In Vehicle IP LLC v. Werner Enterprises Inc., 10-cv-503-SLR (D. Del. Sept. 9, 2013), Judge Robinson granted plaintiff’s motion in limine to preclude defendant’s evidence of invalidity regarding alleged use of the accused system before the priority date of the asserted patent. Despite disclosing the prior use of the accused system on an early list of potential prior art references and including some elements of the theory in final interrogatory responses, Judge Robinson found that defendant “consciously disavowed this theory by removing it from its March 25, 2013 final invalidity contentions,” which lead plaintiff to “complete fact discovery under the premise that [defendant] would not be asserting any theory of invalidity based on the [alleged prior-use of the accused system].” Defendant’s revival attempt through an expert report, “substantially devoted to the [prior-use] theory,” served less than two months after service of the final invalidity contentions, was unavailing.
Judge Robinson also alluded to her prior order limiting the number of prior art references or combinations that could be asserted per claim in the final invalidity contentions. Defendant challenged whether the prior-use system should be considered a “reference” for purposes of the limiting order and final contentions because the prior-use system is only applicable to the case if it’s later use as the accused system is deemed to infringe. This too was unavailing.
Practitioners should note that Judge Robinson’s orders limiting the number of invalidity references are intended to apply to all prior art evidence, including non-publication prior art such as prior-use evidence. This ruling should also serve as a cautionary reminder to practitioners to serve thorough and complete “final” contentions before the close of fact discovery or risk preclusion.