4:12-cv-11758-GAD-MKM Doc # 372 Filed 09/16/14 Pg 1 of 4 Pg ID 32382
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`Civil Action No.12-cv-11758
`HON. GERSHWIN A. DRAIN
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`EVERLIGHT ELECTRONICS CO., LTD.,
`and EMCORE CORPORATION,
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`Plaintiffs/Counter-Defendants,
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`v.
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`NICHIA CORPORATION, and
`NICHIA AMERICA CORPORATION,
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`Defendants/Counter-Plaintiffs,
`
`v.
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`EVERLIGHT AMERICAS, INC.,
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`Defendant.
`____________________________________/
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`ORDER DENYING NICHIA’S REQUEST TO REALIGN THE PARTIES [#358],
`GRANTING EVERLIGHT’S MOTION TO MODIFY THE COURT’S SCHEDULING
`ORDER [#363] AND SETTING TIME LIMIT FOR ORAL ARGUMENT ON
`SEPTEMBER 23, 2014
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`I.
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`INTRODUCTION
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`This is a patent action involving light emitting diode devices. Presently before the Court
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`is Nichia’s Request to Realign the Parties, filed on August 13, 2014. Also, before the Court is
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`Everlight’s Motion to Modify the Court’s Scheduling Order, filed on September 8, 2014. A hearing
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`on these matters was held on September 12, 2014. For the reasons that follow, the Court will deny
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`Nichia’s Request to Realign the Parties and will grant Everlight’s Motion to Modify the Court’s
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`Scheduling Order.
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`II.
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`NICHIA’S REQUEST TO REALIGN THE PARTIES
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`In the present motion, Nichia requests that the Court realign the parties because Nichia is the
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`only patentee remaining in this action, Everlight’s declaratory judgment claims are actually defenses
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`to Nichia’s infringement claim, and realigning the parties will permit a more logical presentation
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`of evidence at trial and avoid the risk of juror confusion as to the burden of proof. Conversely,
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`Everlight maintains that it should remain the Plaintiff in this action because it still bears the burden
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`of proof on its claims. Everlight disagrees with Nichia that realignment will simplify the
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`presentation of evidence to the jury and argues that Nichia is merely trying to gain a tactical
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`advantage at trial. The Court tends to agree with Everlight and will deny Nichia’s request to realign
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`the parties.
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`The district court has broad discretion in deciding the realignment of parties and orders of
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`proof. Anheuser-Busch, Inc. v. John Labatt Ltd., 89 F.3d 1339, 1344 (8th Cir. 1996). Generally,
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`the privilege of opening and closing the case rests with the party that has the burden of proof.
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`Martin v. Cheesebrough-Pond’s, Inc., 614 F.2d 498, 501 (5th Cir. 1980). Courts have declined to
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`order realignment where parties to a declaratory judgment action each bear the burden of proof on
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`specific issues. See Anheuser-Busch, 89 F.3d at 1343-44. For instance, in Anheuser-Busch, the
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`Eighth Circuit Court of Appeals affirmed the district court’s denial of a request for realignment,
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`concluding that:
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`[The defendant] argues that it should have been allowed to present its case first, as
`the plaintiff, because it carried the burden of proof in the trademark action . . . even
`though [the plaintiff] initiated this lawsuit as a declaratory judgment action.
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`*
`*
`*
`While [the defendant] bore the burden of proof on the trademark count in [the
`plaintiff’s] complaint, [the plaintiff] bore the burden of proof on the other two
`counts.
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`*
`*
`*
`In the circumstances of this case, we do not believe that the District Court abused its
`discretion by denying [the defendant]’s motion to set the order of proof and realign
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`the parties. Both [the defendant and the plaintiff] bore the burden of proof on
`distinct counts of their cause of action. The District Court understandably chose to
`allow the actual plaintiff, the party that filed the lawsuit, to proceed first.
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`Id. at 1344.
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`Nichia is correct that the Supreme Court recently held that the patentee always has the
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`burden of proof in an action for declaratory judgment involving infringement of a patent.
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`Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843 (2014). However, this does not
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`alter the fact that Everlight carries the burden on its claim of invalidity. Moreover, the Court cannot
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`ignore that Everlight chose to bring the instant action rather than Nichia filing this action to protect
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`its patent rights. This fact, coupled with the fact that both parties bear the burden of proof on
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`distinct counts, leads this Court to conclude that realignment of the parties is not warranted under
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`the circumstances. Nichia’s Request to Realign the Parties is therefore denied.
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`III.
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`EVERLIGHT’S MOTION TO MODIFY THE COURT’S SCHEDULING ORDER
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`In the present motion, Everlight argues that this matter would benefit from a settlement
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`conference prior to the Court’s Final Pretrial Conference, which is currently set for October 29,
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`2014. Nichia opposes Everlight’s request because the parties recently attended facilitation, thus
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`Nichia believes a second settlement conference will prove to be unproductive. Nichia also asserts
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`that it would be inappropriate for the undersigned to conduct any settlement discussions because
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`some of the issues raised herein will be resolved by the Court rather than by a jury.
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`With these considerations in mind, this Court contacted the Honorable Avern Cohn, the most
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`experienced, knowledgeable and able patent litigation judge within the Eastern District of Michigan,
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`to determine whether he would be willing to conduct settlement negotiations in the instant matter.
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`Judge Cohn indeed agreed to assist with the settlement negotiations and has entered a Notice of
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`Status Conference requiring the parties to appear on September 30, 2014. As such, the parties are
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`hereby advised that they shall promptly respond to Judge Cohn’s requests for documents and
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`pertinent materials. Once the parties meet with Judge Cohn on September 30, 2014, and Judge
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`Cohn has scheduled the settlement conference, the Court will enter an Order modifying the current
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`scheduling order.
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`III.
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`HOUSEKEEPING
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`At the September 12, 2014 hearing, the parties raised some issues about the current schedule
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`with respect to the filing of motions in limine, as well as inquired about the length of time the Court
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`will allow the parties to argue during the hearing on their motions for summary judgment. Because
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`the Court will be issuing a new scheduling order, the question concerning the motion in limine filing
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`deadline is premature. Everlight and Nichia shall each be allowed twenty minutes to argue in
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`support of summary judgment, and Everlight and Nichia shall each have twenty minutes to argue
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`against the opposing party’s request for summary judgment.
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`IV.
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`CONCLUSION
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`Accordingly, based on the foregoing considerations, Nichia’s Request to Realign the Parties
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`[#358] is DENIED.
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`Everlight’s Motion to Modify the Court’s Scheduling Order [#363] is GRANTED.
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`SO ORDERED.
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`Dated: September 16, 2014
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`/s/Gershwin A Drain
`GERSHWIN A. DRAIN
`UNITED STATES DISTRICT JUDGE
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