Bifurcation and Consolidation Issues for Patent and Antitrust Claims

• Pages: 181-188

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CHAPTER V

BIFURCATION AND CONSOLIDATION ISSUES

FOR PATENT AND ANTITRUST CLAIMS

A. Consolidation Under Rule 42(a)

In some cases, patent claims and antitrust claims resulting from the

same occurrence or transaction will be raised in separate complaints.

The parties in such cases may request that the court consolidate the

actions for discovery and pretrial procedures under Federal Rule of Civil

Procedure 42(a).1 The Federal Circuit will treat a consolidated action as

“one merged unit for certain jurisdictional purposes,” and “no different

than a single action with counterclaims.”2

B. Bifurcation under Rule 42(b) and Rule 16(c)

1. Trial Bifurcation Generally

Courts consider several issues when deciding whether to allow

consolidation or bifurcation of claims in a case involving patent and

antitrust issues. Ultimately, however, whether to bifurcate or consolidate

lies within the court’s wide discretion.

Courts may bifurcate patent and antitrust claims for purposes of trial

under Federal Rule of Civil Procedure 42(b), which provides that “[f]or

convenience, to avoid prejudice, or to expedite and economize, the court

may order a separate trial of one or more separate issues, claims, cross

claims, counterclaims, or third-party claims” and that “[w]hen ordering a

separate trial, the court must preserve any federal right to a jury trial.”3

Such bifurcation is procedural, not substantive, and does not affect

1. Federal Rule of Civil Procedure 42(a) provides:

Consolidation. If actions before the court involve a common question

of law or fact, the court may:

(1) join for hearing or trial any or all matters at issue in the actions;

(2) consolidate the actions; or

(3) issue any other orders to avoid unnecessary cost or delay.

2. Spraytex Inc. v. DJS&T, 96 F.3d 1377, 1382 (Fed. Cir. 1996).

3. Fed. R. Civ. P. 42(b).