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In an opinion last Thursday, Judge Andrews struck a defendants' prior art arguments as to two references, after it offered them for the first time in an opening expert report served nearly two years after final infringement contentions.

The Court found that the prior art arguments were intentionally withheld, because the defendant used the same expert as other parties in another case on the same patents, and those parties had asserted invalidity based on the relevant references (through the expert) nine months or more before the expert did so here:

[T]here is no explanation why Defendant did nothing to alert Plaintiff of its new theories in the nine months or more before the expert report was issued. Clearly, Defendant knew (if nothing else, Defendant’s expert’s knowledge is attributable to Defendant) of the evidence nine months or more before it disclosed the evidence. Defendant offers no compelling excuse for the delay. Thus, I conclude that the failure to disclose earlier was a conscious decision, and intentional, not just negligent.

Both of the invalidity references were prior art products (ugh). Plaintiff argued prejudice in having to do late discovery on those products; the Court found that the need for late discovery caused at least some prejudice under Pennypack, even if it could still be completed in time:

Discovery could be taken now (since the trial has been indefinitely postponed), and the likely result is that such discovery would produce whatever it would have produced if it had been done in 2018. The results, whatever they might be, would likely lead to more expert reports and more motions. Out-of-time discovery is not without cost, some of which would have been unnecessary had Defendant advanced these theories when it first knew about them.

He also noted that the evidence must not be that important, as it was not included in defendants' summary judgment motions:

I am persuaded by Plaintiff’s argument that Defendant has advanced dozens of invalidity theories and it is hard to believe that two additional pieces of prior art have anything more than marginal value. I note in the subsequent summary judgment briefing[,] Defendant advances three theories of invalidity, including one of anticipation and one of obviousness. None of the three mentions the [art].

He granted the motion to strike.

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