[UPDATE: Thank you to all who flagged the typo in the original title. No, the irony is not lost on me that we had a typo in the word "careful"!]
Oof, this one may have been painful. Last month in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW-JLH (D. Del.), the defendant apparently asserted at least two non-infringement defenses, one based on a "groove" limitation and one based on a "radius" limitation.
The defendant asserted the groove limitation defense in response to a summary judgment motion. Then, the following series of events occurred:
- December 6, 2022: The Court denies the summary judgment motion against which the defendant asserted the groove limitation defense
- December 13, 2022: The parties filed their proposed pretrial order. In it, they included a joint statement of uncontested facts. That joint statement limited the infringement defenses that are available for one of the patent claims, including the radius limitation—but it didn't include the groove limitation on the list:
On December 13, 2022, the parties jointly filed a Proposed Pretrial Order, which contained in Exhibit 1 a Joint Statement of Uncontested Facts. . . . Therein, the parties agreed that, "[u]nder the Court's claim construction, each SLT Product, when combined with a grooved pipe element (together 'Accused Product'), literally includes every element in every Asserted Claim [including Claim 1] other than the following elements[,]" which included the Radius Limitation but not the Groove Limitation.
D.I. 315 at 2.
- January 12, 2022: Plaintiff files a sealed letter, apparently raising a dispute about whether the defendant can assert the groove limitation at trial.
- January 13, 2022: The Court issues an order holding that no, in fact, the failure to include the groove limitation in the pretrial order precludes the defendant from asserting it at trial:
ASC argues that it has put at issue the proper interpretation of [a term related to the groove limitation] throughout this case and, thus, "[plaintiff] Victaulic has been fully aware of these issues and would not be prejudiced from allowing ASC to address [the Groove Limitation] and the parties' disputed, material fact through expert and fact witness testimony at trial." . . . However, as of December 13, 2022—subsequent to the Court's ruling as to the Radius Limitation and the Court's construction of the [groove-limitation-related] term . . .—ASC agreed [in the PTO] that the Groove Limitation, which appears in the first paragraph of the '796 patent, was not at issue. . . . Even if ASC put Victaulic on notice of a potential dispute regarding the Groove Limitation, ASC explicitly disclaimed any such dispute in the parties' December 13, 2022 filing.
Id. at 2-3.
According to the Court, it would prejudice plaintiff if the Court were to permit the defendant to assert the groove limitation defense, then un-assert it, and then re-assert it just before trial (which is set to start today, 1/16):
The prejudice to Victaulic of permitting ASC to now assert a new and recently disclaimed defense would be substantial, there would be no opportunity to cure the prejudice at this late hour, and ASC admits that the issue is important and "potentially dispositive." D.I. 311 at 3-5; see D.I. 31 ¶ 8 (requiring "final infringement contentions thirty (30) days after entry of the Court's claim construction order"); D.I. 124 (the Court's claim construction order on October 18, 2021); D.I. 149 (notice of service of final infringement contentions on November 18, 2021 ). Thus, the Court grants Victaulic's request "to exclude ASC and its witnesses from asserting at trial ASC's . . . Groove Limitation noninfringement defense." D .I. 311 .
Id. at 3.
It looks from that last paragraph like the defendant may have had other issues with this defense as well, including a failure to disclose it earlier. But explicitly disclaiming this defense in the PTO definitely didn't help.
It's good to be extremely careful with the exhibits to a pretrial order. They set forth the scope of trial, they get referred back to a lot during trial, and they tend to be long, dense, and kind of boring. That's can be a dangerous combination, because it's easy for trial counsel's eyes to glaze over in reviewing PTO attachments, and for things like this to slip through.