Motions to strike are tough in Delaware. Although the reign of Pennypack seems to be slowly entering its dotage, the door remains open for the late-disclosed.
With exclusion so rare, its a bit odd we don't see more of Rule 37's lesser sanction -- fees.
But visiting Judge McCalla gave us one on Monday in Invacare Corp. v. Sunrise Medical (US) LLC, C.A. No. 21-823-JPM (D. Del. May 22, 2023) (Oral Order). The facts there were pretty stark.
The defendant had an inequitable conduct claim based on the patentee's failure to inform the PTO that identical claims had previously been rejected. Plaintiff's prosecution counsel testified that the failure was due to an error in an internal spreadsheet they kept of related applications that omitted the relevant application. Plaintiff had previously withheld the spreadsheet as privileged but eventually waived privilege and produced it.
Unfortunately, it came out during expert discovery that the spreadsheet actually contained the relevant application. This was probably a bad day for a lawyer somewhere. Plaintiff then went back to see if there were other versions of the spreadsheet that did omit the application -- they eventually found and produced some, but by then it was 4 months after the close of fact discovery.
Defendant moved to exclude these new references. Judge McCalla denied the motion but ordered plaintiff to pay what will surely be a hefty sum to cover the costs of the curative discovery:
The documents at issue . . . are not excluded, but the Court makes no finding at this time as to whether they will be admissible at trial. Invacare shall bear Sunrise's fees, expenses, and costs that are necessary to cure any prejudice caused by Invacare's untimely production of these documents. Sunrise should immediately proceed with the additional discovery it wishes to pursue, understanding that reasonable discovery is at Invacare's expense. The scope of the additional discovery should be limited to the challenged spreadsheets' metadata, chain of custody, history, and use within Calfee. The Court anticipates that sixty days (that is, no later than Friday, July 21, 2023) is a sufficient time period to complete the required curative discovery. Invacare is required to cooperate fully in the discovery process.
It'll be fun (...in a sense) to see if this becomes more common with our local Judges over the coming weeks and months. We'll keep you updated if we see any more.
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