Judge Andrews recently denied a series of motions to “preclude untimely evidence from trial” in which a plaintiff argued that various prior art evidence was disclosed late and therefore could not be used at trial. Judge Andrews first found that certain references which were used only as background references, not to meet elements in obviousness combinations, should not be excluded because they had been disclosed in various ways, including as prior art for a different patent-in-suit or by an expert in a claim construction declaration. Additionally, the plaintiff’s expert had addressed these opportunities in his validity report. HSM Portfolio LLC, et al. v. Elpida Memory Inc., et al., C.A. No. 11-770-RGA, Memo. Or. at 2-4 (D. Del. Feb. 11, 2016).
Judge Andrews also refused to exclude declarations and letters directed to corroborating the dates of public availability of various prior art references. His Honor explained that “[b]ecause Plaintiffs were dilatory in their interrogatory responses pertaining to the prior art, Defendant did not know that Plaintiffs intended to argue that certain references did not qualify as prior art until after Defendant’s invalidity report was due” and characterized this situation as “a problem of Plaintiffs’ own making.” Id. at 4.
In the same order, Judge Andrews also granted the defendant’s motion to strike “a new infringement theory [advanced for the first time] in their reply [expert] report.” Indeed, even though the defendant had served a supplemental non-infringement report to address the new theory, Judge Andrews found that this did not cure the prejudice because “[if] Plaintiffs had timely disclosed this infringement theory, Defendant may have been able to assert different theories of non-infringement and invalidity.” Id. at 5-6.