United States District Court, D. Delaware
has submitted a letter related to Defendant's new
non-infringement defenses raised for the first time in the
pre-trial order. (D.I. 130). In a Memorandum Order issued the
same day Defendant submitted its letter, I found that
"Defendant has waived the right to contest the following
limitations of the asserted claims: (1) 'bupropion .. .
effective to induce weight loss' ('626 and '111
patents); (2) 'naltrexone ... effective to enhance the
weight loss effect of the bupropion' ('626 and
'111 patents); and (3) 'sustained release'
('111 and '195 patents)." (D.I. 129 at 5). This
decision was based on the fact that Defendant had, prior to
submitting the pre-trial order, failed to contest
infringement of these limitations or allege failure of proof
as to any of these limitations. (Id. at 4-5).
read Defendant's letter and all of the cases Defendant
cites as support for its argument that Plaintiff should not
be "relieved" of its burden to prove infringement.
I am not persuaded.
initial matter, I note that Defendant is correct in pointing
out that Plaintiff has the burden to prove infringement. This
does not mean, however, that Defendant can propound new
theories of non-infringement or failure of proof on the eve
of trial. Defendant's cases do not suggest otherwise. For
example, in Finjan, the plaintiff moved for JMOL
after a jury returned a verdict of noninfringment, arguing
that the defendant had not challenged infringement at trial.
Finjan, Inc. v. Symantec Corp., 2013 WL 5302560, at
*22 (D. Del. Sept. 19, 2013), affd, 577 F.App'x
999 (Fed. Cir. 2014). The court denied plaintiffs motion,
noting that it was plaintiffs burden to prove infringement.
Id. at *23. This case merely stands for the
uncontroversial proposition that it is the patentee's
burden to prove infringement. The case says nothing about
whether a defendant can wait until the eve of trial to
respond to Plaintiffs requests that Defendant describe the
legal and factual bases for its noninfringement contentions.
equally unpersuaded by Defendant's citations to cases
that purportedly support its position that interrogatory
responses are not binding. In one case, the court noted that
the party had timely supplemented its discovery response and
further clarified, "This is not to say that [Plaintiff]
can forever avoid summary judgment by amending its responses
to defendants' interrogatories, but rather that
[Plaintiffs] initial interrogatory responses are not binding
at this stage." Intellect Wireless, Inc. v. T-Mobile
USA, Inc., 735 F.Supp.2d 928, 937 (N.D. 111. 2010).
Here, Defendant never supplemented its interrogatory
responses. Defendant cannot credibly argue that service of
its portion of the pre-trial order constituted a good faith
attempt to timely supplement its discovery responses. None of
the additional cases cited by Defendant provide support for
essence, Defendant's position is that it can make
discovery useless as a way to narrow down the disputed issues
in a case. That position is inconsistent with the
exhortations in the Federal Rules of Civil Procedure. For
example, as a general matter, trial courts are supposed to
administer the rules "to secure the just, speedy, and
inexpensive determination" of the case. Fed.R.Civ.P. 1.
Trial courts may hold conferences for the purpose of
"discouraging wasteful pretrial activities."
Fed.R.Civ.P. 16(a)(1). The "scope of discovery" is
supposed to be "proportional to the needs of the
case." Fed.R.Civ.P. 26(b)(1). As identified in my
earlier order, Defendant timely raised various
non-infringement or "failure of proof positions during
the course of discovery. (D.I. 129 at 3-4). It could have put
Plaintiff on notice that it was not conceding other specific
infringement allegations. It did not. Thus, Defendant misled
Plaintiff as to what the issues in the case were. Defendant
does not offer any good reason for doing so. I do not
consider Defendant's proffered reason, that is, that
Plaintiffs experts made damaging admissions during deposition
(D.I. 130 at 2-3 & n. 2) on what were then uncontested
issues, as being a good reason, as Defendant's position
is essentially that any narrowing of the case which it
represents is occurring during the course of discovery is
illusory. I do not think this is correct. Thus,
while I have considered the issues raised in Defendant's
letter, I am not going to alter the Order of May 19, 2017
 For reasons that are properly unknown
to me, Defendant replaced one set of well-regarded attorneys
with a different set of well-regarded attorneys in March 2017
(compare D.I. 109 with D.I. 110), which was when expert
depositions were about to take place. The second set of
attorneys seems to have had major differences of opinion with
the first set not only on Defendant's approach to
infringement but also to invalidity. I have allowed the
change in positions on invalidity, as I think the change
could be allowed without any significant prejudice to
Plaintiff. (See D.I. 129 at 3). The same is not the case in
regard to infringement, as allowing Defendant to change its
noninfringement theories at this late date ...