d 565

SENORX, INC., Plaintiff,

v.HOLOGIC, INC., Defendant.

Civ. Action No. 12–173–LPS–CJB.

United States District Court,

D. Delaware.

Jan. 30, 2013.

Jack B. Blumenfeld, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, for Plaintiff.

James L. Higgins, Young, Conaway, Stargatt & Taylor LLP, Wilmington, DE, for Defendant.

MEMORANDUM ORDER

CHRISTOPHER J. BURKE, United States Magistrate Judge.

In this action, Plaintiff SenoRx, Inc. (“Plaintiff” or “SenoRx”) has filed a Complaint alleging two counts of patent infringement against Defendant Hologic, Inc. (“Defendant” or “Hologic”). (D.I. 1) Presently before the Court is Hologic's Motion to Bifurcate and Stay Discovery and Trial of Damages and Willfulness Issues (“the Motion” or “Motion to Bifurcate”). (D.I. 15) For the reasons set forth below, the Court DENIES Hologic's Motion.

I. BACKGROUND

On February 10, 2012, SenoRx filed this infringement suit, alleging that Hologic had directly infringed the patents-in-suit, U.S. Patent Nos. 8,079,946 (“the '946 Patent”) and 8,075,469 (“the '469 Patent”), by making, using, offering for sale, and/or selling Hologic's MammoSite® Multi–Lumen balloon brachytherapy device. (D.I. 1 at ¶¶ 17–32) The Complaint also alleges that Hologic indirectly infringed the '469 Patent. (Id. at ¶ 29) Additionally, the Complaint asserts that Hologic's infringement has been willful. ( Id. at ¶¶ 21, 30) SenoRx sought damages in the form of monetary relief (including an award of up to three times the amount of damages owed, if willful infringement is found), and sought a permanent injunction against Hologic for any infringement of the patents-in-suit. ( Id. at 6)

On May 3, 2012, Judge Leonard P. Stark referred this case to me to hear and resolve all pretrial matters, up to and including the resolution of case-dispositive motions. (D.I. 6) On May 23, 2012, Defendant timely answered Plaintiff's Complaint. (D.I. 7)

On July 26, 2012, Hologic filed the Motion to Bifurcate. (D.I. 15) In filing the Motion, Hologic requests that the Court bifurcate the issue of liability for patent infringement from issues relating to damages and to whether any infringement was willful, such that damages and willfulness would be tried, if necessary, separate from and after the liability trial in the case. (D.I. 16 at 9) Hologic also asks that the Court stay any discovery regarding damages and willfulness until after a final determination of liability. ( Id.) The Motion was fully briefed as of October 15, 2012, (D.I. 34), and was argued on November 27, 2012. (D.I. 41)

II. STANDARD OF REVIEW

Federal Rule of Civil Procedure 42(b) states that “[f]or convenience, to avoid prejudice, or to expedite and economize, the court may order a separate trial of one or more separate issues, claims, crossclaims, counterclaims, or third-party claims.” “ ‘Under Rule 42(b), a district court has broad discretion in separating issues and claims for trial as part of its wide discretion in trial management.’ ” Lab. Skin Care, Inc. v. Ltd. Brands, Inc., 757 F.Supp.2d 431, 441 (D.Del.2010) (quoting Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209, 1212 (Fed.Cir.1987)). When exercising this broad discretion, courts should consider whether bifurcation will avoid prejudice, conserve judicial resources, and enhance juror comprehension of the issues presented in the case. Id.;Enzo Life Scis., Inc. v. Digene Corp., No. Civ. A. 02–212–JJF, 2003 WL 21402512, at *4 (D.Del. June 10, 2003). In deciding whether one trial or separate trials will best serve the above factors, the major consideration is directed toward the choice most likely to result in a just final disposition of the litigation. Sepracor Inc. v. Dey L.P., Civil Action No. 06–113–JJF, 2010 WL 2802611, at *3 (D.Del. July 15, 2010) (citation omitted). The party moving for bifurcation has the burden of establishing that it is appropriate. Id.;WebXchange Inc. v. Dell Inc., C.A. Nos. 08–132–JJF, 08–133–JJF, 2009 WL 5173485, at *4 (D.Del. Dec. 30, 2009).

III. DISCUSSION

The parties first disagree about how uncommon (or common) bifurcation is and should be in patent cases. In doing so, they note difference in the way our Court has addressed that question. SenoRx cites precedent of this Court for the proposition that “bifurcation remains the exception rather than the rule,” (D.I. 24 at 4 (citing Sepracor, 2010 WL 2802611, at *3;WebXchange, 2009 WL 5173485, at *4)), and, even more strongly, that “bifurcation should ‘prevail only in exceptional cases.’ ” ( Id. at 5 (quoting Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 498 F.Supp.2d 734, 736 (D.Del.2007))) Hologic, on the other hand, asserts that bifurcation in patent cases in this District is a “presumption,” (D.I. 25 at 1), and notes that one District Judge of this Court has determined that “ ‘bifurcation is appropriate, if not necessary, in all but exceptional patent cases.’ ” (D.I. 16 at 4 (quoting Dutch Branch of Streamserve Dev. AB v. Exstream Software, LLC, Civ. No. 08–343–SLR, 2009 WL 2705932, at *1 (D.Del. Aug. 26, 2009); Robert Bosch LLC v. Pylon Mfg. Corp., Civ. No. 08–542–SLR, 2009 WL 2742750, at *1 (D.Del. Aug. 26, 2009)))

The Court will approach an analysis of whether bifurcation is appropriate on a case-by-case basis, without resort to a general presumption, taking into account all relevant facts and circumstances in the case. See Lis v. Robert Packer Hosp., 579 F.2d 819, 824 (3d Cir.1978) (noting that with respect to the question of bifurcating liability from damages pursuant to Rule 42(b), “the rule in this circuit ... has been that 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”); see also Synopsys, Inc. v. Magma Design Automation, No. Civ. A. 05–701(GMS), 2006 WL 1452803, at *4 (D.Del. May 25, 2006); Willemijn Houdstermaatschaapij BV v. Apollo Computer Inc., 707 F.Supp. 1429, 1433 (D.Del.1989); Datastrip (IOM) Ltd. v. Symbol Techs., Inc., C.A. No. 97–70–JJF, 1998 WL 35287850, at *2 (D.Del. Jan. 7, 1998). With that said, the Court agrees that it is fair to characterize bifurcation as “the exception, not the rule” in civil cases, including patent cases. This is so because the actual “rule” governing bifurcation, Rule 42(b), notes that the default presumption in such cases is that all claims and defenses will be heard in one trial, unless the Court takes action to the contrary pursuant to the dictates of the Rule. SeeFed.R.Civ.P. 42(b) (“the court may order a separate trial of one or more separate issues”) (emphasis added); see alsoFed.R.Civ.P. 42 Advisory Committee Notes (noting that while bifurcation should be “encouraged where experience has demonstrated its worth,” nevertheless “separation of issues for trial is not to be routinely ordered”); Johns Hopkins Univ. v. CellPro, 160 F.R.D. 30, 32–33 (D.Del.1995) (“In the normal course of litigation, all claims and issues in a civil action are presented for resolution in one trial.”) (citing Lis, 579 F.2d 819). And the maxim is also literally true in practice as to patent cases in this District, where, as to a majority of such cases, they are presumed to proceed to trial as to all claims and defenses unless a party affirmatively moves to the contrary under Rule 42.

With this general approach confirmed, the Court now analyzes Hologic's arguments in favor of the Motion to Bifurcate. In doing so, it will examine whether bifurcation will avoid prejudice, conserve judicial resources, and enhance juror comprehension of the issues presented in the case, so as to determine whether bifurcation is most likely to result in a just final disposition of the litigation.

A. Prejudice

With regard to whether bifurcation will avoid prejudice to SenoRx, Hologic asserts that because the Motion to Bifurcate was filed at an early stage in the case, with the close of fact and expert discovery many months away, SenoRx would face little prejudice if the Motion were granted. (D.I. 16 at 2) This argument tends to ignore the harm that a plaintiff like SenoRx would face, were it to be successful in proving its infringement allegations, from, inter alia, the “inevitable delay, and resulting prejudice ... of two separate trials.” Joy Techs., Inc. v. Flakt, Inc., 772 F.Supp. 842, 849 (D.Del.1991); see also Willemijn Houdstermaatschaapij, 707 F.Supp. at 1435. Courts have noted that such prejudice is real, and cannot be mitigated by any action short of denying the request for separate trials. See Real v. Bunn–O–Matic Corp., 195 F.R.D. 618, 621 (N.D.Ill.2000).

Hologic also asserts that not granting bifurcation will prejudice it, as the parties are “hard-fought competitors” and inquiry into damages and willfulness issues is likely to be intrusive and onerous. (D.I. 16 at 8) However, Hologic does not articulate with specificity why this inquiry is likely to be any more onerous than in the typical patent case litigated between direct competitors, in which such discovery is regularly produced. At times, Hologic suggests that its most significant concern in this area regards the requirement to provide, in discovery, “sensitive commercial and financial information concerning [damages]” to SenoRx. (D.I. 25 at 7) However, again Hologic does not explain with particularity why the requirement to produce such documents in this case, under the auspices of an agreed-upon protective order, will be any more difficult or worrisome than it would be in any other such case. Moreover, Hologic will have the ability to seek relief from any unduly burdensome or onerous requests via the Court's discovery dispute procedures if such relief is appropriate under the law.

All told, the parties do not spend much time in their briefs discussing the prejudice prong. For its part, the Court finds that Hologic has not shown that any prejudice it might suffer in making the productions discussed above outweighs the harm SenoRx would face in seeing its...