Special Master Redfearn recently considered cross motions to exclude the competing expert reports of the parties in Eon Corp. IP Holdings, LLC v. Flo TV, Inc., et al. The moving defendants, several mobile carriers and mobile technology companies, sought to exclude portions of an infringement expert report that discussed (1) doctrine of equivalents theories that had not previously been asserted in infringement contentions and (2) various third party applications that had not been previously disclosed as accused products.
The Special Master noted that the doctrine of equivalents argument would be moot if the Court did not adopt defendants’ claim construction position, but that allowing the theory “to remain in [the] report does not mean that the Court will adopt the Plaintiff’s claim construction.” Eon Corp. IP Holdings, LLC v. Flo TV, Inc., et al., C.A. No. 10-812-RGA, Rulings and Recommendations at 6 (D. Del. Oct. 3, 2013). The Special Master further found that the plaintiff was not accusing the third party applications of infringement but could potentially make an appropriate reference to the software at trial, so the admissibility of the third party application references should be left to the discretion of Judge Andrews at trial. Id.
The plaintiff moved to exclude certain combinations of prior art as untimely disclosed in an invalidity expert report, arguing that it could not take discovery on those combinations at this stage of the case. The defendants pointed out, however, that the plaintiff had not previously sought discovery on any prior art combinations. Further, the Special Master found that the invalidity expert report did not include any evidence not previously disclosed and did not include any new or abandoned references. Finally, the plaintiff’s expert was able to analyze and address the combinations at issue. Id. at 7-8.
Thus, the Special Master denied both motions to exclude. Addressing the Third Circuit’s Pennypack factors, the Special Master concluded that neither party suffered any prejudice and neither side had acted in bad faith. Therefore, because “it is important that these issues be fully presented and all valid legal theories considered,” the “extreme sanction” of exclusion was not warranted. Id. at 8-9.