Don't let your discovery motions sit! We got another opinion this month denying a discovery motion in part due to a party's delay, this time from visiting Judge Bibas of the Third Circuit:
ORAL ORDER: I DENY Vertex's motion to strike, D.I. 178 . I apply the Pennypack factors: (1) the surprise or prejudice to Vertex; (2) the ability of Vertex to cure the prejudice; (3) the likelihood of disruption of trial; (4) the bad faith or willfulness involved in not complying with the disclosure rules; and (5) the importance of the evidence sought to be excluded. Meyers v. Pennypack Woods Home Ownership Ass'n, 559 F.2d 894, 90405 (3d Cir. 1977). Lupin had disclosed enough that Vertex should not have been surprised at its theories. Vertex has not identified what further fact discovery would be necessary to avoid prejudice. It was able to submit a rebuttal expert report. It can still depose Dr. Donovan. Plus, it waited four months to object. See ART+COM Innovationpool GmbH v. Google Inc., 155 F. Supp. 3d 489, 511 (D. Del. 2016). Because Vertex has not identified what discovery it would need to cure any prejudice, there is little risk of disrupting trial. Any delay on the part of Lupin does not rise to the level of bad faith. And the importance of the evidence does not overcome the rest of the factors. Ordered by Judge Stephanos Bibas on 01/07/2026. (jfm) (Entered: 01/07/2026)
Vertex Pharmaceuticals Incorporated v. Lupin Limited, C.A. No. 22-966, D.I. 202 (D. Del. Jan. 7, 2026).
The plaintiff had moved to strike ensnarement, vitiation, and disclosure-dedication arguments that it alleged were raised late and with "no explanation or justification for the delay." D.I. 192 at 1. The defendants pushed back with various arguments, including by pointing out that the relevant expert report setting forth those arguments was filed "only three months after the latest patent . . . was added to the case," and that the plaintiff waited four months to move to strike. They cited the ART+COM case that the Court ultimately relied on.
Why Getting a Motion to Strike Filed Sometimes Takes a While—Or Why a Party May Try to Wait
As we've said before, delay tends to kill motions, especially discovery motions. But there are a few reasons why counsel may not move to strike right away.
First, contentions and expert reports tend to come at a busy time in the case, and the relevant attorneys may have their heads down working hard on the next step. There is a quick succession of deadlines right around the time of final contentions, including fact depositions and the close of fact discovery, expert reports, expert depositions, and shortly thereafter summary judgment and Daubert motions. By the time the dust settles, SJ is in and the next step is trial prep. It's easy to see how even a well-supported motion to strike can sometimes fall by the wayside.
Second, the Pennypack factors are not a great fit for how these disputes actually play out these days. There is no explicit factor that considers a parties' delay in bringing a motion to strike. But there is a factor that asks whether the prejudice against a party can be cured. And the longer a party waits to file, the less likely it is that the prejudice can be cured. Thus, parties sometimes do not seem to be in a rush to file these, not realizing that the Court may take their delay into account.
Finally, a party a hope that the issue will resolve itself. As the case progresses after final contentions, it tends to narrow. The expert may not offer opinions on the new contention. The relevant claims or references may be withdrawn or become less relevant. You don't want to bother a busy Court too many times; do you really want to use up one of your chances on something that may turn out to be unnecessary?
You can add to all of that the general inertia that counsel for parties in IP cases can sometimes have. The associates who fully understand the contentions may not be great at passing things upwards to the more senior partners, and those partners may not have the information they need to understand what the issue is.
All of that is to say, basically, that you better be quick if you want to have the best chances of the Court granting your motion to strike!
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