United States District Court, D. Massachusetts
KONINKLIJKE PHILIPS NV. and PHILIPS ELECTRONICS NORTH AMERICA CORPORATION, Plaintiffs,
ZOLL MEDICAL CORPORATION, Defendants. No. 12-12255-NMG
MEMORANDUM & ORDER
NATHANIEL M. GORTON, District Judge.
Defendant ZOLL Medical Corporation ("ZOLL") moves to stay the upcoming March, 2015 trial with respect to 1) the damages phase of the bifurcated patent case Civil Action No. 10-11041-NMG ("Philips I") and 2) liability and damages in a second, related patent case, Civil Action No. 12-12255-NMG ("Philips II"). For the reasons that follow, the motion to stay will be allowed, in part, and denied, in part.
Philips I commenced in June, 2010. This Court bifurcated that case and the liability phase was tried for 11 days in December, 2013. The jury found that 1) ZOLL directly infringed five of plaintiffs' patents, 2) plaintiffs directly infringed two of ZOLL's patents and 3) neither party was liable for indirect infringement of any patent. Both parties filed interlocutory appeals to the Federal Circuit Court of Appeals under 28 U.S.C. § 1292(c) (2) in August, 2014. The damages phase of that case is scheduled for trial to begin on March 2, 2015.
The Philips II case was filed in December, 2012. Two patents remain at issue and trial on liability and damages is scheduled to proceed simultaneously with Philips I on March 2, 2015.
A. Philips I
This Court has discretion to stay a damages trial in a bifurcated action for patent infringement during the pendency of an interlocutory appeal. In re Calmar, Inc., 854 F.2d 461, 463 (Fed. Cir. 1988) ("staying of a damages trial is discretionary and not mandatory").
The United States Supreme Court has recognized that large expenses are frequently incurred in damages trials and "where recoveries were ultimately denied by reversal of decrees on the merits." McCullough v. Kammerer Corp., 331 U.S. 96, 98 (1947). The Federal Circuit Court of Appeals likewise has acknowledged that "the policy underlying § 1292(c)(2) was to allow a district court to stay a damages trial pending appeal." In re Calmar, 854 F.2d at 463-64.
Plaintiffs contend that the following factors set forth by the United States Supreme Court in Hilton v. Braunskill should guide the Court's decision on the motion to stay:
(1) whether the stay applicant has made a strong showing that he is likely to succeed on the merits; (2) whether the applicant will be irreparably injured absent a stay; (3) whether issuance of the stay will substantially injure the other parties interested in the proceeding; and (4) where the public interest lies.
481 U.S. 770, 776 (1987).
Defendant responds that the Hilton factors govern the stay of an injunction pending appeal and do not control the decision to stay a damages trial pending appeal in a patent case. It insists that the First Circuit Court of Appeals instead generally considers:
(i) the interests of the civil plaintiff in proceeding expeditiously...; (ii) the hardship to the defendant, including the burden placed upon him should the cases go forward in tandem; (iii) the convenience of both the  courts; (iv) the interests of third parties;  (v) the public interest... (vi) the good ...