United States District Court, D. Delaware
pending before the Court is Defendants' Motion to Strike
various portions of Dr. Zhou's Declaration. (D.I. 230). I
have reviewed the parties'briefing. (D.I. 231, 247, 251).
The parties supplemented their briefing to address a
late-filed report by Dr. Zhou. (D.I. 271. 274).
asserts claim 3 of U.S. Patent No. 8, 303, 991 ("the 991
patent") and claim 3 of U.S. Patent No. 8, 435, 567
("the '567 patent") (collectively, "the
Asserted Claims"). (D.I. 1). The patents-in-suit
"relate to pharmaceutical compositions for inhalation
and methods of making them." (D.I. 82 at 1). The
asserted claims are dependent claims which cover only
composite active particles made of an active ingredient and
an additive material that includes magnesium stearate. (D.I.
195 at 9). The claims require that the additive material
promotes dispersion of the active material for inhalation,
and in the case of the '567 patent, delays dissolution of
the active material. (See D.I. 169 at 2).
August 10, 2018, the parties made various motions for summary
judgment. (D.I. 120, 122, 126). On October 1, 2018, I issued
my claim construction opinion, and subsequently, the claim
construction order. (D.I. 167; D.I. 169). The parties had
exchanged expert reports prior to the opinion, and my
constructions of the claim terms differed from that of either
party. I then permitted supplemental expert discovery between
the parties and amended summary judgment briefing. (D.I.
176). The parties have exchanged supplemental expert
discovery and amended their previous summary judgment
the amended summary judgment briefing, Plaintiff attached a
declaration from its infringement expert, Dr. Zhou, to its
opposition brief to Defendants' motion for summary
judgment of noninfringement. (D.I. 211). Defendants have
filed a motion to strike portions of that declaration as
untimely new opinion. (D.I. 230). On March 22, 2019,
Plaintiff then filed a sur-reply report from Dr. Zhou.
Defendants then filed a letter requesting that the new report
be addressed with Dr. Zhou's declaration. (D.I. 271).
Rule of Civil Procedure 37(c)(1) provides that "[i]f a
party fails to provide information ... as required by Rule
26(a) or (e), the party is not allowed to use that
information .. . to supply evidence on a motion, at a
hearing, or at trial, unless the failure was substantially
justified or is harmless." To determine whether a
failure to disclose was harmless, courts in the Third Circuit
consider the Pennypack factors: (1) the prejudice or
surprise to the party against whom the evidence is offered;
(2) the possibility of curing the prejudice; (3) the
potential disruption of an orderly and efficient trial; (4)
the presence of bad faith or willfulness in failing to
disclose the evidence; and (5) the importance of the
information withheld. Konstantopoulos v. Westvaco
Corp., 112 F.3d 710, 719 (3d Cir. 1997) (citing
Meyers v. Pennypack Woods Home Ownership Ass 'n,
559 F.2d 894, 904-05 (3d Cir. 1977)). "[T]he exclusion
of critical evidence is an 'extreme' sanction, not
normally to be imposed absent a showing of willful deception
or 'flagrant disregard' of a court order by the
proponent of the evidence." Id. The
determination of whether to exclude evidence is within the
discretion of the district court. Id.
move to strike the last sentence of paragraph 14 and
paragraphs 15 and 22-27 from Dr. Zhou's Declaration.
Defendants assert that Dr. Zhou's declaration introduces
new expert opinions and contradicts his prior testimony.
(D.I. 231 at 6). More specifically, Defendants assert that
the declaration offers new opinions that should have been
disclosed in Dr. Zhou's supplemental expert report as the
new opinions are supported by evidence that was available to
Dr. Zhou at the time of his opening supplemental report.
(Id.). Plaintiff asserts that Dr. Zhou's
declaration does not offer new opinions. (D.I. 247 at 7). In
the alternative, Plaintiff argues that to the extent any new
opinions were offered, the Pennypack factors weigh
against exclusion of those opinions. (Id. at 11).
I do not understand the last sentence of paragraph 14 of Dr.
Zhou's declaration to offer an improper new opinion.
Rather, in paragraph 14, Dr. Zhou reiterates his opinions
from his supplemental report "and elaborated on how he
had reached that opinion by providing greater detail. . . .
[S]uch an elaboration on his prior [report] is
appropriate" and should not be stricken. Dow Chem.
Co. v. Nova Chems. Corp. (Canada), 2010 WL 2044931, at
*2 (D. Del. May 20, 2010).
as Defendants do not move to strike paragraphs 16-21, which
expand on paragraph 15, 1 determine that paragraph 15 is not
prejudicial to Defendants even if it embodies new opinions.
Thus, the first three Pennypack factors weigh
against exclusion. The fourth Pennypack factor also
weighs against exclusion as there has been no allegation that
Plaintiff acted in bad faith. Finally, I determine that the
opinions in paragraph 15 are important rebuttal evidence, and
thus, the fifth Pennypack factor weighs against
exclusion. Therefore, paragraph 15 will not be struck.
paragraphs 22-27 provide new rebuttal opinions from Dr. Zhou
that Defendants argue he should have disclosed in his
supplemental report because the information he relied upon
was available at that time. (D.I. 231 at 9). As these
opinions go beyond mere elaboration, they are untimely
opinions under Rule 26.
first Pennypack factor weighs in favor of exclusion.
These new opinions were first disclosed when they were filed
concurrently with Plaintiffs opposition brief to
Defendants' motion for summary judgment. Moreover, to the
extent the opinions contradict previous deposition testimony
of Dr. Zhou, the surprise to Defendants may be greater than
the average untimely disclosure of expert opinion.
the second Pennypack factor weighs against
exclusion. In considering Defendants' motion for summary
judgment of noninfringement, I did not rely on the opinions
that Defendants had moved to strike. (Hr'g Trans, at 99:2-7.)
Therefore, there was no prejudice to Defendants in
consideration of the summary judgment motions. There is
enough time before trial for ...