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Intellectual Ventures v. Symantec: Court Bifurcates and Stays Symantec’s Patent Misuse Defense

Intellectual Ventures (“IV”) filed a motion to bifurcate and stay discovery of Symantec’s patent misuse defense. The district court agreed with Intellectual Ventures. “While the Court views IV’s motion as essentially two motions one to bifurcate for a separate trial, see F.R.C.P. 42(b), and one to stay discovery, to which the general stay factors may be pertinent, see, e.g., Apotex, Inc. v. Senju Pharm. Co., 921 F. Supp. 2d 308, 313-14 (D. Del. 2013) it finds that the circumstances do not warrant departure from the Federal Circuit’s general guidance that antitrust and related issues be bifurcated in patent cases, and further finds that judicial economy warrants staying discovery related to these issues. See In re Innotron Diagnostics, 800 F.2d 1077, 1084 (Fed. Cir. 1986).”

The district court also found that the patent misuse defense would likely increase discovery and go well beyond the patent infringement and validity issues. “Symantec’s patent misuse defense raises complicated issues potentially involving extensive discovery well beyond what is relevant to the issues of infringement and invalidity.”

In addition, the district court noted that the patent misuse issue was raised as a defense rather than a counterclaim. “Symantec has raised patent misuse as a defense rather than an independent counterclaim, so the patent misuse issue may well not need to be resolved depending on the outcome of the patent issues (e.g., Symantec may invalidate the patent or be found not to infringe).”

As a result, the district court stayed all of the proceedings and discovery related to the patent misuse defense.

Intellectual Ventures I LLC v. Symantec Corporation, Case No. 1-13-cv-00440 (D. Del.

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or