Willfulness and Liability, Separate But Equal?

In Bosch, the parties brought claims and counterclaims for patent infringement. Id. at *1. Prior to trial, the defendant moved to bifurcate the issues of liability and damages. The District Court for the District of Delaware granted the motion and stayed discovery on damages and willfulness, which it deemed a damages issue. Id. After a jury trial and entry of judgment on liability, the parties appealed. Id. The plaintiff filed a motion to dismiss the appeals, which was denied, and sought reconsideration of its motion, which was also denied. Id. The Federal Circuit sua sponte granted a rehearing en banc to consider whether the court has jurisdiction under Section 1292(c)(2) over appeals from liability determinations prior to a trial on damages and willfulness determinations. Id.

At oral argument, Bosch argued that an “accounting” under Section 1292(c)(2) “is limited to an accounting of an infringer's profits and cannot include a determination of damages” because “historically an accounting included only the ascertainment of an infringer's profits.” Id . at *2. Bosch also argued that “whatever an accounting is, it cannot be a trial on damages” because “an accounting was a proceeding before a special master ' available only in courts of equity,” which excludes modern jury trials because “juries do not sit in equity.” Id. at *6. Thus, “an accounting must be limited to a special master's determination of damages.” Id. In contrast, Pylon argued that “an accounting included a trial on damages, including the determination of willfulness.” Id. at *2.