Mareiners, LLC v. Anomatic Corporation

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
MAREINERS, LLC,
Plaintiff,
v. 	Case Number 2:22-cv-3433
JUDGE EDMUND A. SARGUS, JR.
ANOMATIC CORPORATION, 	Magistrate Judge Kimberly A. Jolson
Defendant.
ORDER
This matter is before the Court on Defendant Anomatic Corporation’s Motion to Bifurcate
(ECF No. 101), Plaintiff Mareiners, LLC’s Memorandum in Opposition (ECF No. 108), and
Defendant’s Reply (ECF No. 116). Defendant requests that this Court bifurcate Plaintiff’s
correction of inventorship claim (ECF No. 76, Count 5) from Plaintiff’s breach of contract and
trade secret claims (Id., Counts 1–4). (ECF No. 101.)
Courts may “order a separate trial of one or more separate issues [or] claims” in a case,
“[f]or convenience, to avoid prejudice, or to expedite and economize.” Fed. R. Civ. P. 42(b). “Only
one of these criteria need be met to justify bifurcation.” Saxion v. Titan-C-Mfg., Inc., 86 F.3d 553,
556 (6th Cir. 1996). But “as the Rule indicates, and as our circuit has recognized,” a court
analyzing a bifurcation request “must consider several issues such as potential prejudice to the
parties, potential confusion to the jury, and the relative convenience and economy which would
result.” In re Beverly Hills Fire Litig., 695 F.2d 207, 216 (6th Cir. 1982).
District courts generally have discretion to determine whether and how to bifurcate, based
“on the facts and circumstances of each case.” Saxion, 86 F.3d at 556. However, where a court
divides a trial on legal and equitable issues, all issues to which a jury right attaches must first be
tried to a jury before equitable issues are tried to the court. See Beacon Theatres, Inc. v. Westover,
359 U.S. 500, 510 (1959); Nat'l Union Elec. Corp. v. Wilson, 434 F.2d 986, 988 (6th Cir. 1970).
Case: 2:22-cv-03433-EAS-KAJ Doc #: 158 Filed: 12/05/25 Page: 1 of 3 PAGEID #: <pageID>

2
Here, Defendant argues that bifurcation is necessary because the correction of inventorship
claim will be decided by the Court, while all other claims will be decided by a jury. (ECF No. 101-
1.) So, Defendant contends, bifurcation will promote judicial economy, protect against a risk of
prejudice, and minimize the risk of juror confusion. (Id.) Plaintiff counters that Defendant’s
Motion should be denied because Defendant failed to confer with Plaintiff regarding the Motion
and it is unclear exactly which evidence is relevant to solely the correction of inventorship claim.
(ECF No. 108.) At the same time, however, Plaintiff acknowledges that some level of bifurcation
could promote judicial economy and notes that it “would consider stipulating to bifurcation of the
inventorship claim and reserve evidence solely relevant to inventorship for a separate hearing” if
that evidence is properly defined after meeting and conferring with Defendant. (Id., PageID 3405,
3409.)
This Court is satisfied that bifurcation of Plaintiff’s correction of inventorship claim
promotes judicial economy, avoids potential prejudice, and minimizes juror confusion. “An action
for correction of inventorship under § 256, standing alone, is an equitable claim to which no right
to a jury trial attaches.” Shum v. Intel Corp., 499 F.3d 1272, 1277 (Fed. Cir. 2007); see also Blue
Gentian, LLC v. Tristar Prods., Inc., 70 F.4th 1351, 1358 (Fed. Cir. 2023) (“Inventorship is a
question of law.”). By bifurcating the inventorship claim, the number of days required for trial
before a jury will be reduced because less evidence will be presented to the jury. And because that
evidence will only be relevant to a complex patent claim that will be decided by the Court,
bifurcation is compelling, as it “will help prevent jury confusion, while not inconveniencing and
prejudicing the parties or wasting scarce judicial resources.” See Ferrarelli v. Federated Fin. Corp.
of Am., 253 F.R.D. 432, 433 (S.D. Ohio 2008).
Case: 2:22-cv-03433-EAS-KAJ Doc #: 158 Filed: 12/05/25 Page: 2 of 3 PAGEID #: <pageID>

3
Though bifurcation is warranted, the Court recognizes that this case involves issues and
related evidence that are relevant to all of Plaintiff’s claims, including the equitable correction of
inventorship claim. To ensure Plaintiff’s right to a jury trial on its legal claims is not abridged,
such common issues and evidence must be submitted to the jury before this Court decides the
equitable claim. See Tull v. United States, 481 U.S. 412, 425 (1987) (citation modified) (“If a legal
claim is joined with an equitable claim, the right to jury trial on the legal claim, including all issues
common to both claims, remains intact.”). Following a jury trial on the legal claims, the Court will
hear all issues and related evidence that are relevant to only the correction of inventorship claim.
The Court will then decide the inventorship claim based on all issues and evidence relevant to the
claim, adopting the jury’s determinations on the common issues. Id.
Accordingly, the Court GRANTS Defendant’s Motion to Bifurcate. (ECF No. 101.) The
Parties are ORDERED to meet and confer regarding the scope of issues and related evidence that
are only relevant to Plaintiff’s correction of inventorship claim (ECF No. 76, Count 5). The Parties
are further ORDERED to file a stipulation regarding the scope of such issues and evidence to be
bifurcated or a status report detailing the status, not substance, of the Parties’ efforts to do so within
30 days of this Order.
Because the Undersigned will preside over the inventorship claim in a bench trial, he
declines to hold the Settlement Conference set for December 30, 2025. (See ECF No. 129.)
Therefore, the Clerk is DIRECTED to VACATE the Settlement Conference. (ECF No. 129.)
IT IS SO ORDERED.
12/5/2025 	s/Edmund A. Sargus, Jr.
DATE 	EDMUND A. SARGUS, JR.
UNITED STATES DISTRICT JUDGE
Case: 2:22-cv-03433-EAS-KAJ Doc #: 158 Filed: 12/05/25 Page: 3 of 3 PAGEID #: <pageID>