Yes, this is yet another Pennypack post. I can't resist. It's a tough-to-apply standard that impacts many cases (patent and otherwise). And it can sometimes seem to reward bad behavior by litigants, even—maybe especially—when applied as written.
But not this time! In Prolitec Inc. v. ScentAir Technology, LLC, C.A. No. 20-984-WCB (D. Del. Oct. 2, 2024), the patentee produced documents about a pre-priority-date sale of prior art after fact discovery closed and just five days before opening reports.
Unsurprisingly, the other side's opening expert report five days later did not include invalidity allegations about this sale.
But the accused infringer seems to have waited until their expert's reply report to first argue that this was was invalidating, presenting 24 new obviousness combinations involving the product sold.
The patentee moved to strike the reply report, and the Court granted the motion. The Court took issue in particular with the fact that the accused infringer had not moved to supplement in between the opening and reply reports:
[E]ven if there was not time to include the [relevant new] Barclays Center system reference in Dr. Plock’s initial [invalidity] report, [accused infringer] Prolitec could have sought leave to supplement Dr. Plock’s opening report with those paragraphs at some later time but still prior to the time that [the patentee's expert] Mr. Dezmelyk’s rebuttal report was due. That would have avoided the problem presented by delaying disclosure of the Barclays-based obviousness theories until Dr. Plock’s reply report, when Mr. Dezmelyk would have no opportunity to respond to it.
Prolitec has not offered any explanation for its failure to seek leave to supplement Dr. Plock’s opening report during the 30-day period between the time that report was submitted and the time Mr. Dezmelyk’s report was due. Although there is no suggestion that Prolitec acted in bad faith in failing to seek leave to supplement Dr. Plock’s opening report, I find that its failure to do so and its lack of explanation now weigh in favor of exclusion.
Id., at 3. Applying the Pennypack factors, the Court also found that the information wasn't particularly important, and that it would be burdensome for the patentee to have to respond to it—particularly given that not all of these combinations are likely to be asserted at trial:
Prolitec suggests that if I am inclined to provide any remedy to ScentAir, it should be, at most, an opportunity to file a sur-reply report from Mr. Dezmelyk, limited to Dr. Plock’s obviousness theories based in part on the Barclays Center system.
ScentAir complains that adopting that course of action would be burdensome and time-consuming for ScentAir. Moreover, as ScentAir points out, Dr. Plock’s new obviousness theories include multiple new combinations of references with the Barclays Center system reference. By my count, these theories span 24 new potential combinations, and Dr. Plock’s reply report fails to suggest which of those 24 combinations Prolitec plans to pursue at trial. Responding to that number of assertions of obviousness would involve a considerable amount of new work on the part of Mr. Dezmelyk and the ScentAir attorneys. Further, it would be unfeasible to try 24 obviousness combinations, so much of the work put into preparing a sur-reply report would be rendered irrelevant by the time of trial. Because Prolitec failed to seek leave to amend Dr. Plock’s opening report—an option that would have avoided this problem altogether—and instead waited until after Mr. Dezmelyk had filed his report to disclose the numerous new combinations of obviousness references, I conclude that, on balance, the burden of filing a sur-reply report should not be imposed on ScentAir. As Prolitec has proposed no other potential remedies, I find the prejudice to ScentAir and the inability to adequately cure the prejudice weigh in favor of exclusion.
Id. at 4.
That point about the burden of having to respond to positions that are complex and that may not come up at trial is notable. It may resonate with our other judges, some of whom have had strong words about the need for case narrowing before trial.
The Court didn't detail exactly how much time was between opening and reply reports in this instance. It would not be uncommon to have around 45 days, which could be a tight turnaround for a motion to supplement. Here, though, it appears the case may have been stayed pending IPR during expert discovery, so there may have been a gap of more than a year between opening and reply reports.
Finally, it's interesting that this was sparked by the late production of the prior art sale data to begin with. The patentee didn't produce it until well after the close of fact discovery. That didn't receive much comment in the opinion, likely because the accused infringer never moved for relief on that late production—although I'm not sure what the remedy would be, either.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
