As an old dog, I'm always excited to learn a new trick. For instance here is me being taught to fetch:
As a lawyer, this often takes the form of some new novel argument that I might want to try out myself. Sometimes, however, a new trick turns out to be particularly ill-fated.
The defendant in Bausch & Lomb Incorporated et al v. SBH Holdings LLC, C.A. No 20-1463-GBW-CJB (D.I. 250 (D. Del. Feb. 5, 2025) (Oral Order), moved for summary judgment under of no infringement under the DOE based on the disclosure-dedication doctrine. The problem was that plaintiff had served a rog asking for defendant's non-infringement contentions, and the defendant had not disclosed this theory. So, the plaintiff moved to strike the argument.
The defendant countered that, since disclosure-dedication is based upon the specification itself (which plaintiff obviously had), and is decided by the Court as a matter of law, there was no need to disclose the theory in response to a rog (this is the bit I hadn't seen before).
Judge Burke, however, disagreed, and granted the motion to strike:
Defendant’s arguments have no merit. Fed. R. Civ. P. 33(b)(2) says that a party must respond to an interrogatory within 30 days, and Fed. R. Civ. P. 26(e) says that a party must supplement a response to an interrogatory in a timely fashion if, inter alia, it learns that a prior disclosure is incomplete or incorrect. There is no exception to these rules of the kind Defendant suggests. Just like every other party in a patent case, Defendant had to timely respond to contention interrogatories—a means of discovery that plays an important narrowing role in patent litigation. Defendant’s view to the contrary would, if permitted, wrongly allow a party—and not the Federal Rules of Civil Procedure—to determine whether it has to follow the discovery rules in a patent case, and to dictate what theories it does and doesn’t have to disclose. For all of these reasons, there can be no doubt that Defendant’s incredibly late disclosure of the DD theory in its summary judgment briefing (filed in September 2024) amounts to an untimely disclosure under Rule 26(e).
Id. (internal citations omitted).
The Court then went on to analyze the issue under Pennypack, finding that each of the factors were neutral or supported exclusion.
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