Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

Plaintiff first asserted invalidity of defendant’s patent-in-suit at the deposition of its expert.  At that time, plaintiff offered documents to defendant purportedly relating to plaintiff’s Trakker product, and offered to have the expert testify about the documents, the Trakker, and his opinions regarding invalidity of the patent-in-suit relative to the Trakker.  The Court denies defendant’s motion to exclude evidence and argument relating to the Trakker.  First, plaintiff’s disclosures regarding invalidity were untimely and constituted prejudice and surprise.  Plaintiff’s argument that its delay was justified by the alleged changing of defendant’s infringement contentions is not persuasive.  At no point was plaintiff precluded from proposing claim constructions that would encompass the Trakker as relevant prior art and, thus, could have proffered the Trakker disclosures within the time allotted.  However, disruption of the trial is unlikely as it is not currently scheduled.  In addition, exclusion of the Trakker disclosures would be an extreme and unwarranted sanction in this case.  Plaintiff has offered to provide any additional discovery sought on the issue of the Trakker, including producing the expert for an additional deposition.  Moreover, there is no evidence of bad faith or intention to violate the Court’s order.