In IGT v. Bally Gaming Int’l Inc., C.A. No. 06-282-SLR (D. Del. April 28, 2010), a patent infringement action, Judge Robinson considered plaintiff’s renewed motion to dismiss defendants’ counterclaims related to antitrust, the Lanham Act and intentional interference with business relationships. These counterclaims were stayed due to Judge Robinson’s practice of bifurcating antitrust counterclaims (in addition to damages) because “they generally do not survive unless there is a finding of no infringement.” Id. at 1. Subsequently, Judge Robinson construed disputed claim terms and decided seven summary judgment motions, finding that defendant’s accused products infringe certain claims of the patents-in-suit. Id. at 2. The only remaining allegations for trial were plaintiff’s claim of willful infringement and defendants’ counterclaim of invalidity of one of the patents-in-suit. Id. Trial was canceled after defendants dismissed their counterclaim and the parties agreed to try willfulness with plaintiff’s claim for damages post-appeal. Id.
Plaintiff filed the pending motion to dismiss arguing that the stayed counterclaims “pose an impediment to moving the case to appellate review pursuant to 28 U.S.C. § 1292(c)(2). Id. at 3. Defendants argued that “the stay should be maintained for purposes of judicial economy, and reserved their right to address their claims substantively should the Federal Circuit find in their favor on appeal.” Id. at 5. Considering that defendants’ counterclaims likely do not survive if they don’t succeed on appeal, Judge Robinson granted plaintiff’s motion to dismiss the stayed counterclaims, without prejudice. Id. at 6. “Should the court’s opinion be reversed and the case remanded, the court will consider defendants’ request for further discovery and take up the merits of defendants’ claims in due course.” Id.