Free Respone to Objections - District Court of Delaware - Delaware

Case 1:04-cv-00343-JJF Document 688-6 Filed 06/12/2007 Page1 of 4

Case 1:04-cv-00343-JJF Document 688-6 Filed 06/12/2007 Page 2 of 4
Vtwzm
Not Reported in F.Supp.2d Page l
Not Reported in E.Supp.2d, 2004 WL 2535074 (N.D.Ill.)
(Cite as: 2004 WL 2535074 (N.D.Ill.))
H twelve defendants (collectively "original
Only lllc Westlaw Clllllloll is cullclllll, avajlablg Defendants") located in Asia, the United States, and
Europe. Plaintiff sued the original Defendants for
patent infringement arising out of camera phones
Unllnd States Dlsnlcl Conn manufactured and sold by them. Plaintiff asserted one
N D llllnnls Engl nl n Dlvlslnn patent against all original Defendants and one patent
Wll;LlAM REBER LLC Plnlnlllsl against two of the original Defendants, and joined all
V ’ ’ original Defendants in one suit. Original Defendants
SONY EMCSSON MOl3lLE Cnnnnnnlcnllnns filed a motion to bifurcate pursuant to Rule 42lbg of
(USA lnclnnd Sony Ellnssnn Mnblln the Federal Rules of Civil Procedure, seeking to
Cnmlnnnlcnnnns AB Dnlnndnnls bifurcate the issue of liability from the issue of
No Civ A 03 4174 ` damages and willfulness for both discovery and trial.
Senl 27 2004 In its motion to bifurcate, the original Defendants
Raymond D. Niro, Dam D. Nas, vtsins D. Dossas, eggeed thee egeeveey Agvelveel egeggegee ef
Rnllnn P. Greens nnn Wllllnln Wl Flnnnnbnln Nnnl documents written 1n various languages other than
$CnVnnn Hnllnl & ’N""j“”"—""nn Clncngn llllnnls nn English, witnesses who speak other languages, and
Plnlnllfn ’ ’ ° that many of these documents and witnesses were
` located outside of the United States. William Reber.
Tnnnnln C MCDnnnnnll Rnlnnll E Browne LLC v. Samsung Elec. America, [nc., 220 F.R.D. 533.
-5 I . · . 7
Timothy M. Morella, Neal, Gerber &E1senberg LLP, 335 N_D [U 200* Due ee lheee Fllcumsumces
Chicago, Illinois, Edward H. Rice, Natalie J. Spears, blfurgamm Served me lptgmsts 9f judlclal _eeegemy»
Sonnenschein Nath as Rsssmhsi °mf"‘?“"yr .““d S““P“°“Y. W"h°“‘ p“‘—'“d"?"’. ‘°
LLP Clncngn llllnnls Mnlln n Alnnnl Alnnlnnn Plaintiffs right to a jury trial. Further, the original
Knnllnn Ph D’ lnln ll M Cnslnn Knn n nlll M Defendants claimed that denying the motion to
j.;....$; • · · • · ·
Bnrnnnnn Amstel Rnlnslnln & Ebnnslnln LLP New bifurcate would be prejudicial because the original
Ynrlg Nnnl Ynrk {nr Dnlsnndnnl ’ Defendants were direct competitors in the wireless
’ ’ ` telephone market and there was potential for
inadvertent disclosure of financial information.
MEMORANDUM OPINION AND ORDER Plaintiff contended that bifurcation would make
discovery and trial more expensive and delay the
DENLOW Mnglsnnln l ultimate disposition of the case.
l INTRODUCHON This Court granted bifurcation in its March 12, 2004
*1 Plnnnff Wllllnnl Rnbnr LLC ("Plnlnllfll. nl order, reasoning that the volume of documents and
"Reber") moves this Court to vacate the portion of its Wllnessés ee; gw Complcxlty ef the demegee
Marsh 12, 2004 order Dtrumtisg the issue Drttsbaitty C? Cu ““"“ it gm “SF “’_ €""’{‘“a;L“§
from the issue of damages. Plaintiffs claim is that the Clrcumstanccs _t ft Weeeegeee bllfLlmaUOn‘
lnfnrnnllnn nrdnl gmntnd by lllls Conn was lnnsnln Further, the original Defendants direct competittonm
almost solely, on the number of defendants and the Fhc Wgelege eelegheee market mmm that , egy
nllannnslnn bnlwnnn llnnnl Tllnlnfnlnl dun ln the inadvertent disclosure of confidential business
reduction in the number of defendants from six information in discm/ery regarding damages would
competing defendant gasps ts one ssmpsssg be geeeely geeigeeeegl-
df d "S ",th f b`f t' _ _ _ _
ng €l1nl?;;rgT;;£l$ lglgy Elle clggggigs Sigel; ugggx However, from the time of filing the suit until now,
Plnlnnllls ln nn n n ls glnnlnll Reber settled with all but one defendant group, Sony.
` Due to this, the complexity and difficulty that the
ll FACTUAL BACKGROUND Court cited as voluminous enough to call for
Plaintiff is the owner of two United States patents, blflirczluon has €Vap0mt°d’ ee bf? gev mk _Of
Nnn ,l {gal 070 and S ml {,58 lcnllncnvnly the prejudice due to the release of sensitive information
"Rnlnnl nnlnnlsul that ll clnlmnll-had bnnn infringed by to competing companies. Plaintiff therefore moved to
© 2007 Thomson/W est. No Claim to Orig. U.S. Govt. Works.

Case 1:04-cv-00343-JJF Document 688-6 Filed 06/12/2007 Page 3 of 4
Not Reported in F.Supp.2d Page 2
Not Reported in F.Supp.2d, 2004 WL 2535074 (N.D.Ill.)
(Cite as: 2004 WL 2535074 (N.D.Ill.))
vacate this Court's March 12, 2004 bifurcation order. bifurcation, the volume of documents and witnesses,
as well as the potential prejudice due to the fact that
*2 First, Plaintiff claims the discovery in the case the original Defendants were competitors in the
against Sony is not as complex as originally wireless phone industry, gave rise to the extenuating
expected. Production of documents from the Plaintiff circumstances in this case. The original Defendants’
revealed only 5,500 pages of documents and Sony motion to bifurcate the issue of liability from the
has produced 7,800 pages of documents——most of issue of damages was granted. ld. at 542.
which are in English. Plaintiff claims that any
outstanding documents should not add substantial However, this Court has observed that bifurcation in
complexity to the dispute. patent cases is the exception, not the rule. Real. 195
F.R.D. at 620. Since the March 12, 2004 opinion, this
Sony responds that this case is still complex though case has been significantly simplified, and the
only one of the original Defendants remains; there reasons the Court cited as sufficient for bifurcation
are still six claims of two patents against at least are no longer at issue. While Sony’s claim that
fifteen different phones manufactured by Sony. Sony allowing the bifurcation order to remain will serve
asserts that significant time will have to be spent on judicial economy, that fact alone is not enough to
discovery with each carrier to determine the support a bifurcation order. "Courts should not order
significance and usage of the feature allegedly separate trials when bifurcation would result in
covered by the patents—in—suit. Sony believes that it unnecessary delay, additional expense, or some other
can demonstrate Plaintiff is without standing in form of prejudice. Essentially, courts must balance
bringing this suit, and therefore it would serve the equities in ruling on a motion to bifurcate."
judicial economy to decide the issue of liability prior Reber, 220 F.R.D. at 536 (quoting Lairrazn Carp. v.
to commencing discovery on the issue of damages. Hewlerr-Packard Ca., 791 F.Supp. 113. H5)
(E.D.La. l992 1.
III. DISCUSSION
The issue in this case is whether this Court's decision *3 In Real, this Court rejected a motion for
to grant the original Defendants motion to bifurcate bifurcation claiming that the case involved "one
should be vacated because the potential prejudice to patent, one claim, and one allegedly infringing
original Defendants is no longer a concern and the product." Real, 195 F.R.D. at 622. Real involved the
extenuating circumstances at the time of the March owner of a patent for a beverage dispensing machine
12, 2004 decision are no longer present. The decision who filed a patent infringement suit against Bunn—O-
to bifurcate pursuant to Rule 42gb; is made on a case Matic Corporation. Id. at 619. The Defendant filed a
by case basis and is reserved for the sole discretion of motion to bifurcate for discovery and trial the issue of
the Court. Real v. Bzuzn—O—/Marie Carp., l95 F.R.D. liability from the issue of damages, claiming that
618, 619 (N.D.Ill.2000l. In those cases in which bifurcation would serve the interest of economy,
motions to bifurcate have been granted, the facts and efficiency and simplicity. Id. at 620. This Court ruled
circumstances were such that bifurcation lent itself to that there was no reason to bifurcate, as the separate
judicial economy while not unduly prejudicing any trials would not further any interest expressed in Rule
party. Such circumstances include but are not limited ;l2_(_l;). Id. In Real this Court pointed out that when
to the following: a) a need for voluminous documents weighing the competing equities under Rule 42(b),
to resolve damage issues; b) complex infringement prejudice is the most important consideration. la'. at
issues; c) multiple patents, infringing products, 621. This Court ruled there was not any danger of
claims, counterclaims or parties; or d) the probability prejudice that could not be remedied, nor were any of
that the defendant would prevail on the infringement the extenuating circumstances that warrant separate
issue, thereby eliminating the need to address the trials present. Ia'. at 622.
issue of damages. ld. at 62l.
While Sony asserts that Reber's claim is dissimilar to
In a March 12, 2004 opinion, this Court held that the claim in Real, this Court is not convinced. First,
bifurcation was appropriate because the case this Court strongly considered the fact that the
involved two patents, thirteen claims, six competing potential detrimental effects of inadvertent disclosure
defendant groups, sixteen product lines, and several of sensitive financial information outweighed any
affirmative defenses. RGIJFI`, 220 F.R.D. at 538. prejudice to the Plaintiff in its March 12, 2004
Discovery would involve thousands of pages of opinion. Re/ver. 220 F.R.D. at 539. The previous
documents and hundreds of witnesses from around concem of this Court regarding sensitivity and
the world. ld. Although this Court normally disfavors confidentiality has been lifted due to the fact that
© 2007 Thomson/W est. No Claim to Orig. U.S. Govt. Works.

Case 1:04-cv-00343-JJF Document 688-6 Filed 06/12/2007 Page 4 of 4
Not Reported in F.Supp.2d Page 3
Not Reported in F.Supp.2d, 2004 WL 2535074 (N.D.Ill.)
(Cite as: 2004 WL 2535074 (N.D.Ill.))
there is only one defendant group remaining.
Second, Sony does not convince this Court that there
exist extenuating circumstances to continue the
bifurcation order. Sony asserts that this case is
complex enough to warrant bifurcation based solely
on the fact that several wireless phone carriers will
need to be included in discovery. The type of
discovery and computation remaining in this case are
the same types that are regularly performed in patent
litigation.
IV. CONCLUSION
Bifurcation is to be ordered only when clearly
necessary. Bifurcation is the exception, not the rule.
This case is no longer an exception because of the
settlements reached with all of the original
Defendants, except Sony. For the foregoing reasons,
Plaintiffs motion to vacate the March 12, 2004
bifurcation order is granted with respect to the issues
of liability and damages. In all other respects, this
Courts March l2, 2004 order shall remain in full
force and effect.
SO ORDERED
Not Reported in F.Supp.2d, 2004 WL 2535074
(N.D.Ill.)
END OF DOCUMENT
© 2007 Thomson/W est. No Claim to Orig. U.S. Govt. Works.

Case 1:04-cv-00343-JJF

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