UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Hypertherm, Inc.

v. Civil No. 05-cv-373-JD

Opinion No. 2008 DNH 214

American Torch Tip Company

O R D E R

 This case began as a patent infringement action. A year

later, American Torch Tip Company (“ATTC”) filed a counterclaim

as part of its amended answer, alleging eleven counts of

antitrust violations and unfair competition. The case was

bifurcated to address the patent infringement claims first,

followed by the counterclaim. Discovery closed a year and a half

ago for the patent infringement claims but remains open for the

counterclaim.

A dispute has arisen about discovery of information

pertaining to the invalidity of United States Patent No.

5,310,988 (“‘988 patent”) for purposes of the counterclaim. A

telephonic hearing was held on December 22, 2008, to consider the

parties’ motions and objections pertaining to the disputed

Case 1:05-cv-00373-JD Document 393 Filed 12/23/08 Page 1 of 4
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discovery. ATTC seeks discovery on the issue of patent

invalidity for its counterclaim. Hypertherm contends that the

issue of invalidity is not relevant to the counterclaim and will

be decided in the context the patent infringement claims. ATTC

argues that rulings pertaining to the patent claims do not apply

to the counterclaim.

The law of the case doctrine provides that “‘when a court

decides upon a rule of law, that decision should continue to

govern the same issues in subsequent stages of the same case.’” 

Naser Jewelers, Inc. v. City of Concord, 538 F.3d 17, 20 (1st

Cir. 2008) (quoting Arizona v. California, 460 U.S. 605, 618

(1983)). A court’s ruling on the validity or invalidity of a

patent becomes law of the case for subsequent proceedings unless

an exception to the doctrine applies. Ormco Corp. v. Align

Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007). Issues

decided in the first half of a bifurcated case become law of the

case for the remainder of the proceedings. In re Innotron

Diganotics, 800 F.2d 1077, 1085 (Fed. Cir. 1986).

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In this case, the issue of patent validity will be addressed

in the context of the patent infringement claims, which are

scheduled for trial in February. Once that decision has been

made, either in response to a motion or following trial, if

necessary, the court will address the issue of whether ATTC may

seek discovery on patent invalidity for purposes of the

counterclaim, and in the event discovery is allowed on this issue

a new discovery schedule will be set. 

Conclusion

The plaintiff’s objection to the magistrate judges’ ruling

on the defendant’s motion to compel (document no. 376) has been

considered, and the magistrate judge’s order is vacated. The

plaintiff’s motion for a hearing (doc. no. 377) is granted, and a

hearing was held on December 22, 2008.

Discovery on the invalidity of the patents in suit, for

purposes of the counterclaim, will be stayed pending the

determination of that issue in the context of the patent

infringement claims. The defendant’s motions to compel (doc.

nos. 368 and 370) are denied without prejudice to renew, if

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appropriate, after the patent claims are resolved. The

plaintiff’s motions for protective orders (doc. nos. 373, 384,

and 385) and to quash (doc. no. 382) are denied as moot, given

the stay of discovery on the patent invalidity issue.

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

December 23, 2008

cc: Jill C. Anderson, Esquire

Jacob K. Baron, Esquire

Steven M. Bauer, Esquire

Lucas M. Blower, Esquire

Colin G. Cabral, Esquire

Seth M. Cannon, Esquire

Joseph A. Capraro, Jr., Esquire

Christopher J. Carney, Esquire

Jeffery M. Cross, Esquire

Joseph T. Cattilo, Esquire

Ami D. Gandhi, Esquire

Maia H. Harris, Esquire

Marc H. Kallish, Esquire

Rhett R. Krulla, Esquire

Jonathan A. Lax, Esquire

Richard C. Nelson, Esquire

W. Scott O'Connell, Esquire

Jeremy P. Oczek, Esquire

Richard D. Rochford, Jr., Esquire

David W. Ruoff, Esquire

John T. Shapiro, Esquire

John M. Skeriotis, Esquire

Benjamin M. Stern, Esquire

Wayne Tang, Esquire

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