On Friday, visiting judge Choe-Groves issued an order addressing a defendant's use of new references in a motivation-to-combine analysis, which it had not disclosed in its invalidity contentions or on the deadline for election of prior art references. It instead disclosed the references for the first time in its expert report on invalidity.
The case involved a scheduling order using Chief Judge Connolly's form, which includes a single round of invalidity contentions and a deadline for election of references, and specifically requires good cause to supplement.
Judge Choe-Groves found that the late disclosure of certain "background" references was acceptable, but rejected the idea that references used in a motivation-to-combine analysis fall into that category:
The Court …
