The opinion of the court was delivered by: Lucy H. Koh United States District Judge
United States District Court For the Northern District of California
ORDER DENYING MOTION TO STRIKE, GRANTING CURATIVE MEASURES
In this patent infringement case, Plaintiff Genentech, Inc. (Genentech) seeks a declaratory judgment of non-infringement and invalidity against Defendant Trustees of the University of Pennsylvania (U Penn). See Dkt, No. 1 (Complaint). Before the Court is U Penn's Motion to Strike Claim Construction Extrinsic Evidence Not Disclosed as Required by Patent Local Rule 4-3(b). Dkt. No. 126 (Motion to Strike). On January 7, 2011, the parties submitted a Joint Claim Construction Statement, listing all extrinsic evidence they intended to use during claim 25 construction. Dkt. No. 74 (JCCS, corrected January 11, 2011 as Dkt. No. 77). The parties filed 26 expert declarations the same day. Dkt. Nos. 75 (Cote Decl.) and 76 (Schlissel Decl.). U Penn 27 contends that Genentech inappropriately introduced new evidence on February 25, 2011, the same 28 day Genentech filed their Responsive Claim Construction Brief. Mot. at 1. See Dkt. No. 123, Exs. 5, 9-21 (Ramani Decl., each contested exhibit is an extrinsic documentary reference suggesting that 2 ductal carcinoma in situ (DCIS) is cancer); Dkt No. 124 (Cote Supl. Decl., responding to the not contend that it took positions in its February 11, 2011 opening claim construction brief that it 6 would not otherwise have taken if it had known of Genentech's untimely evidence. Instead, U Schlissel Decl. examples of non-cancerous breast cells found outside the breast).*fn1
U Penn argues that the untimely disclosures are unjustified and prejudicial.
U Penn does Penn asserted at a hearing on this Motion on March 3, 2011 that had it known of Genentech's 8 untimely evidence, it would have presented its arguments differently. U Penn moves the Court to 9 strike the untimely evidence. Mot. at 1. At the hearing, U Penn requested, in the alternative, that it 10 be granted additional time to file its Reply Claim Construction Brief, additional pages in its Reply Claim Construction Brief, and the right to introduce new rebuttal documentary evidence on a rolling basis up to the Claim Construction Hearing. U Penn explicitly disclaimed any interest in conducting a supplemental deposition of Genentech's expert, Dr. Cote. therefore justified. Regarding the supplemental Dr. Cote declaration, Genentech argues that U Schlissel, would discuss examples of non-cancerous breast cells outside the breast, such that No. 129 at 3-4 (Opp'n). On January 12, 2011, Genentech sent U Penn a letter stating that its 20 expert, Dr. Cote, would be prepared to discuss these examples at his February 1, 2011 deposition. 2011, Genentech filed a supplemental Dr. Cote declaration addressing the Dr. Schlissel declaration 23 examples. It is unclear why Genentech waited until February 25, 2011, two weeks after U Penn 24 filed its opening claim construction brief, to supplement Dr. Cote's declaration if Genentech knew Genentech argues that its late disclosures rebut U Penn's own late disclosures, and are Penn did not provide advance notice that the January 7, 2011 declaration of U Penn's expert, Dr. Genentech had no opportunity to rebut this position in its own disclosures the same day. See Dkt. However, U Penn did not ask Dr. Cote about the examples at his deposition. On February 25, as of sometime between January 7 and January 12, 2011 that Dr. Cote would respond to Dr. Schlissel's declaration. forced to untimely disclose new DCIS references because U Penn did not confirm U Penn's 5 position that DCIS is not cancer until its February 16, 2011 service of infringement contentions.
December 28, 2010, and included this opinion in its January 7, 2011 Joint Claim Construction 2010, then it is unclear why Genentech would not have sought and disclosed the disputed 10 references supporting such contention by the January 7, 2011 disclosure deadline. Moreover, it is Regarding the DCIS references, Genentech argued at the hearing on this Motion that it was However, Genentech also argues that it disclosed its intention to argue that DCIS is cancer on Statement. If Genentech knew that it would argue that DCIS is cancer as early as December 28, unclear why Genentech waited until February 25 to disclose references that Genentech found before that date. On the other hand, the Court recognizes that Genentech used three of the fourteen 13 disputed references during the February 8, 2011 deposition of U Penn's expert, Dr. Schlissel, and 14 that another three of the fourteen disputed references are U Penn brochures. opening claim construction brief without the benefit of all of Genentech's references and expert declarations. Furthermore, the litigation of Genentech's untimely disclosures has distracted U Penn from preparing its claim construction reply brief. However, the Court finds that in this case, 19 the prejudice is curable and does not justify exclusion. Justice is best served when issues are 20 decided on the merits. See Martinez v. Stanford, 323 F.3d 1178, 1182 (9th Cir. 2003)(reversing 21 summary judgment which was issued not on the merits, but based upon violation of the Southern District of California's Civil Local Rules). The Court concludes that the measures set forth below 23 cure any prejudice to U Penn stemming from Genentech's late disclosures. 2011 to file its claim construction reply brief (an extension of days from the original due date of March 4, 2011). In addition, U Penn is granted two additional pages to respond to Genentech's Nonetheless, the Court recognizes that there is some prejudice to U Penn who filed its Having considered the parties' submissions and arguments, and as stated at the March 3, 2011 hearing, the Court DENIES U Penn's Motion to Strike, but GRANTS U Penn until March 15, new evidence in its Reply claim construction brief, for a total of 22 pages.*fn2 Finally, U Penn is 2 granted leave to introduce new rebuttal documentary evidence up to and including March 15, 2011.
The additional evidence must be promptly disclosed to Genentech on a rolling basis and must rebut Genentech's untimely-disclosed evidence.