I'm a baker. I was born of flour and heat and fermented in this big jar we call life. My original starter, Yeasty Boy, has sired many children that live lives of plenty. His grandchild, breAD-Rock, sits upon my counter as I type, growing fat on apple peels.
One of the first lessons of baking is that some ingredients can be modified or omitted without any real worry. You trade rosemary for thyme in your focaccia and everything's honky dory. On the other hand, if you switch the strong bread flour to whole wheat, you have crossed a moral line from which there may be no return. Some ingredients are simply more important, and some substitutions simply will not produce an edible loaf.
Obviously, this brings us to the Pennypack factors. These factors, much discussed on the blog, govern whether late disclosures are "substantially justified" or "harmless" under Rule 37, and thus whether a party should be precluded from relying on them.
The first such factor commonly listed is the importance of the information to be precluded. Obviously it can be difficult to measure the relative importance of any given theory or piece of evidence (beyond the fact that the parties are bothering with motion practice to exclude it). One objective method that might make sense is the extent to which the party has other theories or evidence that serve the same role (e.g., different obviousness combinations).
Over our break, Judge Williams rejected just such an argument in TQ Delta, LLC v. ComcasT Cable Comms. LLC, C.A. No. 15-611-GBW, D.I. 718 (D. Del. Nov. 19, 2024) (unsealed Dec. 20, 2024). There, the defendants' expert issued a report detailing several potential non-infringing alternatives, some of which were allegedly disclosed for the first time in the report. Plaintiff moved to strike under Pennypack, noting that the NIA's were not particularly important because defendant had several others to present. Judge Williams disagreed:
The information withheld here is important because it impacts the parties' "damages theory." Defendants contend that "the information TQ Delta seeks to exclude is not important" because the "Kakaes Report includes other NIAs beyond the three addressed here." That an expert report contains other NIAs not addressed by a motion to strike, however, does not convey a lack of importance of the NIAs actually addressed by the motion to strike. This factor thus supports denying TQ Delta's motion to strike.
Id. at 7 (internal citations omitted).
Judge Williams ultimately denied the motion to strike the references to each of the NIAs noting, in addition to the importance of the information, that no trial date had yet been set and there was thus plenty of opportunity to cure any prejudice.
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