The opinion of the court was delivered by: SAMUEL DER-YEGHIAYAN, District Judge
This matter is before the court on Plaintiff Mitutoyo Corporation's,
Mitutoyo America Corporation's, and C.E. Johansson AB's (collectively
referred to as "Mitutoyo") motion for summary judgment as to the validity
and enforceability of U.S. patent No. 4, 743, 902 ("902 patent"). Also
before the court is Defendant Central Purchasing, Inc.'s ("Central")
motion for bifurcation. For the reasons stated below we grant the motion
for summary judgment and deny the motion for bifurcation.
Central filed a complaint for declaratory judgment of patent invalidity
and unenforceability against Mitutoyo on or about March 29, 1995 in the
United States District Court for the Central District of California
("California suit"). The first amended complaint in that case asserted
that the 902 patent was invalid and unenforceable. The action was
transferred to the United States District Court for the District of
Columbia. The court granted Mitutoyo's motion for summary judgment on
several claims and dismissed the remaining claims with prejudice. Central
appealed the trial court's rulings, but Central voluntarily withdrew the
appeal. Central continues to assert in the instant action that the 902
patent is invalid and unenforceable and Mitutoyo has filed a motion for
summary judgment asking this court to preclude Central from asserting
that the 902 patent is invalid and unenforceable under the doctrine of
res judicata. Central has also filed a motion for bifurcation.
Summary judgment is appropriate when the record reveals that there is
no genuine issue as to any material fact and the moving party is entitled
to judgment as a matter of law. Fed.R.Civ.P. 56(c). In seeking a grant
of summary judgment the moving party must identify "those portions of
`the pleadings, depositions, answers to interrogatories, and admissions
on file, together with the affidavits, if any,' which it
believes demonstrate the absence of a genuine issue of material
fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)
(quoting Fed.R.Civ.P. 56(c)). This initial burden may be satisfied by
presenting specific evidence on a particular issue or by pointing out "an
absence of evidence to support the non-moving party's case." Id.
at 325. Once the movant has met this burden, the non-moving party cannot
simply rest on the allegations or denials in the pleadings, but, "by
affidavits or as otherwise provided for in [Rule 56], must set forth
specific facts showing that there is a genuine issue for trial."
Fed.R.Civ.P. 56(e). A "genuine issue" in the context of a motion for summary
judgment is not simply a "metaphysical doubt as to the material facts."
Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp.,
475 U.S. 574, 586 (1986). Rather, a genuine issue of material fact exists
when "the evidence is such that a reasonable jury could return a verdict
for the nonmoving party." Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986); Insolia v. Philip Morris, Inc., 216 F.3d 596,
599 (7th Cir. 2000). The court must consider the record as a whole,
in a light most favorable to the non-moving party, and draw all
reasonable inferences that favor the non-moving party.
Anderson, 477 U.S. at 255; Bay v. Cassens Transport
Co., 212 F.3d 969, 972 (7th Cir. 2000).
I. Motion for Summary Judgment Validity of Patent
Mitutoyo argues that it is entitled to summary judgment and Central
be precluded as a matter of law from contesting the validity and
enforceability of the 902 patent. In a patent infringement case a
district court applying the doctrine of res judicata applies its own
Circuit's law regarding the doctrine. Epic Metals Corp. v. H.H.
Robertson Co., 870 F.2d 1574, 1576 (Fed. Cir. 1989). The elements
for res judicata are: 1) final judgment, 2) identity of the cause of
action, and 3) identities of parties or privies in the suits.
Hawxhurst v. Pettibone Corp., 40 F.3d 175, 180 (7th Cir.
1994); see also Martino v. McDonald's System, Inc., 598 F.2d 1079,
1083-84 (7th Cir. 1979)(stating that res judicata is an "absolute
bar" to "every matter offered and received to sustain or defeat the
claim or demand and to every matter which might have been received for
that purpose . . ." and that for res judicata purposes a cause of
action includes defenses "that might have been raised.").
Central attempts to confuse the pertinent issues by arguing that there
is insufficient evidence for the court to conclude as a matter of law
that the devices at issue in the California suit are the same as the
devices in the instant suit. Central cites several cases which are
distinguishable from the instant set of facts because in all of those
cases infringement was an issue at dispute in the earlier cases, thus
making the devices' similarity relevant. Central does not dispute that
there was no counterclaim of infringement in the California suit. The
California suit was not concerned with infringement. Rather the suit was
brought by Central seeking to declare the 902 patent invalid and
unenforceable. We find that res judicata is applicable in the instant
case and therefore grant Mitutoyo's motion for summary
judgment and order that Central is precluded from asserting in this
action that the 902 patent is invalid and unenforceable under the
doctrine of res judicata. Central had its opportunity to litigate this
issue in the California suit and the District of Columbia court made a
final ruling, and Central is not entitled to another bite at the pear
before this court.
Central has filed a motion to bifurcate the discovery of and trial on
issues of infringement, invalidity and patent misuse from the discovery
of and trial on the issues of damages and willfulness. Pursuant to
Federal Rule of Civil Procedure 42 a court "may" bifurcate issues and
order separate trials if it will further "convenience," "avoid
prejudice," or "when separate trials will be conducive to expedition and
economy. . . ." Fed.R.Civ.P. 42(b). Central argues that
bifurcation of the issues will help to avoid jury confusion and will
limit prejudice. Mitutoyo opposes the bifurcation and we agree that the
liability, damages, and willful infringement evidence is intertwined to
the extent that mainly the same evidence and witnesses would be presented
at two different trials were we to grant the motion for bifurcation. We
do not find that a bifurcation of issues would serve any of the purposes
listed in Rule 42 and the interests of the efficient functioning of the
court system will be served absent a bifurcation. We also agree that
Central's attempt at bifurcating discovery at this late stage of the
proceedings is untimely. Therefore, we
deny the motion for bifurcation.
Based on the foregoing analysis we grant Mitutoyo's motion for summary
judgment and order that Central is precluded from asserting in this
action that the 902 patent is invalid and unenforceable, ...