Free Answering Brief in Opposition - District Court of Delaware - Delaware

Case 1:07-cv-00156-JJF

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EXHIBIT E

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DEWWARE

DENTSPLY INTERNATIONAL, INC. a Delaware corporation,

Plaintiff, v. MINNESOTA MINING AND MANUFACTURING COMPANY, a Delaware corporation, Defendant.

)

1 1 1

.
Civil Action No. 91-355-SLH

1 1

1 1

1 1

@

Steven J. Balick, Esquire, of Ashby & Geddes, Wilmington, Delaware; attorneys for plaintiff. Of Counsel: Michael C. Elmer, Esquire, and Stephen T. Sullivan, Esquire, of Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D. C . Robert K. Payson, Esquire, and William J. Marsden, Esquire, Potter, Anderson & Corroon, Wilmington, Delaware; attorneys defendant. Of Counsel: Frank P. Porcelli, Esquire, John R. Schiffhauer, Esquire, and Mary D Mosley-Goren, Esquire, of . & Richardson, Boston, Massachusetts; and Terry1 K. Qualey, Esquire, and Carolyn A. Bates, Esquire, of Minnesota Mining Manufacturing Co., St. Paul, Minnesota. of

for
Fish

and

J#EMORANDUM OPINION

Dated:

July 26, 1993

Wilmington, Delaware

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I

l

INTRODVCTION
Dentsply International, Inc. (nDentsply'') commenced

this action seeking a declaratory judgment that its manufacture

and sale of certain state-of-the-art dental adhesive systems do not infringe Minnesota Mining and Manufacturing Company's ( n 3 M w )
U.S. Patent No. 4,719,149 (the n ' 1 4 9 patentvw). The patent in

suit pertains to a "primerM used in said dental adhesive systems. Both parties presently sell and manufacture such systems. Dentsply's action is grounded on its claim that the '149 patent is invalid and unenforceable. Dentsply also claims 3M threatened

it with patent infringement in nbad faithow 314 counterclaims that its patent is valid and infringed by Dentsply.
3M further

claims Dentsply willfully infringed the '149 patent and accordingly seeks increased damages.
Both parties request

payment of their attorneys* fees in connection with this litigation.
3M demands a jury trial on all issues so triable.

Before the Court is Dentsplyfs motion for bifurcation into sequential jury trials. Dentsply's request contemplates a

two-stage jury trial process: The first stage on liability and, depending on the outcome therein, a second stage, immediately after the first and before the same jury, either on Dentsply's claim of bad faith assertion of patent enforcement or on 3M's willful infringement claim and damages.
3M opposes the motion.

For reasons that follow, Dentsplyes motion to bifurcate will be
denied.

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11.

'

STANDARD OF REVIBW

Rule 42(b) of the Federal Rules of Civil Procedure governs the motion at bar.
Under Rule 42(b), It[t]he 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
claim^.,..^

... of any separate issue or of any number
Willemiin Houdstermaatschaa~ii

Trial courts are given broad discretion when

deciding a motion to bifurcate.

gV v . A ~ o l l oComwuter fnc., 707 F. Supp. 1429, 1433 (D. Del.
1989).

Decisions under Rule 42(b) essentially involve a weighing

of "the 'overall equities' of the case.n

I .at 1433-34. d

w[B]ifurcation is a matter to be decided by the trial judge, as a result of an informed exercise o f discretion, on a case-by-case basis.I1

& at 1434.

Although this Court has mobserved that

patent cases often present circumstances uniquely favoring bifurcation of the liability and damages issues, W ' it remains true that *'[i]n patent cases, as in others, separate trials should be t h e exception, not the rule." Laitram Corm. v.

Hewlett-Packard Co., 791 F. Supp. 113, 114 (E.D. La. 1992) (citing cases)

.

In support of its motion to bifurcate, plaintiff argues
that "[elf primary concern to Dentsply is the unfair prejudice that would result if the jury hears all of 3 M w s inflammatory ~~ Willemiin H o u d s t e r m a a t s c h a a ~ BV, 707 F. Supp. at 1433 (citing Smith v. Alveska Piveline Serv. Co., 538 F. Supp. 977, 982 (D. Del. 1982))
1.

..

.

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willful infringement allegations at the same time the jury decides the liability issues.I1

(D.I. 92 at 11)

Dentsply

suggests bifurcation would alleviate any such nunfair prejudicen since 3M, under Dentsply's requested procedure, would present its evidence supporting willful infringement, if at all, in the second phase of the case after the jury reaches a verdict finding liability against Dentsply.
3M counters that bifurcation is inappropriate in the

instant case because, according to 3M, there are substantial areas of overlapping evidence and issues making bifurcation inefficient, inconvenient and unfair t o 3M. This Court previously has recognized "that an overlapping of issues is significant to the decision whether to bifurcate.IV Willemiin Houdstermaatschaa~ii BV, 707 F. Supp. at DuPont De Nemours
&

1434 (citing Jikzona. Inc. v. E.I. Supp. 227, 233-34 (D. Del. 1984)).

Co., 607 F.

MThe degree to which the

issues overlap can often best be assessed by examining the amount of evidence and the number of witnesses that would be presented at both trials."

BV, 707 F . Supp. Willemiin ~oudstennaatschaaai"!

at 1434 (citing Oraanic Chemicals v. Carroll Products. Inc., 86
F.R.D.
468, 469 (W.D. Mich. 1984)).

Although 3M asserts that several areas of overlap are present, of particular concern is the question of whether evidence supporting 3 M 1 s claim against Dentsply for willful infringement properly would be introduced during the liability

stage of a bifurcated trial.

Since W n f a i r prejudice that would

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result if the jury hears

... 3 M 1 s inflammatory willful

infringement allegations at the same time the jury decides the liability issuesI1 is Dentsply's I1primary concern8I in moving to bifurcate (D.I. 92 at ll), and since bifurcation would not alleviate this prejudice if 3M nonetheless was entitled to present evidence of willful infringement during the liability trial, resolution of this question is of substantial importance
'

in deciding the motion at bar.
3M represents that its case both on willful

infringement and on patent validity will include evidence o f Dentsplyts alleged wcapyinggq:
3M expects to prove Dentsply evaluated 3Mts patented products, saw how valuable the innovation would be in the marketplace, and saw that its current products could not compete with the new 3M technology. -Therefore, Dentsply was motivated t o copy and did copy the innovation and willfully infringe 3M's patent, taking sales away from JM, the extent of which sales helps to prove the value and validity of the patents the motivation for Dentsplyls copying.

--

(D.I. 97 at 10)
In opposing this argument, Dentsply contends that evidence of ncopyingn and associated evidence of an alleged infringer's intent to infringe "relates primarily to a claim for ~ increased damages, not to l i a b i l i t ~ . (D.I. 107 at 6-7 authorities)) (citing

Although this form of evidence may V e l a t e f ]

primarilym t o a claim for willful infringement and increased

0

damages, it is settled that n[c]opying is an indicium of
4

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nonobviousness, and is to be given proper c eight.^

Qiversitech

C o r ~ .v. C e n t u ~ Steus, Inc., 850 F.2d 6 7 5 , 679 (Fed. Cir. 1988) (citing Windsurfinu International. Inc. v. AMF. Inc., 782 F.2d
995, 1000 (Fed. Cir.), cert. denied, 477 U.S. 905 (1986) (copying

of patented invention is indicative of nonobviousness)).

Since 3M apparently will rely on evidence of DentsplyVs alleged copying in support of its willful infringement and its patent validity claims, it appears that this ninflammatoryn evidence would be presented during both stages of a bifurcated trial. Therefore, the alleviation of Itunfair prejudicettwhich

Dentsply seeks with this motion would not be accomplished, or would be partially accomplished only, by permitting bifurcation.
3M points out that various evidentiary matters relating

e

to the commercial success of the patented technology would be
relevant both to patent validity and to damages. In response

Dentsply contends, relying upon paine. Webber. Jackson & Curtis,

Inc. v. M e a l Lvnch. Pierce. Fenner

L

S m i a Inc., 587 F. Supp. argument

1112 (D. Del. 19841, that this Court has rejected %he

that commercial success, as related to nonobviousness, is
intertwined with the issue of damages." Contrary to Dentsply's
(D.1.

107 at 9)

argument, this Court has held that

evidence of ngcommercial success@ is a relevant secondary consideration in a determination of obviousness under 36 U.S.C. section 103, [EEj-ne. Webbey, 587 F. Supp. at 11161; and it is indisputable that such evidence will be considered by a court

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assessing damages." Supp. a t 1434.

Willemiin Houdstermaatschaa~iiBV, 707 F.

Dentsply further contends that @*[c]ommercialsuccess for obviousness purposes is of a sharply different character than use of financial information during [the] damages phase [of a patent infringement trial] .*

(D.I. 107 at 9) The Court

@@acknowledgesthat the issue of commercial success is not ordinarily determined by a detailed analysis of exhaustive and detailed financial data, such as is required for proof of damages, but rather by whether the product is, broadly speaking, an accepted product and a big seller." Houdstermaatschaa~llBV, 707 F. Supp.
0 .

Willemfin

a t 1434

(quoting paine,

*

Webbey, 587 F. Supp. at 1116.

Nonetheless, it is clear from the

record that bifurcation in the instant case would require 3M to present at least some, if not a substantial amount of evidence twice, and "although a minor evidentiary overlap may not strongly militate against bifurcation, it certainly does not favor bifurcation.@* allemiin Houdstermaatschaap~i BVf 707 F. Supp. at
1434.

Accordingly, the Court concludes that the presence of overlapping evidence weighs against bifurcation. The Court

further finds that the requested bifurcation procedure will not serve the "primaryn purpose underlying Dentsplyls motion, alleviation of "unfair prejudicefn since much of the purportedly winflammatory*8allegations relating to willful infringement are

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included in the ov&rlapping evidence which properly would be presented during both stages of a sequential trial. Dentsplyfs second general argument in support of its motion to bifurcate is that sequential trials will increase jury comprehension and ameliorate confusion arising from the complexities of this patent case. "The burden of showing a

significant risk of confusion is on the party requesting bifurcation."

fd. at 1435.

The Court finds, for reasons stated

below, that Dentsply has not met its burden in this regard. Dentsply contends that this is a "highly complex@gcase. The Court disagrees.

As to the technology at issue, while there

are technical complexities which the jury will be required to confront, fundamentally this case is comprehensible because the products involved are to some extent familiar to laymen.
As

Dentsply concedes, the patent in'suit "deals with products that are used to pre-treat [a] tooth before a filling is placed [in] or a material is bonded to the t [ o ~ ] t h . ~ (D.1 107 at 12) Furthermore, although it is true, as Dentsply argues, that the jury in this case will have to consider Varied evidentiary presentations," that is true of almost any civil case, certainly of any patent case, and it does not provide a sufficient basis for bifurcation. Likewise, the numerous and to some extent

complex issues which the jury will tackle in this case are not so unusual or compelling as to warrant bifurcation. Dentsply's final argument is that bifurcation will promote expedition and judicial economy.

The Court is

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unpersuaded by this argument for the following reasons.

First,

as discussed above, there are substantial areas of overlapping
evidence and presentation of the same evidentiary materials twice, even to a minor extent, certainly will not promote efficiency and economy. Second, the Court foresees that

bifurcation in this case will result in substantial delays as a result of disputes regarding the admissability of evidence during either stage of a sequential trial.

See Willemiin
Indeed, the

Houdstermaatschaa~ii BV, 707 F. Supp. at 1435.

briefing presently before the Court amply supports this prediction. Additionally, it cannot be disputed that two trials

are likely to consume more time than one, and under the procedure requested by Dentsply, there will be a second trial irrespective of which party prevails during the first stage of proceedings. Finally, the Court finds persuasive 3nvs contention that it should not be deprived of its "legitimate right to place before the jury the circumstances and atmosphere of the entire cause of action

... brought into the court.n
8 U.S.P.Q.2d

Nvlok Fastener
1092, 1093 (N.D. Ohio
207,

C o r ~ . v. Industrial Nut CorD.,
1988) (quoting

J n re Beverly Hills Fire Litiaatioq, 695 F.2d
The Court agrees that 3M should be

217 (6th Cir. 1982)).

entitled to npresent to the jury the whole real-world picture of
3M's innovation and commercial success, Dentsply's

[alleged use]

of that innovation, and the benefits Dentsply [allegedly]
achieved in terms of sales and profits from its [use], and should

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not be required to break into pieces what is really one integrated story.lv
IV.
CONCLUSION

(D.I. 97 at 25)

For the reasons stated above, Dentsplyls motion to
bifurcate will be denied.

An Order consistent with this

Memorandum Opinion shall issue.

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I N THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

DENTSPLY INTERNATIONAL, I N C . a Delaware corporation,
Plaintiff ,

1
MINNESOTA MINING AND MANUFACTURING COMPANY,

)

Civil Action N o . 91-355-SLR

1
1

a Delaware corporation,
Defendant.

1 1

,

1 1

At Wilmington this

&*

day of July 1993, for the

reasons set forth in the Court's accompanying Memorandum Opinion issued this day;

IT IS ORDERED that Dentsplyls motion to bifurcate,
Fed.R.Civ.P. 42(b), will be, and hereby is, DENIED,

(D.I. 91)'

Uni

1 . Plaintiff's request for oral argument hereby is denied since the facts and legal contentions are adequately presented in the materials before the Court and argument would not significantly aid the decisional process. (D.I. 109)

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