In Re Varian Medical Systems, Inc.

NOTE: This order is nonprecedential.
Wniteh ~tates ~ourt of §ppeaIs
for !be jfeheraI ~irtUit
IN RE VARIAN MEDICAL SYSTEMS, INC.,
Petitioner.
Miscellaneous Docket No. 113
On petition for writ of mandamus to the United States
District Court for the Western District of Pennsylvania in
case no. 2:0B-CV-01307, Judge Arthur J. Schwab.
ON PETITION
Before LOURIE, PROST, and MOORE, Circuit Judges.
MOORE, Circuit Judge.
ORDER
Varian Medical Systems, Inc. 01arian) petitions for a
writ of mandamus to direct the United States District
Court for the Western District of Pennsylvania to conduct
a jury trial on issues of invalidity prior to, or in conjunc-
tion with, a trial on willfulness. Varian also moves to stay
the jury trial on willfulness scheduled to commence on
January 23, 2012. The University of Pittsburgh of the
Commonwealth System of Higher Education filed a
response and Varian subsequently filed a reply.
IN RE VARIAN MEDICAL SYSTEMS 2
The University of Pittsburgh of the Commonwealth
System of Higher Education sued Varian for infringement
of claims of U.S. patent no. 5,727,554 (554 patent) related
to a respiratory gating system. On December 21, 2011,
the district court granted partial summary judgment of
infringement and denied a motion for summary judgment
of invalidity on the issue of enablement. On the same
day, the district court issued a pretrial order that sched-
uled a jury trial on willfulness to be held on January 23,
2012. That order stated, inter alia, that the parties "will
not be permitted to 'backdoor' other issues into this trial."
Varian moved for reconsideration of the pretrial or-
der. On December 27, 2011, the district court denied
Varian's motion for reconsideration in part, expressly
noting that Varian "is not entitled to present at trial on
the issue of willfulness any evidence relevant to the
defense of Plaintiff's charge that Varian willfully in·
fringed the '554 patent, including evidence related to the
noninfringement and invalidity positions." The district
court also stated that "[t]he trial will focus on the narrow
issue of willfullness [sic] as set forth in Defendant's Mo-
tion for Partial Summary Judgment."
Subsequent to this order, the parties submitted issues
to the court for the willfulness trial. The plaintiff pro-
posed the following three issues:
1. Whether reliance on Varian's invalidity
defenses ... is objectively unreasonable;
2. Whether the objectively defined risk of in-
fringing the '554 patent was either known or
so obvious that is should have been known to
Varian at the time it was infringing a valid
patent;
3. If that answer to the second question is
yes, whether there was a later time period
during which the objectively-defined risk of
3 IN RE VARIAN MEDICAL SYSTEMS
infringing ... was no longer known or so ob-
VIOUS ..••
A. 206. The district court adopted all of these issues for
trial.
At a January 13, 2012 hearing, at the plaintiff's sug-
gestion, the district court offered Varian the option to also
try invalidity at the January 23 trial. Varian responded
that "[t]here would be no way to do it." The district court
thus denied the plaintiff's request to try invalidity.
The remedy of mandamus is available only in extraor-
dinary situations to correct a clear abuse of discretion or
usurpation of judicial power. In re Calmar, Inc., 854 F.2d
461, 464 (Fed. Cir. 1988). A simple decision to have a trial
on a single issue cannot meet this exacting standard.
Varian makes much of the district court's December 23,
2011 statement that, at its willfulness trial, Varian could
not present "any evidence relevant to the defense of Plain-
tiff's charge that Varian willfully infringed." A. 283. Had
this been the only guidance from the district court, we
may agree that mandamus is appropriate. But the dis-
trict court corrected any error by adopting the plaintiffs
proposed issues for trial, which clearly allow Varian to
present arguments on invalidity and noninfringement as
they relate to willfulness. A. 206. If there were any
doubt, the district court clarified the scope of the trial in a
pretrial conference on January 13, 2012:
MR ANTHONY: Thank you, Your Honor ....
We're not trying invalidity. Perhaps we need
a sidebar but I presume invalidity is totally
out of this part of the case.
THE COURT: No. We're doing as to whether
the invalidity defenses were objectively un-
reasonable. That is what my order of court
says.
IN RE VARIAN MEDICAL SYSTEMS 4
Obviously, in order to determine whether a defense was
reasonable, the jury must consider the substance of that
defense. The jury should not decide the ultimate issue
but Varian should be allowed to present all invalidity
issues that are not presently adjudicated that are rele-
vant to determining the objective reasonableness of its
willfulness argument.
This is not mandamus-worthy. The main thrust of
Varian's argument is that the district court is denying it a
jury trial on invalidity. There is no indication that the
district court will refuse to have a later trial on invalid-
ity. In fact, the district court offered a trial on invalidity
and Varian refused, citing lack of preparation time.
Without a denial of a jury trial on these issues, the case
law cited by Varian is inapposite.
The choice to delay the invalidity trial is left to the
sound discretion of the district court-the court with in-
depth knowledge of the case and its issues. Its decision to
proceed in this manner does not amount to an "extraordi-
nary situation" that would justify mandamus. In re
Calmar, Inc., 854 F.2d at 464. Further, Varian's concerns
regarding claim and issue preclusion are purely specula-
tive and do not require us to step in and dictate the dis-
trict court's management of its own docket.
Accordingly,
IT Is ORDERED THAT:
(1) The petition is denied.
(2) The motion to stay is denied.
5 IN RE VARIAN MEDICAL SYSTEMS
FOR THE COURT
JAN 20 2012 lsI Jan Horbaly
Date Jan Horbaly
Clerk
cc: Mark S. Davies, Esq.
R. Ted Cruz, Esq.
s8 FILED
u.s. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
JAN 202012
JAN HORBALY
CLERK