Case 3:12-cv-02738-CAB-MDD Document 206 Filed 10/29/14 PageID.6836 Page 1 of 3
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`CASE NO. 12-cv-2738-CAB (MDD)
`WARSAW ORTHOPEDIC, INC.,
`MEDTRONIC SOFAMOR DANEK
`ORDER DENYING MOTION TO
`U.S.A., INC., MEDTRONIC
`BIFURCATE WITHOUT PREJUDICE
`PUERTO RICO OPERATIONS CO.,
`and OSTEOTECH, INC.,
`[Doc. No. 191]
`
`vs.
`NUVASIVE, INC.,
`
`AND RELATED
`COUNTERCLAIMS.
`
`Plaintiffs,
`
`Defendant.
`
`Before the Court is defendant/counterclaimant NuVasive, Inc.’s motion to
`bifurcate the jury trial of this patent infringement case. [Doc. No. 191.]
`Plaintiff/counterdefendants, the “Warsaw/Medtronic” entities,1 filed an opposition.
`[Doc. No. 197.] NuVasive filed a reply. [Doc. No. 203.] The Court finds this motion
`suitable for determination on the papers submitted and without oral argument in
`accordance with Civil Local Rule 7.1(d)(1). Having considered the submissions of the
`parties, the motion is DENIED without prejudice.
`
`1 The “Warsaw/Medtronic” entities include Orthopedic, Inc.; Medtronic Sofamor Danek,
`U.S.A., Inc.; Medtronic Puerto Rico Operations Co.; Osteotech, Inc.; Medtronic, Inc.; Medtronic
`Sofamor Danek Deggendorf GMBH; Metronic Logistics, LLC; Medtronic Xomed, Inc.; and
`Spinalgraft Technologies LLC.
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`Case 3:12-cv-02738-CAB-MDD Document 206 Filed 10/29/14 PageID.6837 Page 2 of 3
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`This patent infringement action has a long and involved history which is set forth
`in the parties’ papers and will therefore not be restated herein. In summary, despite a
`very complex beginning, the case now before the court involves a single patent asserted
`by some of the Warsaw/Medtronic entities against NuVasive, and a single patent
`asserted by NuVasive against some of the Warsaw/Medtronic entities. NuVasive seeks
`to bifurcate the jury trial and proceed only on the issues of infringement and invalidity
`as to each patent. Then, if necessary, sit a second jury to hear the damages portion of
`the case.
`NuVasive makes a number of arguments about the complexity of presenting
`damages evidence to a jury in combination with the liability evidence in a case
`involving sophisticated medical products, and the potential efficiency of first obtaining
`liability findings that might moot the need for the damages portion of the case. The
`court is not persuaded at this time that those arguments justify the expense, delay, and
`inefficiencies of impaneling two juries for this case.
`As patent cases go, this case is fairly straightforward, involving one patent on
`each side. The technology, although sophisticated, is not as challenging as the
`technology asserted in Phase I2 of this litigation, in which the jury heard liability,
`validity, and damages evidence on four patents. The fact and expert discovery
`regarding the parties’ damage theories as to the two patents at issue in this litigation is
`completed. NuVasive, according to its submission for the instant motion, is prepared
`to file motions with the court challenging the plaintiff’s damage claim, the result of
`which may impact the scope of the trial presentation. Until such motions are heard and
`decided, it is premature to evaluate the possible efficiencies of bifurcation.
`The primary justification presented for bifurcation is NuVasive’s contention that
`a decision from the Federal Circuit on issues pending on appeal from the Phase I
`litigation regarding the propriety of Warsaw’s damage theories in that case will dictate
`what can proceed in this action. Warsaw disagrees and contends the factual issues are
`
`2 Warsaw Orthopedic, Inc. v. NuVasive Inc., Case No. 3:08cv1512.
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`Case 3:12-cv-02738-CAB-MDD Document 206 Filed 10/29/14 PageID.6838 Page 3 of 3
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`not parallel. Argument of the Phase I appeal has been scheduled for December 1, 2014.
`There is, of course, no set time for a decision to issue, and a number of complex issues
`were submitted on the appeal from Phase I. Dispositive motions in this case are set for
`hearing on January 28, 2015. The status of the appeal and its relationship to the
`theories in this case can be addressed at the January hearing, and NuVasive may renew
`its request for bifurcation at that time, or at the pretrial conference. The court finds the
`request at this juncture premature and it is DENIED without prejudice.
`IT IS SO ORDERED.
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`DATED: October 29, 2014
`
`CATHY ANN BENCIVENGO
`United States District Judge
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