Judge Richard G. Andrews partially overruled Magistrate Judge Thynge’s decision to exclude certain prior art evidence due to discovery violations, but in a subsequent order excluded the evidence anyway on other grounds. St. Jude Medical v. Volcano Corp., C.A. No. 10-631-RGA, Mem. Op. (D. Del. Oct. 9, 2012); Order (D. Del. Oct. 12, 2012). Plaintiffs produced the prior art, a video recording of a demonstration in Paris, France to an audience that included U.S. cardiologists, in support of its 102(a) invalidity theory. The video was produced on April 24, 2012 — five months after fact discovery closed in November 2011. Id. at 2. Judge Andrews had previously affirmed Magistrate Judge Thynge’s decision to exclude other prior art evidence due to discovery violations. Id. Judge Andrews found the situation at issue here somewhat different, however. First, Judge Andrews found that even though plaintiffs produced the video as soon as they received it, it was not clearly erroneous for Magistrate Judge Thynge to conclude that that producing it after the discovery deadline passed violated the court’s scheduling order. Id. at 3. In doing so, Judge Andrews rejected plaintiffs’ argument that there was no violation because supplementations under Fed. R. Civ. P. 26(e) were permissible and contemplated under the court’s scheduling order. Id. Judge Andrews was not persuaded because Rule 26(e) “is not an invitation to do further investigation immediately before trial, and then add the fruits of the investigation to the case.” Id.
However, Judge Andrews determined that he could not assess whether Magistrate Judge Thynge’s decision to exclude was an abuse of discretion based on the current record. Because of the importance of the evidence (if it was admitted it “might very well provide the clear and convincing evidence to invalidate the patent”), Judge Andrews set up a teleconference on October 11, prior to the commencement of the impending trial, to further discuss the issue with counsel. The next day, Judge Andrews issued an order finding that there was no “likely discovery [defendant] could have done had it had the video earlier.” Oct. 12 Order at 1-2. But, there was no evidence that a person of ordinary skill in the art was in the audience of the demonstration in the video. Id. at 2. Plaintiffs offered the evidence to support its theory that the patented invention was known by others in the United States. Id. The video, however, did not “indicate” knowledge or use in the United States. Id. “The theory that American cardiologists have knowledge . . . based on watching a device the patented features of which are not within their area of expertise, cannot be proved by clear and convincing evidence based on the proffer of evidence.” Id. Thus, Judge Andrews excluded the video, and any related testimony about the demonstration, “as not presenting sufficient evidence to raise a triable jury question[.]” Id. at 3.