U.S. District Court For The Eastern District Of Texas Bifurcates Trial Over Counterclaims Asserting Patent Infringement Claims Directed To Distinct Technologies
On February 23, 2022, Judge Payne of the United States District Court for the Eastern District of Texas (“EDTX”) granted plaintiff’s motion to sever defendant’s counterclaims asserting patent infringement of claims directed to technologies that are distinct from those at-issue in plaintiff’s offensive case. United Services Automobile Association v. PNC Bank, NA, 2-20-cv-00319.
On September 30, 2020, Plaintiff United Services Automobile Association (“USAA”) brought patent infringement claims directed towards check deposit technology. On February 24, 2021, defendant PNC Bank N.A.’s (“PNC”) brought counterclaims alleging that various features of USAA’s banking platforms infringe four of PNC’s patents. PNC asserted claims directed to check deposit technology, as well as claims directed to transferring funds and tracking income versus spending technology. USAA only sought to sever the claims concerning the latter.
In granting USAA’s motion, the district court found that expanding the scope of the technologies presented to the jury adds unnecessary complexity to an already complex matter, thereby increasing the risk of jury confusion. Moreover, there were few common questions of fact or law as between those counterclaims and USAA’s claims because those counterclaims had separate experts and documentary proof. Finally, the court minimized the burden of a second trial and the additional resources needed to complete the second trial. As such, only PNC’s claims related to the check deposit technology will be presented at trial.