Au New Haven, LLC v. YKK Corporation, 1:15-cv-03411

Background

Plaintiffs Au New Haven, LLC and Trelleborg Coated Systems US, Inc. sued YKK and affiliates for patent infringement and breach of an Exclusive License Agreement that barred Defendants from using Plaintiffs’ technology in the "high end outerwear" market.
The Court previously held the contractual phrase "high end outerwear" ambiguous and said a jury must resolve its meaning.
Defendants requested leave to file an additional summary-judgment motion on that definition and alternatively moved to bifurcate the trial so a first trial would decide the phrase’s meaning before liability/damages are tried.
The Court denied leave to file another summary-judgment motion under Rule 16(b) for lack of good cause given numerous prior schedule extensions and the late timing of the request.
The Court granted Defendants’ Rule 42(b) motion to bifurcate: Trial 1 will determine the meaning of "high end outerwear"; Trial 2 will address liability and damages with the definition fixed by Trial 1 to avoid prejudice and juror confusion.
The Court found bifurcation compatible with the Seventh Amendment and refused to apply judicial estoppel to bar Defendants from advocating their proposed definition.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Leave to file an additional summary-judgment motion (Rule 16(b) good-cause)	Opposes extra briefing; wants to proceed to single trial	Needs new briefing to resolve meaning of "high end outerwear" pretrial	Denied — no good cause given prior extensions and late timing
Bifurcation of trial (Rule 42(b))	Opposes bifurcation; contends limiting instructions suffice and single trial preferred	Bifurcation avoids admission of irrelevant/prejudicial evidence and juror confusion	Granted — bifurcation will avoid prejudice and reduce confusion
Seventh Amendment risk from bifurcation	Bifurcation could force separate juries to assess overlapping facts (scienter), risking reexamination of same facts	Issues are distinct; second jury will be instructed to apply first jury’s finding	No violation — instruction and issue separation preserve Seventh Amendment rights
Judicial estoppel to limit Defendants’ proposed definition	Court already accepted Defendants’ earlier geographic definition; estoppel should bar changing positions	Court never adopted any definitive meaning; prior ambiguity ruling precludes estoppel	Denied — judicial estoppel inapplicable because court did not adopt a prior party position

Key Cases Cited

Madison Consultants v. FDIC, 710 F.2d 57 (2d Cir. 1983) (district court discretion to amend scheduling order in interests of justice)
Chevron Corp. v. Donziger, 800 F. Supp. 2d 484 (S.D.N.Y. 2011) (broad discretion to order separate trials under Rule 42(b))
Ricciuti v. New York City Transit, 796 F. Supp. 84 (S.D.N.Y. 1992) (only one Rule 42(b) factor needed to justify bifurcation)
Ismail v. Cohen, 706 F. Supp. 243 (S.D.N.Y. 1989) (bifurcation may be appropriate to avoid prejudice or inconvenience)
Blyden v. Mancusi, 186 F.3d 252 (2d Cir. 1999) (Seventh Amendment bars successive juries reexamining same factual issue)
Robinson v. Metro–North Commuter R.R. Co., 267 F.3d 147 (2d Cir. 2001) (distinguishing overlapping evidence from overlapping factual issues for Seventh Amendment analysis)
Gasoline Prods. Co. v. Champlin, 283 U.S. 494 (1931) (retrial/bifurcation permissible only if retried issue is distinct and separable)
New Hampshire v. Maine, 532 U.S. 742 (2001) (judicial estoppel prevents parties from asserting contrary positions adopted by tribunal)
Uzdavines v. Weeks Marine, Inc., 418 F.3d 138 (2d Cir. 2005) (judicial estoppel in Second Circuit requires a certain risk of inconsistent results)
Marx & Co., Inc. v. Diners' Club Inc., 550 F.2d 505 (2d Cir. 1977) (prejudicial effect of improperly admitted testimony not necessarily cured by cross-examination)
CSX Transp., Inc. v. Hensley, 556 U.S. 838 (2009) (jurors are presumed to follow court instructions)
Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93 (2016) (discussion of willful patent infringement and enhanced damages)