cee Minute Gir Form (0697)

United States District Court, Northern District of Illinois

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Name of Assigned Judge Sitting Judge if Other
-— Magistrate Todge James B. Moran than Assigned Judge
CASE NUMBER 02 C 5058 DATE 7/1/2003
CASE AptarGroup, Inc. Vs. Owens-Illinois, Inc. et al.
TITLE
[In the following box (a) indicate the party filing the mation, eg, plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.)
Memorandum Opinion and Order
DOCKET ENTRY:
(1) oO Filed motion of [ use listing in “Motion” box above.]
(2) oO Brief in support of motion due
@) Qa Answer brief to motion due. . Reply to answer brief due. :
(4) o Ruling/Hearing on set for at
(5) Oo Status hearing[held/continued to] [set for/re-set for] on set for at
(()) Oo Pretrial conference[held/continued to] [set for/re-set for] on set for at :
) a Trial[set for/re-set for] on at :
(8) a [Bench/Jury trial] [Hearing] held/continued to at
(9) a This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to}
OFRCP4(m) OlLocal Rule 41.1 OFRCP41(a)(1) O FRCP41(a)(2).
ao) [Other docket entry) | Enter Memorandum Opinion and Order. Defendants move to bifurcate the
issues of liability and willfulness for purposes of discovery and trial. That motion is granted. Status
hearing set for July 10, 2003 at 9:15am.
(a) [For further detail see order attached to the original minute order.]
No notices required, advised in open court.
No notices required. number of notices
Notices mailed by judge’s staff. 7 j
Notified counsel by telephone. Ruy GA. va)
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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
APTARGROUP, INC., )
)
Plaintiff, ) )
) .
vs. ) No. 02 C 5058 gute
) y3 at
OWENS-ILLINOIS, INC. and ARMIN TOOL)
AND MANUFACTURING CO., )
)
Defendants. )

MEMORANDUM OPINION AND ORDER

Defendants move to bifurcate the issues of liability and willfulness for purposes of
discovery and trial. That motion is granted.

The parties agree on one thing: bifurcation is within the sound discretion of the court,
Each marshalls a number of cases in support of its opposing position, with defendants seeking
bifurcation and plaintiff opposing it. A review of those cases discloses such varied
circumstances that an extended analysis of each case serves little purpose. A few observations
will suffice. The Federal Circuit encourages bifurcation when a party is faced with what has
come to be known as the “Quantum dilemma”: a choice between the lawful assertion of the
attorney-client privilege and avoidance of a willfulness finding if infringement is found.

Quantum Corp. v. Tandon Corp., 940 F.2d 642 (Fed. Cir. 1991). The support from some of

the professional literature is even stronger. The district courts are reluctant to bifurcate,
however, if there is not a good reason to bifurcate damages as well, or it is uncertain that the
party faces the “Quantum dilemma,” or legal advice becomes relevant for other reasons, or

prior rulings establish that the patent holder has a strong liability case (although this last



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No. 02 C 5058 Page 2

reason appears to be somewhat of a make-weight). They divide as to whether or not intent
can ever be relevant to a non-infringement defense.

Here the “Quantum dilemma” is raised by the submission of attorney opinion letters
in camera. The issue of damages has already been bifurcated, there appears to be no reason
why legal advice would be relevant to any issue other than willfulness, and plaintiff’s liability
case has taken a real hit from this court’s Markman construction. Finally, we think there is
a basis for believing that an “intent” issue mixed up with an infringement issue will have a
tendency to confuse and possibly prejudice the jury, without any real relevant evidence

benefit.

JAMES B. MORAN
or Judge, U. S. District Court

Mo , 2003.