ORDER (DEF.’S MOTION TO BIFURCATE LIABILITY FROM DAMAGES AND WILLFULNESS AND TO STAY DISCOVERY AND PROCEEDINGS – DKT. NO. 261) (PL.’S MOTION TO DISMISS PATENT CLAIMS AND COUNTERCLAIMS WITHOUT PREJUDICE – DKT. NO. 320) (PL.’S MOTION TO SEAL – DKT. NO. 357) (DEF.’S MOTION FOR LEAVE TO FILE SUR-REPLY – DKT. NO. 372)
MIRANDA M. DU UNITED STATES DISTRICT JUDGE
Before the Court is Defendant Google Inc.’s Motion to Bifurcate Liability from Damages and Willfulness and to Stay Discovery and Proceedings Related to Damages and Willfulness (dkt. no. 261). The Court has also reviewed Plaintiff Unwired Planet, LLC’s opposition (dkt. no. 278) and Defendant’s reply (dkt. no. 288). For the reasons discussed below, the Court grants the Motion to Bifurcate.
Also before the Court is Plaintiff’s Motion to Dismiss Patent Claims and Counterclaims without Prejudice (dkt. no. 320). Plaintiff seeks dismissal without prejudice of two non-elected patents and Defendant’s related counterclaims. The Court has considered Defendant’s opposition (dkt. no. 342), Plaintiff’s reply (dkt. no. 358), and Defendant’s sur-reply (dkt. no. 373). For the reasons discussed below, Plaintiff’s Motion to Dismiss is granted in part and denied in part.
Plaintiff initiated this action in September 2012, alleging that Defendant directly and indirectly infringes claims in 10 patents relating to mobile phone technology. (Dkt. no. 1 ¶¶ 27-30.) Plaintiff also alleges that Defendant willfully infringes its patents. (Id. ¶ 31.) Among other forms of relief, Plaintiff seeks damages to compensate for Defendant’s alleged infringement and enhanced damages based on Defendant’s alleged willful infringement. (Id. at 10-11.) In answering the Complaint, Defendant asserted 20 counterclaims seeking declaratory judgment of invalidity and noninfringement for each of the asserted patents. (Dkt. no. 28 at 9-17.) Currently, five patents remain in suit because Plaintiff elected to narrow its asserted claims and because the Court stayed three patents pending review by the Patent and Trademark Office. (See dkt. nos. 296, 233.) Plaintiff alleges that nine of Defendant’s products infringe the remaining patents-in-suit.
III. MOTION TO BIFURCATE
A. Legal Standard
Courts may bifurcate a trial “[f]or convenience, to avoid prejudice, or to expedite and economize.” Fed.R.Civ.P. 42(b). Rule 42(b) “confers broad discretion upon the district court to bifurcate at trial, thereby deferring costly and possibly unnecessary proceedings pending resolution of potentially dispositive preliminary issues.” Zivkovic v. S. Cal. Edison Co., 302 F.3d 1080, 1088 (9th Cir. 2002). The determination to bifurcate is made on a case-by-case basis. Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305, 1320 (Fed. Cir. 2013). In determining whether to bifurcate, a court may consider the following factors: “avoiding prejudice, separability of the issues, convenience, judicial economy, and reducing risk of confusion.” Bates v. United Parcel Serv., 204 F.R.D. 440, 448 (N.D. Cal. 2001). A court’s “major consideration is directed toward the choice most likely to result in a just final disposition of the litigation.” In re Innotron Diagnostics, 800 F.3d 1077, 1084 (Fed. Cir. 1986). The moving party “has the burden of proving that bifurcation is justified given the facts in [a] case.” Spectra-Physics Lasers, Inc. v. Uniphase Corp., 144 F.R.D. 99, 101 (N.D. Cal. 1992).
Defendant argues that bifurcation is appropriate in light of the number of patents-in-suit and the number of allegedly infringing products, their technological complexity, and the complicated damages scheme jurors will need to apply to each patent-in-suit. Plaintiff argues that bifurcation is premature, that this case is not as complex as Defendant alleges, and that bifurcation would waste judicial resources and would prejudice Plaintiff. The Court finds that bifurcation is appropriate because it will promote judicial economy without unduly prejudicing either party. See Smith v. Alyeska Pipeline Serv. Co., 538 F.Supp. 977, 982 (D. Del. 1982).
First, the Motion to Bifurcate is not premature. Defendant filed the Motion in April 2014. Although fact discovery was set to close on May 30, 2014, the parties agreed to continue discovery beyond that deadline. (See dkt. nos. 448, 449.) The Court held a Markman hearing on August 20 and 21, 2014. After the Court issues its claim construction order, the parties will narrow the asserted claims and prior art references, participate in a settlement conference, complete expert disclosures and depositions, and file any dispositive motions. (Dkt. no. 187 at 3-4.) Thus far, the litigation has demonstrated that the patents-in-suit and allegedly infringing products are ...