Although it requires some reading between the redacted lines, Judge Stark's recent ruling in H. Lundbeck A/S v. Apotex, Inc., C.A. No. 18-88-LPS is worth the effort. It shows that while sometimes exclusion orders leave the door open a crack to introduce the excluded evidence in some other fashion, that is not always the case.
The first exclusion order in the case, issued in June, applied Pennypack to exclude an infringement theory disclosed for the first time in an expert report. According to that order:
Plaintiffs have no persuasive explanation for taking until a month after final contentions were due (and many months after sample products were provided to and then tested by Plaintiffs) before adding the challenged contention in an expert report . . . .
Judge Stark's second order comes after plaintiffs attempted to re-assert the excluded theories as "rebuttal" evidence in reply expert reports.
Defendants accused plaintiffs of making an "indirect motion for reconsideration" by re-asserting the theories and offering new arguments as to why they should be permitted—arguments they could have made the first time they were excluded.
Judge Stark found for defendants, holding that plaintiffs "waited far too long to disclose that the purported presence" of a redacted ingredient "is somehow relevant to its infringement case," an argument it failed to make the first time around.
Judge Stark highlighted defendant's prejudice, noting that it "could have pursued its infringement and/or invalidity cases differently had Plaintiffs disclosed their . . . contentions during fact discovery as they should have done."
Although orders of exclusion may leave room for some use of late-disclosed evidence (e.g., late-disclosed invalidity references are sometimes permitted to be used to establish state of the art), it is not safe to assume that is the case. Disclosure during expert discovery is no substitute for timely updating contentions.