Parties in patent cases are often tempted to provide bare-bones responses to contention interrogatories, offering just enough to preserve their ability to expand on the arguments later during expert reports. That's easier, obviously, than providing more detailed contentions, and it also maintains flexibility as discovery develops.
Plus, parties simply may not have fully developed their theories at the time contention interrogatories are due. Expert reports are when theories are typically fully fleshed out, after discovery has closed and the universe of information is set, more or less.
But there is another consideration as well, beyond preventing a motion to strike your own expert reports. If your own contention responses are too sparse, it may impact your ability to argue that the other side should have disclosed its counter-arguments.
That's what happened yesterday in Attentive Mobile Inc. v. Stodge Inc., C.A. No. 22-1163-CJB (D. Del. Dec. 10, 2024), after the patentee moved to strike a new damages theory offered in the accused infringer's answering damages report.
The patentee's report had argued for damages based on all messages sent on the accused platform. In response, the accused infringer argued that damages should be limited to 660 specific messages that met certain criteria, and produced a spreadsheet related to that argument.
The patentee moved to strike, arguing that the accused infringer had failed to disclose its 660-message argument in its interrogatory responses. The accused infringer didn't dispute that it hadn't disclosed its 660-message theory, but responded that was nonetheless timely because the patentee itself had failed to disclose its damages theory in the patentee's interrogatory responses.
The Court agreed, holding that the patentee's responses failed to sufficiently disclose the damages theory, so it was fair for the accused infringer to rebut it in for the first time in their answering damages report:
[The patentee] argues that the theory and spreadsheet are not untimely because it was only first tipped off to the need to put forward the theory/spreadsheet when it saw [the accused infringer's] opening expert report on damages, in which [their] damages expert opined that every message sent using [the] accused platform was relevant to the purported royalty base. [The patentee] attempts to counter this assertion and explain why [the accused infringer] should have been aware much earlier (i.e., during the fact discovery period) of [the patentee's] damages position in this regard—and of the need to combat that position by disclosing the theory/spreadsheet during fact discovery. In trying to make this case, [the patentee] cites to its responses to . . . Interrogatory (“ROG”) No. 20; [it] says it disclosed its relevant damages position as to the royalty base in its answers to ROG No. 20. . . . But the Court has read those responses, . . . which (like [the accused infringer's] ROG responses as to damages-related questions) were pretty bare bones. And the Court does not see where in those responses, [the patentee] clearly explained that the damages base for its reasonable royalty calculations would include revenues relating to the increase in all campaign-related messages sent in the relevant time period. Indeed, the two ROG responses (the second of which was provided just weeks before expert discovery began) do not explicitly address the relevant royalty base at all . . . With Plaintiff having not made an untimely response, the motion must be denied.
Id. In other words, you can't strike their argument that the damages base is small if you didn't even disclose your argument that it was big. If the patentee had fully disclosed their theory, they may have been able to strike the opposing theory as late (although had the patentee fully disclosed their theory, the accused infringer might have disclosed theirs as well).
The Court did offer the patentee some relief. Recognizing that the spreadsheet was produced late, it granted a deposition of the employee who prepared it, and a supplemental report if needed:
That said, the reality is that Plaintiff produced the spreadsheet during expert discovery, which is very late in the game. And Plaintiff has offered Defendant the ability to take a deposition of Plaintiff’s employee who prepared the spreadsheet. . . . That seems fair and equitable in light of the circumstances here. Therefore, the Court will also ORDER that Defendant may take this deposition, with the details regarding timing and length of the deposition to be worked out by the parties. If a supplemental expert report is needed, the parties can work out the logistics as to that too.
Id.
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