Columbia Insurance Co. v. Simpson Strong-Tie Company Inc

Background

Columbia Insurance Co. and MiTek Inc. sued Simpson Strong-Tie Company Inc. for patent infringement involving Claim 40 of U.S. Patent No. 10,316,510. Simpson counterclaimed that Claim 40 was invalid because it was anticipated by prior art or obvious in light of combinations of prior art.

The plaintiffs planned to assert post-grant-review estoppel, a statutory defense that can prevent a party from raising patent-invalidity grounds that it raised or reasonably could have raised during a post-grant review proceeding. The court had previously ruled that Simpson was barred from asserting the Cullen reference, but it found factual disputes concerning whether estoppel applied to the Chapin and Yamaguchi references. Those disputes remained for trial.

Motion to Bifurcate

Simpson moved under Federal Rule of Civil Procedure 42(b) to divide the trial into two phases. It proposed a bench trial—that is, a trial decided by the judge—on the plaintiffs’ post-grant-review estoppel defense before a jury trial on infringement and invalidity.

The plaintiffs argued that the estoppel issue should be resolved in one unified trial. They contended that the evidence and witnesses would overlap, that a jury should resolve disputed factual issues such as credibility, and that bifurcation would increase costs and delay the case.

Court’s Analysis

Rule 42(b) allows a court to order separate trials for convenience, to avoid prejudice, or to expedite and economize, while preserving any federal right to a jury trial. The court said bifurcation is generally an exception rather than the usual approach and considered separability of the issues, judicial economy, prejudice, and possible jury confusion.

The court concluded that post-grant-review estoppel is an equitable defense and that no jury-trial right applies to equitable defenses. It also found that the factual inquiry for estoppel—whether a skilled searcher exercising reasonable diligence could have discovered the prior-art references—was different from the factual inquiries involved in infringement and invalidity. The court found no indication that the bifurcated proceedings would require repeating witnesses.

The court further concluded that bifurcation would promote judicial economy. The court was already familiar with the estoppel issues because of earlier summary-judgment and expert-evidence proceedings, discovery on estoppel was closed, and resolving estoppel could eliminate the need to address some aspects of Simpson’s invalidity counterclaim. The court also found that a separate bench trial would reduce the jury trial’s length and the risk of juror confusion about complex issues involving patent classification, search tools, search strings, and expert testimony.

Finally, the court determined that any prejudice to the plaintiffs from additional delay or expense was minimal and did not outweigh the prejudice Simpson could face from presenting its estoppel arguments to a jury. The court found that each considered factor favored bifurcation.

Disposition

Judge Thomas S. Hixson granted Simpson’s Motion to Bifurcate. The order separates the trial structure only; it does not decide the remaining estoppel disputes, infringement, or patent invalidity on their merits.