In a recent memorandum opinion, Judge Stark denied a plaintiff’s motion to supplement its expert reports to address new infringement theories, and granted defendants summary judgment of non-infringement. St. Clair Intellectual Property Consultants, Inc. v. Matsushita Elec. Indus. Co., Ltd., et al., C.A. Nos. 04-1436-LPS, 06-404-LPS, 08-371-LPS (D. Del. Mar. 26, 2012). In November 2009, the Court issued a Report and Recommendation construing claims relating to digital camera technology which was consistent with the plaintiff’s proposed construction. The defendants filed objections to the Report and Recommendation, and before a decision was made whether to adopt the Report and Recommendation, the case was stayed pending the resolution of an appeal to the Federal Circuit in a related case where construction of the same claims was to be reviewed de novo. Id. at 4-5.
The Federal Circuit construed the claims consistently with the defendants’ proposals in this case, leading the defendants to move for summary judgment of non-infringement. Id. at 5-6. In response, the plaintiff moved to supplement its expert reports to address why the defendants infringed even under the Federal Circuit’s construction. Id. The Court viewed the plaintiff’s motion to supplement as a motion to add infringement contentions far beyond the deadline under the scheduling order. Id. at 8. Accordingly, the Court considered whether the plaintiff should be permitted to add infringement contentions based on the “good cause” standard of Rule 16. Id. at 9.
The Court concluded that the plaintiff could not show good cause, explaining that the plaintiff “made a tactical decision to not assert its infringement theories under Defendants’ proposed claim constructions … despite the fact that … the PTO applied the Defendants’ construction during the reexamination” in the related case, the plaintiff knew that its preferred construction was being appealed to the Federal Circuit in that related case, and claim construction in this case had not been resolved as of the deadline for expert reports or infringement contentions. Id. at 10. The Court explained, in denying the motion to supplement, “[a] strategic mistake does not equate to a showing of good cause under Rule 16.” Id. at 11. The Court next explained that exclusion of the plaintiffs’ expert reports, although an extreme sanction, was appropriate under Rule 37 and Pennypack because “the fact remains that [the plaintiff] violated the Scheduling Orders when it failed to raise all of its infringement contentions at the appropriate time.” Id. at 13. The Court also emphasized the prejudice to the defendants that would result from allowing the plaintiff to assert new infringement contentions at this stage, a prejudice that could not be cured completely, and that allowing supplementation would significantly prolong the litigation. Finally, and perhaps most critically, the Court noted the lack of a valid explanation for the plaintiff’s failure to timely disclose its infringement contentions. Id. at 13-15.
Because the plaintiff included its new infringement contentions in expert declarations filed in response to the defendant’s motions for summary judgment, the Court had opportunity to consider them. The Court found that the defendants would have been entitled to summary judgment of non-infringement even under the plaintiff’s new theories, lessening the ultimate severity of the Court’s decision. Id. at 23-26.