Joseph J. Farnan: Overlapping Evidence Stalls Bid to Bifurcate Inequitable-Conduct Defense

A recent decision by district judge Joseph J. Farnan Jr. serves to remind litigators that bifurcation is not always a sure bet. In the underlying litigation, the Court rejected an attempt to carve out an inequitable-conduct defense:

“Defendants must meet a high burden to be successful [in proving the defense]. In light of this burden, the potential that duplicative evidence regarding the alleged prior art will be presented at an inequitable conduct trial and at subsequent trials on infringement and invalidity weighs against bifurcation . . . . Accordingly, bifurcating trial on the issue of inequitable conduct will not promote judicial efficiency.”

The winning argument? Plaintiff’s assertion that it would have to present “much of the same background testimony” in both proceedings to describe the scope of the patents-in-suit and contrast the prior art.

WebXchange Inc. v. Dell Inc., C.A. No. 08-132-JJF (D. Del. Dec. 30, 2009) (Farnan, J.).

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