UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Marine Polymer Technologies, Inc.

v. Civil No. 06-cv-100-JD

Opinion No. 2010 DNH 062

HemCon, Inc.

O R D E R

As discussed at the final pretrial conference held on April

7, 2010, the jury trial will be bifurcated between the invalidity

issues and proof of damages. The jury pool will be informed that

the case involves claims of patent infringement, which have been

resolved by rulings that certain of HemCon’s products infringe

Marine Polymer’s patent. In the preliminary instructions, the

procedural posture of the case will be further explained to the

jury panel.

HemCon will proceed first and present its counterclaims and

defenses of patent invalidity. After the jury reaches a verdict

on invalidity, if one or more of the asserted claims remains

valid, the same jury will hear evidence on damages. Marine

Polymer Technologies, Inc. will proceed first in the damages

phase of the trial. HemCon’s counterclaim of inequitable conduct

will be addressed by a motion for summary judgment, and if

necessary, at a bench trial that will be held at a later time.

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The parties have filed several motions in limine that raise

issues related to the order of trial. HemCon, Inc. moves to

preclude evidence of infringement and damages during the

invalidity phase of the trial. Marine Polymer moves to preclude

any jury instruction about the ramifications of the order of

trial. Marine Polymer also moves to separate the trial of

inequitable conduct from the rest of the trial and to preclude

evidence of inequitable conduct.

A. HemCon’s Motion to Preclude Evidence of Infringement and

Damages from Invalidity Phase

HemCon contends that evidence of patent infringement and

evidence of infringement damages are not relevant to the

invalidity issues that will be tried in the first phase of the

jury trial. Marine Polymer contends that the jury should be

informed, as part of the overview of the case, that certain of

HemCon’s products have been found to infringe Marine Polymer’s

patent with a limiting instruction that the determination of

infringement should not affect the jury’s consideration of the

remaining issues.

As the court explained at the final pretrial conference, the

jury will be given an overview of the case that will include a

statement about the prior determination of infringement. The

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jury will also be informed that they may be asked to determine

infringement damages. The parties appear to agree that evidence

of infringement and of infringement damages is not relevant to

the invalidity defenses except that evidence of commercial

success of a product might be introduced in the context of

invalidity based on obviousness. 

Therefore, the jury will be informed of the infringement

determination. The court will explain the issues of invalidity

and damages that will be tried consecutively. Evidence that is

not relevant to an issue of invalidity will not be admissible

during the invalidity phase of the trial.

B. Marine Polymer’s Motion in Limine to Preclude Comment on the

Ramifications of Bifurcation

As the trial is bifurcated, if the jury were to find that

all of the asserted claims are invalid, the trial would end after

the first phase without considering damages. Marine Polymer

contends that the ramification of bifurcation is to suggest a

“short cut” to the jury to find invalidity in order to avoid a

longer trial. In other words, Marine Polymer is concerned that

the jury might decide the validity issues based on convenience

rather than evidence. To avoid that result, Marine Polymer asks

the court to order HemCon not to suggest a short cut to the jury.

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In response, HemCon agrees that the jury should not be given

an instruction, implication, or suggestion about an easy way to

shorten the trial. By way of an example of an improper

instruction on a short cut, HemCon challenges Marine Polymer’s

proposed jury instruction that if an independent claim is valid,

all of its dependent claims are also valid. HemCon contends that

the proposed instruction both suggests a short cut and is

incorrect under the law.

Without commenting on the challenged jury instruction, which

raises an issue about inconsistent verdicts that is better

addressed in the context of jury instructions, the parties agree

that short cuts based on bifurcation should not be suggested to

the jury. Therefore, no comment or suggestion shall be made that

suggests finding invalidity as a means to shorten the trial.

C. Marine Polymer’s Motion to Preclude Evidence on Non-Jury

Issues

HemCon’s counterclaim that the ‘245 patent is unenforceable

due to inequitable conduct will be addressed by the court after

the jury trial. Marine Polymer asks for an order precluding

HemCon from introducing evidence of inequitable conduct during

the jury trial. Marine Polymer also asks that all evidence,

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statements, and discussion about a possible permanent injunction

should be excluded from the jury trial.

In its objection to Marine Polymer’s motion, HemCon

primarily contests the proposal that inequitable conduct and the

invalidity issues should be tried separately. Bifurcation is now

resolved. No reference to inequitable conduct may be made during

the jury trial.

HemCon agrees not to introduce evidence, statements, or

argument about the possibility that Marine Polymer would seek a

permanent injunction against HemCon and the effects of an

injunction. HemCon reserves the right to introduce such evidence

in the event that Marine Polymer “opens the door” and for

impeachment.

No evidence, comment, statements, or argument about

inequitable conduct and the possibility of a permanent injunction

will be allowed during the jury trial, absent prior notice to the

opposing counsel and approval of the court.

D. Marine Polymer’s Motion for Bifurcation

Marine Polymer asks the court to bifurcate the case between

a jury trial on damages and invalidity and a bench trial on

inequitable conduct. Along with bifurcation, Marine Polymer

seeks to preclude HemCon from raising allegations of inequitable

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conduct during the jury trial. Marine Polymer also argues that

HemCon’s inequitable conduct counterclaim is without merit.

The court has established the order of trial, as is stated

above. The inequitable conduct counterclaim will not be

considered at this time. Instead, the issue will be addressed

through summary judgment practice, and if necessary, a bench

trial will be held to hear evidence of inequitable conduct. The

court will not address the merits of the counterclaim in the

context of a motion in limine.

Conclusion

For the foregoing reasons, HemCon’s motion to preclude

evidence of infringement and damages (document no. 190) is

granted in part and denied in part as is more fully explained in

this order. Marine Polymer’s motions to preclude instructing the

jury on the ramifications of bifurcation (document no. 198), to

preclude evidence on issues not for the jury (document no. 203),

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and to bifurcate (document no. 220) are granted in part and

denied in part as is provided in this order.

SO ORDERED.

 ____________________________

Joseph A. DiClerico, Jr.

United States District Judge

April 8, 2010

cc: Julie M. Baher, Esquire

Garet K. Galster, Esquire

Daniel R. Johnson, Esquire

Heather E. Krans, Esquire

Joseph A. Kromholz, Esquire

Lynda Q. Nguyen, Esquire

Brian M. Poissant, Esquire

Daniel D. Ryan, Esquire

Ognian V. Shentov, Esquire

Jonathan M. Shirley, Esquire

Daniel E. Will, Esquire

Leigh S. Willey, Esquire

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