Make Sure to Timely Disclose Those Prior Art References!

In ., the plaintiff moved to preclude defendant’s use of prior art references that were disclosed four months after the deadline for the defendants to provide their invalidity defenses. C.A. No. 05-132 (D. Del. Feb. 15, 2007) (Farnan, J.). The defendants had provided 198 pages of invalidity contentions on 7 patents-at-issue. None of the prior art references disclosed after the deadline were contained in the original contentions. In deciding whether to exclude the evidence pursuant to Fed. R. Civ. P. 37, the Court turned to the Third Circuit case of Meyers v. Pennypack Woods Home Ownership Ass’n, 559 F.2d 894 (3d Cir. 1977). That case found that the factors relevant to such an inquiry include: (1) the prejudice or surprise to a party against whom the evidence is offered; (2) the ability of the injured party to cure the prejudice; (3) the likelihood of disruption to the trial schedule; (4) bad faith or willfulness involved in not complying with the disclosure rules; and (5) the importance of the evidence to the party offering it.

Among many reasons for deciding to exclude the evidence, Judge Farnan noted that the parties in this litigation are “sophisticated business entities” who are represented by “counsel well-versed in complex patent litigation” and have brought “numerous and contentious discovery disputes” that have been more “‘strategic'” in nature than substantive. Id. at 9. Furthermore, the defendants had many other references available to them such that the exclusion of these pieces would not “cripple” their invalidity case. Id. The references were also available to the defendants before the close of fact discovery and “well-before” the deadline for disclosure of invalidity defenses and references relied on. The fact that plaintiff was aware of these references furthermore did not excuse the defendant’s failure to disclose. Id. at 11.

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