The opinion of the court was delivered by: VIRGINIA A. Phillips United States District Judge
[Motion filed on June 12, 2009]
ORDER GRANTING MOTION TO STRIKE SUPPLEMENTAL INVALIDITY CONTENTIONS [Link & Term Doc. No. 59]
Plaintiffs Tokai Corporation, Scripto-Tokai, Inc., and Calico Brands, Inc.'s ("Plaintiffs") Motion to Strike Supplemental Invalidity Contentions and to Exclude Prior Art References Thereto ("Mot.") came before the Court for hearing on July 6, 2009. After reviewing and considering all papers filed in support of, and in opposition to, the motion, as well as the arguments advanced by counsel at the hearing, the Court GRANTS the Motion.
Defendants Easton Enterprises, Inc., d/b/a Easton Sales, and Fun Line Industries, Inc. ("Defendants") served Plaintiffs on March 20, 2009, after the close of fact discovery on February 23, 2009, with Supplemental Invalidity Contentions ("Supplemental Contentions"). Defendants assert the Supplemental Contentions are proper because they believed their contents to be the province of expert, rather than factual, discovery, and because they show good cause.
Plaintiffs filed suit on July 17, 2007. On May 18, 2008, the Court issued its Civil Trial Scheduling Order, in which it "adopt[ed] the provisions of Local Patent Rules Nos. 2-5, 3-1, 3-3, 3-4, 3-6 and 4-1 through 4-7 of the Northern District of California." The Civil Trial Scheduling Order set cut-off dates for fact and expert discovery which have been modified by stipulation.
On June 26, 2008, Plaintiffs propounded interrogatories and document requests, including interrogatory number 9, requesting "all facts and details concerning Defendant's allegations . . . that the patents in suit are invalid for failing to meet at least one condition for patentability. Include, without limitation, the dates and nature of prior patents and publications . . ." (Mot. 2-3 citing Trojan Decl. Ex. 2.) Several document requests inquired as to prior art. (Mot. 3; Trojan Decl. Ex. 3.)
On August 15, 2008, Defendants served Plaintiffs with: (1) Preliminary Invalidity Contentions; (2) responses to Plaintiffs' first set of interrogatories; and (3) responses to Plaintiffs' first set of requests for production of documents. (Mot. 3; see Trojan Decl. ¶ 6.) The responses to interrogatories and requests for production of documents contained little information about prior art but promised supplemental information would be forthcoming. (Mot. 4; Trojan Decl. Exs. 4-5.)
On October 15, 2008, Defendants deposed Bojan Cosic, Tokai's vice president of administration, as a Fed. R. Civ. P. 30(b)(6) witness. Plaintiffs objected to inquiry into one of the noticed topics of deposition: "[t]he patentable differences between the subject matter claimed in the Patents-in-Suit and the prior art" on the grounds that it called for expert testimony and a legal conclusion. (Reply 5; Opp'n 2-3; Chan Decl. ¶¶ 5-6, Ex. C 35-36.)
On January 23, 2009, the Court held the claim construction hearing, requested additional briefing, and took the matter under submission.
On February 23, 2009, fact discovery closed. Defendants had not supplemented their discovery responses regarding prior art.
Plaintiffs promptly wrote a letter to Defendants informing them they would seek exclusion of any later-produced discovery relating to prior art. The parties continued to correspond about this subject in letters dated February 26, March 5, and March 12, 2009. (Mot. 4; Trojan Decl. Exs. 6-9.)
On March 20, 2009, Defendants served Plaintiffs with Supplemental Contentions which, according to Plaintiffs, list nine new prior art patents not disclosed during fact discovery. (Mot. 5; Trojan Decl. Ex. 10.) Plaintiffs continued the chain of correspondence described above with a letter dated March 23, 2009, objecting to service of the Supplemental Contentions without leave of Court. Defendants responded with a letter dated April 9, 2009. (Trojan Decl. Exs. 11-12.)
On June 2, 2009, the Court issued its claim construction order. Shortly thereafter, on June 12, 2009, the Court modified the expert discovery cut-off, setting it for June 22, 2009. The ...