A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Pennypack

Another Day, Another Doctrine of Equivalents Argument Excluded

Andrew E. Russell, Feb. 1, 2021
Contentions Expert Discovery

Even when plaintiffs know of the potential weak spots in their infringement cases, they sometimes fail to address DOE until too late, or they offer a DOE analysis so weak that it gets excluded or wiped out by summary judgment.

That's what happened last week, when Chief Judge Stark struck a DOE opinion after a plaintiff tried to squeak by on the idea that its late DOE argument should be permitted because it never affirmatively disclaimed DOE:

Arendi's passing reference to DOE in its complaints followed by its lack of affirmative disclaimer of DOE theories (see, e.g., C.A. No. 12−1595 D.I. 238 at 5) ("Arendi has never asserted that its claims were limited to literal infringement") does …
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Judge Burke Warns Against Gambling on Self-Help Measures

David M. Fry, Jan. 20, 2021
Motion to Strike Pennypack

Casino
Heather Gill, Unsplash

It's a common dilemma in expert discovery: the other side's expert says something new in an opening report, you move to strike it, and you get a hearing date after the deadline for your rebuttal report. Do you have your expert respond (and weaken your prejudice arguments)? Or do you double down on your motion to strike (and risk losing the ability to respond altogether)?

In D. Del., the second option is a huge gamble. Yes, it's possible to persuade our judges to strike late-disclosed expert opinions (even under the Third Circuit's lenient Pennypack factors). But if you won't get a ruling before your responsive report is due, ignoring the new material can …

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Court Attributes Expert's Knowledge to Party Itself, Strikes Invalidity Arguments

Andrew E. Russell, Dec. 14, 2020
Motion to Strike Pennypack

Stop Sign
Luke van Zyl, Unsplash

In an opinion last Thursday, Judge Andrews struck a defendants' prior art arguments as to two references, after it offered them for the first time in an opening expert report served nearly two years after final infringement contentions.

The Court found that the prior art arguments were intentionally withheld, because the defendant used the same expert as other parties in another case on the same patents, and those parties had asserted invalidity based on the relevant references (through the expert) nine months or more before the expert did so here:

[T]here is no explanation why Defendant did nothing to alert Plaintiff of its new theories in the nine months or more before the expert …
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Chief Judge Stark Strikes Expert Opinions Under Pennypack

Andrew E. Russell, Oct. 21, 2020
Expert Discovery Motion to Strike

Pennies.
Pennies. Mark Bosky, Unsplash

I always find it interesting to see what kinds of facts that can succeed in a motion to strike. As I've mentioned, motions to strike in the Third Circuit are governed by the Pennypack factors, which can be tricky to meet and often favor lesser remedies (although the Court does strike things).

Here is what it took to warrant striking portions of an opening infringement report Arendi S.A.R.L. v. LG Electronics, C.A. No. 12-1595-LPS (D. Del.):

  • Disclosing infringement contentions against five new products for the first time;
  • Relying on previously undisclosed evidence;
  • Doing so in the 8th year of a case (albeit one currently without a trial date); …
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Disclosure of Expert Theory in Claim Construction Brief Defeats Later Motion to Strike

Andrew E. Russell, Sept. 28, 2020
MTS Pennypack

Judge Burke held last week that providing a substantive response to an indefiniteness theory in a claim construction brief was sufficient to preserve that argument for a later rebuttal expert report.

Typically you'd see that kind of disclosure in a discovery response on reasons for validity, or maybe in an expert declaration opposing a claim construction position (as opposed to being set forth as argument).

But the holding here makes sense under FRCP 26(e), which requires supplementing discovery responses only if the "information has not otherwise been made known . . . in writing."

It looks like the Court meant it when it held, earlier this month, that "any substantive response" to a theory prior to rebuttal expert reports …

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Court: Document Production Two Months Before Trial Sufficient to Avoid Prejudice

Andrew E. Russell, Sept. 14, 2020
Motion to Strike Pennypack

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 …

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No expert? No problem. Maybe.

Andrew E. Russell, Sept. 7, 2020
Litigation Pennypack

Empty Chair
Giorgio Trovato, Unsplash

Sometimes people think that they have to offer expert testimony to rebut the other side's expert on every single issue. That's not true, at least when the other side has the burden of proof.

I've represented a defendant in a jury trial representing where we offered no damages expert at all, and it worked out well (under the circumstances—I'm definitely not saying it's a good general strategy). We poked holes in the opposing expert's theories, and the other side had no way to return fire and no reply report in which the fix the issues.

Judge Andrews addressed something like that last week in an opinion on a motion in limine. Defendant had offered expert …

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New Standard for Striking a Theory from a Rebuttal Expert Report

Andrew E. Russell, Sept. 4, 2020
Pennypack Discovery

Stop Sign
Luke van Zyl, Unsplash

This week, Judge Burke issued an interesting oral order on a discovery dispute about the admissibility of "new" expert opinions in rebuttal reports.

In the order, he sets forth a simple baseline test for what a party has to show to strike purportedly "new" expert opinions in a rebuttal report. To succeed in striking a "new" theory, a party must show at least:

(a) how they clearly disclosed that theory well before final . . . contentions were due . . . ; (b) how the same theory was thereafter found in their opening expert reports . . . ; and (c) how [the opposing party] never provided any substantive response to that theory until …
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Court Finds Late Doctrine of Equivalents Theory Prejudicial Because Adding DOE "Creates a New Ballgame"

Andrew E. Russell, July 31, 2020
Expert Discovery Pennypack

Remember these?
Remember these? Tim Gouw, Unsplash

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 found prejudice because admission of a late theory requires …

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