Industrias Metálicas Marva, Inc. v. Lausell

172 F.R.D. 1, 37 Fed. R. Serv. 3d 1327, 1997 U.S. Dist. LEXIS 4277, 1997 WL 174759
CourtDistrict Court, D. Puerto Rico
DecidedApril 1, 1997
DocketCivil No. 96-1697 (JP)
StatusPublished
Cited by11 cases

This text of 172 F.R.D. 1 (Industrias Metálicas Marva, Inc. v. Lausell) is published on Counsel Stack Legal Research, covering District Court, D. Puerto Rico primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Industrias Metálicas Marva, Inc. v. Lausell, 172 F.R.D. 1, 37 Fed. R. Serv. 3d 1327, 1997 U.S. Dist. LEXIS 4277, 1997 WL 174759 (prd 1997).

Opinion

ORDER

PIERAS, District Judge.

I. INTRODUCTION

The Court has before it Defendant’s Motion Under Rule 42(b) for Bifurcation of Liability and Damages Issues into Separate Trials (docket No. 6).

Industrias Metálicas Marva, Inc. (“Marva”) brings this patent infringement action alleging that Lausell Aluminum Jealousies, Inc. (“Lausell”) window model Super Guard 2000 and its variations include louver assemblies that infringe on Marva’s patent. Specifically, the plaintiff argues that its window’s patented waterproofing system, consisting of various well-placed protrusions, grooves, edges, and channels, as well as overlapping louvers, has been incorporated into the defendant’s Super Guard 2000. Moreover, Marva claims that Lausell willfully and wantonly disregarded Marva’s rights in infringing on plaintiffs patent. Marva seeks damages estimated in excess of $5,000,000 along'-with costs and attorney’s fees. Lausell has counterclaimed seeking a decree invalidating Marva’s patent and attorney’s fees.

Lausell and Marva are major competitors in the Puerto Rico window market, and Lausell believes that Marva has brought this suit in order to conduct discovery into Lausell’s sensitive financial and marketing records. For this reason, Lausell now moves the Court to bifurcate under Federal Rule 42(b). Marva has opposed that motion (docket No. 11); Lausell has replied to Marva’s opposition (docket No. 15); Marva has rejoined Lausell’s reply to Marva’s opposition (docket No. 18); and finally, Lausell has surreplied to plaintiffs opposition (docket No. 19).

II. RULE 42(b)

Rule 42(b) reads as follows:

[2]*2“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, cross-claims, counterclaims, third-party 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 States.”

Fed.R.Civ.P. 42(b). Bifurcation is not and should not be routine, but should be encouraged where experience has demonstrated its worth. Id., advisory committee’s note to the 1966 amendment. It is obvious that one trial will generally be more expedient than two— one jury, one opening, one closing, and one direct and cross of each witness. However, many cases present multiple, complicated, and wholly distinct issues. In such cases, bifurcation may promote judicial economy by (1) rendering certain issues moot before vast resources are wasted litigating them, see Ellingson Timber Co. v. Great Northern Railway Co., 424 F.2d 497, 499 (9th Cir.1970); Victor Co. L.L.C. v. Ortho Organizers, Inc., Civ.A. No. 96-2123-GTV, 1996 WL 704404 (D.Kan. Nov. 5, 1996); (2) reducing jury confusion, see Barr Laboratories, Inc. v. Abbott Laboratories, 978 F.2d 98, 115 (3rd Cir.1992) (upholding a district court’s decision to bifurcate to reduce jury confusion in a case involving complicated evidence); and/or (3) facilitating settlement, see Victor Co., 1996 WL 704404 at *2. In still other cases, bifurcation might reduce prejudice. See e.g. Bath & Body Works v. Luzier Personalized Cosmetics, 76 F.3d 743 (6th Cir.1996); Helminski v. Ayerst Laboratories, 766 F.2d 208 (6th Cir.), cert. denied, 474 U.S. 981, 106 S.Ct. 386, 88 L.Ed.2d 339 (1985). If bifurcation can produce any of these advantages without running a substantial risk of dramatically increasing costs, decreasing expediency, or prejudicing either party, Rule 42(b) provides the Court with the discretion to bifurcate. It is for the proponent of bifurcation to prove the merits of applying the procedure to a given case. Willemijn Houdstermaatschaapij BV v. Apollo Computer, 707 F.Supp. 1429, 1433 (D.Del.1989).

The decision to grant or deny a motion for bifurcation under Rule 42(b) is wholly within the sound discretion of the trial court. González-Maŕin v. Equitable Life Assur. Soc., 845 F.2d 1140, 1145 (1st Cir.1988) (court of appeals unable to find, as of 1989, “a single case in which an appellate court has reversed a decision for failure to bifurcate”). “The decision ordering bifurcation is dependent on the facts and circumstances of each case.” Saxion v. Titan-C-Manufaciuring, Inc., 86 F.3d 553 (6th Cir.1996). Whatever procedure the court selects under Rule 42(b) “should be conducive to expedition and economy,” Id.; Warner v. Rossignol, 513 F.2d 678 (1st Cir.1975), and in rendering that determination, “the major consideration is directed toward the choice most likely to result in a just final disposition of the litigation.” In re Innotron Diagnostics, 800 F.2d 1077 (Fed.Cir.1986).

III. THE ARGUMENTS

Having canvassed the sweeping rubric of general Rule 42(b) jurisprudence, the Court can now look at the particular issue of separating damages from liability in this patent infringement case.

The defendant argues that bifurcation could significantly reduce the expense of this litigation by limiting both discovery and the initial trial to a single issue, liability, that is wholly distinct from and may be, depending on the jury’s determination, wholly dispositive of the remaining issue, damages. Moreover, the defendant contends that the plaintiff would not be greatly prejudiced by bifurcation. Nothing would be lost to the plaintiff in a bifurcated, as opposed to a unitary, trial — the plaintiff would not be precluded from putting on an equally compelling case in a bifurcated trial. Additionally, Lausell asserts that bifurcation would lesson the complexity and volume of issues on which a jury must render an opinion, making its task less difficult in this, a case involving various and complicated features. Finally, the defendant asserts that it would be prejudiced by a refusal to bifurcate. Specifically, the defendant is concerned that the plaintiff, a competitor in the window market in Puerto Rico, would use discovery [3]*3as a means of ferreting out confidential and sensitive financial and marketing information regarding the defendant’s business. An order of bifurcation, which would limit discovery to issues relevant to liability, could potentially avoid such an injurious and possibly unwarranted fishing expedition.

In support of its reasoning, Lausell points to Swofford v. B & W, Inc., 34 F.R.D. 15 (S.D.Tex.1963), aff'd, 336 F.2d 406 (5th Cir. 1964), cert. denied, 379 U.S. 962, 85 S.Ct.

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172 F.R.D. 1, 37 Fed. R. Serv. 3d 1327, 1997 U.S. Dist. LEXIS 4277, 1997 WL 174759, Counsel Stack Legal Research, https://law.counselstack.com/opinion/industrias-metalicas-marva-inc-v-lausell-prd-1997.