In Abbott Labs. v. Lupin Ltd., C.A. No. 09-152-LPS (D. Del. May 19, 2011) (mem. op.), Judge Stark denied a motion by Abbott to preclude invalidity defenses based on prior art references that were not disclosed until sixteen weeks after the close of fact discovery. Judge Stark stated that
Lupin’s failure to supplement its contention interrogatories, in the circumstances of this case, was not unduly prejudicial to Abbott. Abbott had more than three months to respond to Lupin’s opening expert reports. . . . Abbott concedes that it was able to address Lupin’s tardy invalidity arguments in its rebuttal report.
Id. at 8. Judge Stark also noted that there was no potential disruption of the trial date, no evidence of bad faith or willfulness, and that the overall balance does not favor exclusion.
The opinion also used interesting language to address a procedural point regarding motions. During the briefing to exclude, Lupin filed a motion for leave to file a sur-reply brief on Abbott’s motion to exclude. Abbott responded by stating that they “do not oppose” the sur-reply, but that they “ask to be permitted to respond to Lupin’s surreply.” D.I. 134. According to Judge Stark:
The Court will deny Abbott’s request. The proper way for Abbott to have made this request would have been in a separate motion. See D. Del. L.R. 7 .1.2( a) (“Unless otherwise ordered, all requests for relief shall be presented to the Court by motion.”). The Court should not have to go hunting for hidden motions that are embedded in parties’ briefs on other motions.
Id. at 9-10.