We've talked about how, when deciding whether a late disclosure should result in waiver, the Court applies the Third Circuits rather forgivingPennypack factors.
We've also discussed how you really ought to have a reason for a late disclosure.
On Friday, we saw another example of that in Natera, Inc. v. CareDX, C.A. No. 20-038, D.I. 392 (D. Del. Oct. 6, 2023). Magistrate Judge Burke rejected the idea that a party can just not bother to provide an explanation for its late disclosure:
ORAL ORDER: The Court, having reviewed Plaintiff's motion to strike certain [expert] opinions . . . hereby GRANTS the remaining …
We've written several times about the Pennypack factors—the Third Circuit standard for determining whether to exclude late-disclosed evidence. Although the standard itself is fairly lenient (focusing on prejudice and whether it can be cured), the D. Del. judges have shown an increasing willingness to exclude evidence under Pennypack in recent years.
Earlier today, for example, Judge Stark applied Pennypackto preclude four witnesses from testifying at an upcoming jury trial (two from each side). The witnesses were disclosed months after the close of fact discovery, and Judge Stark refused to force the parties to use their limited trial prep time for clean-up discovery: "there is not sufficient time in the 12 remaining days before trial …
In VIIV Healthcare Company et al v. Gilead Sciences, Inc., Judge Burke issued a rare oral order striking a new expert opinion offered for the first time at deposition....
There is probably no more common desire than the ability to go back in time to correct one's mistakes. To use examples from the fascinating life of Jeff Goldblum, you could:
Decline that invitation to the trial run of a dinosaur themed amusement park
Check your laboratory for bugs before experimenting with teleportation, or alternatively, hire an assistant
Suggest someone else lead the pod people away so the group can escape. Ideally, this person would be a bit faster than you.
Most lawyers are bound by more mundane hopes. The job is riddled with tiny-seeming pitfalls with potentially disastrous consequences. Every time you fall into one, you wish you could just call a mulligan and fix …
In the holding below, Judge Burke found that, under Pennypack, producing documents just over two months before trial was sufficient to provide time for "Defendants to be able to appropriately respond to Plaintiffs' expert's related position."
This is a shorter timeline than typically comes up. For example, Judge Burke has previously struck late-produced material where there were six months remaining before trial, although in that case the other Pennypack factors also played a role.
The facts here were not terrible for defendants. The documents had been produced by individual defendants in a set of related cases. According to the plaintiff, the expert reports at issue used the documents from various defendants to respond to arguments from those defendants, although …
Judge Andrews recently granted a motion in limine precluding a party from presenting expert opinions that were not disclosed until the expert's deposition -- without analyzing the Pennypack factors.
The correct procedure for challenging a late disclosure of theories or evidence has long been a matter of some debate in Delaware. There are cases suggesting that the party seeking to update its contentions should move for leave to do.
More commonly, a party will simply serve updated contentions or expert reports that the opposing party moves to strike. Regardless, the motions are generally analyzed under the demanding Pennypack factors, with the usual result that the …
It can be tough to get late-produced theories or evidence excluded in Delaware, because the Court must apply the permissive Pennypack factors that typically favor admission.
The factors include prejudice, ability to cure any prejudice, disruption of trial, and bad faith/willfulness.
But lately, the Court seems to be granting more motions to strike such theories. Today, Judge Andrews granted a motion to strike a late DOE theory offered for the first time in a reply report.
Judge Andrews Isn't Messing Around
He shot down the Pennypack factors in four short and to-the point paragraphs.
As to the first factor, he foundprejudice because admission of a late theory requires …
A motion for attorneys' fees is a tough row to hoe. The shoddiest AI lawyer could pull together 8 paragraphs of quotes from the Supreme Court, the Federal Circuit, Blackstone, and Hammurabi's code, warning that fees are an extreme sanction to be used only sparingly, lest their mysterious power be depleted.
And he works for peanuts!AI-Generated, displayed with permission
As Judge Williams' opinion in BearBox LLC v. Lancium LLC, C.A. No. 21-534-GBW (D. Del. Jan 9, 2024) shows, you can even lose a motion for fees if the Court previously held the other party acted in bad faith.
The opinion in Bearbox, contains a healthy recitation of losses by the plaintiff at various stages of the case, culminating in an unsuccessful trial on the merits. Its' not worth rehashing the whole thing for our purposes—
(Eds. note - what is our purpose? sound off in the comments, but know in advance that I will not read anything by a philosopher or anyone else with a fuller beard than I possess)
—but the big takeaway is that the defendant's failure to win the case at summary judgment effectively scuttled any argument that the plaintiffs' claims were objectively baseless and unreasonable:
Moreover, while the Court adopted Defendants' proposed claim constructions, the Court denied Defendants' motion for summary judgement because the Court found that there existed genuine issues of material fact regarding who conceived of the '433 patent's subject matter. Thus, Plaintiffs' decision to continue litigating the sole inventorship claim after receiving the Court's claim constructions was not sufficiently unreasonable to warrant a finding that this case is exceptional . . .
The Court, in denying Defendants' motion for summary judgement, rejected Defendants' argument that no reasonable juror could find that Mr. Storms was the sole inventor of the '433 patent. Thus, even considering the '632 patent application, Plaintiffs' position that Mr. Storms was the sole inventor of the '433 patent was not meritless.
Id. at 4, 6-7 (internal citations omitted).
The one issue where they seemed to get some traction was in a successful motion to strike filed earlier in the case. The plaintiff had apparently served a new expert report, without leave, in order to conform their expert's opinion to a the Court's claim construction. Defendants successfully moved to strike the report. In its decision, the Court applied the Pennypack factors and actually found that the plaintiffs' actions indicated bad faith.
Nevertheless, in ruling on the § 285 motion, Judge Williams found that this act of bad faith was not enough to make the case exceptional:
Accordingly, even though the Court found Plaintiffs' timing indicative of bad faith, the Court finds that, in this instance, Plaintiffs' desire to supplement Dr. McClellan's expert report to ensure consistency with the Court's claim construction order did not render this an exceptional case.
Id. at 5.
So take heart, those have shown bad faith. You may yet find yourselves sufficiently redeemed to avoid fees.
Motions to strike are tough in Delaware. Although the reign of Pennypack seems to be slowly entering its dotage, the door remains open for the late-disclosed.
With exclusion so rare, its a bit odd we don't see more of Rule 37's lesser sanction -- fees.
But visiting Judge McCalla gave us one on Monday in Invacare Corp. v. Sunrise Medical (US) LLC, C.A. No. 21-823-JPM (D. Del. May 22, 2023) (Oral Order). The facts there were pretty stark.
The defendant had an inequitable conduct claim based on the patentee's failure to inform the PTO that identical claims had previously been rejected. Plaintiff's prosecution counsel testified that the failure was due to an error in an internal spreadsheet they kept of related applications that omitted the relevant application. Plaintiff had previously withheld the spreadsheet as privileged but eventually waived privilege and produced it.
Unfortunately, it came out during expert discovery that the spreadsheet actually contained the relevant application. This was probably a bad day for a lawyer somewhere. Plaintiff then went back to see if there were other versions of the spreadsheet that did omit the application -- they eventually found and produced some, but by then it was 4 months after the close of fact discovery.
Defendant moved to exclude these new references. Judge McCalla denied the motion but ordered plaintiff to pay what will surely be a hefty sum to cover the ...
Today we highlight a decade-old opinion involving an inventor’s death, the reports of which were greatly exaggerated. The moral of the story: trust but verify. Do a Google search, even if you have it on good authority. Question your assumptions.
It's an oddball case that provides the perfect foil for Nate’s article yesterday involving the opposite fact-pattern—a dead expert. Here, an inventor thought expired was “not only alive, but also willing (‘indeed eager’)” to testify in the upcoming trial, scheduled only ten days away.
In an unusual mix-up, plaintiff relied on testimony from the plaintiff’s 30(b)(6) witness, a former high-ranking officer for plaintiff's company, who said that the inventor was deceased. Where'd he get that information? Several of plaintiff’s …
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