Intellectual Property Law

Judge Sue L. Robinson: Bifurcation of Damages and Willfulness for Discovery and Trial

By Karen E. Keller, Andrew A. Lundgren et al.

In recent cases, Judge Robinson has been making it her practice to bifurcate damages and willfulness in patent cases for purposes of both discovery and trial. Two recent decisions elaborate on this procedure and the Court's reasoning behind bifurcating damages and willfulness "in all but exceptional patent cases." See The Dutch Branch of Streamserve Development AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, Memo. Order (D. Del. Aug. 26, 2009); see also Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Aug. 26, 2009).

Noting the substantial patent docket pending in the District of Delaware, Judge Robinson states that in her experience "discovery disputes related to document production on damages and the Daubert motion practice related to damages experts are a drain on scarce judicial resources." See, e.g., The Dutch Branch of Streamserve Development, Memo. Order at 1-2. Furthermore, Judge Robinson notes that without bifurcation "the burden imposed on a jury in a patent trial is extraordinary" as they are to determine not only the technical issues surrounding an infringement and invalidity determination but then must "understand the complexities of the relevant market...in order to determine the economic consequences of their liability decisions." Id. at 2. It is because of these burdens that Judge Robinson believes that "bifurcation promotes the just and efficient resolution of what damages, if any should be awarded by: (1) giving the parties - those with the most expertise in the market - the first opportunity to translate the Federal Circuit's final legal decision on liability into practical commercial consequences; or (if the parties cannot resolve the matter) (2) giving the damages jury a focused dispute to resolve." Id. at 2.

In the Bosch case, the plaintiff further argued that willfulness cannot be bifurcated from infringement because it is entitled to have the same jury hear and decide both infringement and willfulness under the Seventh Amendement. Robert Bosch LLC, C.A. No. 08-542-SLR, Memo. Order at 2. The Court rejected this argument, consistent with Federal Circuit precedent that willfulness and infringement require different proof and therefore need not be tried at the same time and further noted that "willfulness is a damages issue, not a liability issue." Id. at 2-3. Judge Robinson also noted that although she "respect[s] plaintiff's right to a jury trial on the issue of willfulness" she "quer[ies] whether this right is so broad as to trump a court's right to manage its caseload, especially when the potential costs...are so high." Id. at 3 (noting in a footnote those costs being that willfulness "is an intrusive and inflammatory issue to discover and try").

The Dutch Branch of Streamserve Development AB v. Exstream Software, LLC, C.A. No. 08-343-SLR, Memo. Order (D. Del. Aug. 26, 2009).

Robert Bosch LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order (D. Del. Aug. 26, 2009).

Full post as published by Delaware IP Law Blog on August 28, 2009 (boomark / email).