United States District Court, D. Delaware
April 2, 2019, 1 issued an order granting Defendant's
Motion for Leave to Serve Supplemental Expert Reports of Dr.
Walker (D.I. 741) and denying Plaintiffs Cross-Motion to
Strike Untimely Supplemental Reports of Dr. Walker and Dr.
Walker's Untimely Expert Declaration. (D.I. 847). I now
write to explain the reasoning supporting that order.
Additionally, I address Plaintiffs pending Motion to Strike
Dr. Walker's Untimely Expert Declaration for Family 3.
(D.I. 970). I have reviewed the parties' briefing
associated with all three motions. (D.I. 742, 848, 917, 970,
994, 1024, 1052).
TQ Delta filed this lawsuit against Defendant 2 Wire on
November 4, 2013 asserting infringement of twenty-four
patents. (D.I. 1). I have divided the case into separate
trials based on families of patents. (D.I. 280). The motions
at issue herein address untimely disclosure of expert opinion
relating to the Family 2 and 3 patents. Fact discovery for
all the asserted patent families closed on October 1, 2018.
Expert reports were sequenced as follows: Family 2 opening
reports were due on November 2, 2018; Family 2 rebuttal
reports were due on November 29, 2018; Family 2 reply reports
were due on December 21, 2018; Family 3 opening reports were
due on November 28, 2018; Family 3 rebuttal reports were due
on December 28, 2018; and Family 3 reply reports were due on
January 18, 2019. Expert discovery for both Family 2 and
Family 3 closed on February 8, 2019. The pretrial conference
for Family 2 is scheduled for April 18, 2019 and trial is
scheduled for April 29, 2019. (D.I. 513). The pretrial
conference for Family 3 is scheduled for May 10, 2019 and
trial is scheduled for May 20, 2019.
motions discussed herein concern supplemental reports and
declarations of Dr. Walker, Defendant's technical expert.
The supplemental reports were served on Plaintiff on February
5 (Family 2), the day before, and February 6 (Family 3), the
day of, Plaintiffs deposition of Dr. Walker and after the
deadline for expert reports. Defendant has filed a motion for
leave to serve the supplemental reports. (D.I. 741).
Plaintiff has cross-moved to strike the reports and to strike
Dr. Walker's declaration (D.I. 717) filed in support of
Defendant's motion for summary judgment of
noninfringement. (D.I. 847). Plaintiff has additionally filed
amotion to strike Dr. Walker's declaration (D.I. 881)
filed in support of Defendant's opposition brief in
summary judgment briefing for Family 3.
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
DISCUSSION A. Dr. Walker's Supplemental
requests leave to serve the supplemental expert reports of
Dr. Walker for Family 2 and Family 3. Defendant asserts that
there is good cause for the late disclosure of these opinions
because Defendant was barred from accessing the Broadcom
source code from November 14, 2018 to January 14, 2019, when
it gained access through Broadcom itself. (D.I. 742 at 4).
Defendant also asserts that the Pennypack factors
weigh in favor of permitting the reports because Plaintiff
was not surprised by the supplemental reports. (Id.
at 6; D.I. 917 at 8-9). Plaintiff responds that the
Pennypack factors weigh in favor of excluding the
reports because Defendant acted in bad faith and the
prejudice to Plaintiff is incurable at this stage in the
litigation. (D.I. 848 at 19-22). It is undisputed that the
reports are untimely.
first Pennypack factor weighs in favor of exclusion.
Plaintiff has clearly been prejudiced by Defendant's
service of the reports just one day before (Family 2) and
during (Family 3) Plaintiffs deposition of Dr. Walker. The
late disclosure deprived Plaintiff of the opportunity to
adequately prepare for deposition. I do not believe that
Plaintiffs awareness of Defendant's ongoing efforts to
access the non-produced source code diminishes the prejudice
to Plaintiff. However, I note that the prejudice to Plaintiff
in the summary judgment briefing is minimal as it received
the supplemental reports before the end of expert discovery.
second and third Pennypack factors weigh against
exclusion. Plaintiff argues that the reports will disrupt
preparation for the trials. I disagree. There is still
adequate time for Plaintiff to depose Dr. Walker on his
supplemental reports and for Plaintiffs expert, Dr. Almeroth,
to supplement his reply reports. At the time of my previous
order, there was still three full weeks before the Family 2
trial and six weeks until the Family 3 trial. Moreover,
Plaintiff has had the reports since early February, almost
three full months before the Family 2 trial.
fourth Pennypack factor weighs against exclusion.
Plaintiff alleges that Defendant's late disclosure of the
supplemental reports was done in bad faith and in willful
violation of the scheduling order. Plaintiff argues that
Defendant (1) first requested to view the escrowed source
code after Plaintiffs Family 2 opening expert report and
after forgoing the opportunity to do so during fact
discovery, (2) served the supplemental reports shortly before
and during Plaintiffs deposition of Dr. Walker while
providing the reports to Defendant's own expert, Dr.
Jacobsen, two days earlier, and (3) failed to request leave
to serve the reports before it did so. (D.I. 848 at 9-10, 12,
19-20). Defendant responds that (1) Plaintiff carries the
burden of proof on infringement, and thus its delay in
viewing the escrowed source code was legitimate, (2) its
failure to disclose these opinions at the time for expert
reports was due to the unexpected actions of the third-party
escrow vendor in preventing its review of the source code
after November 14, 2018, and (3) it diligently worked from
the time it received access to the code to provide the new
opinions in a timely manner. (D.I. 917 at 4, 7-8).
am sympathetic to Plaintiffs frustration at the timing of
service of Dr. Walker's reports, I do not believe that
the timing was a result of bad faith or willful deception.
While Defendant certainly could have undertaken to review the
source code in full during fact discovery, it was also
logical for Defendant to believe that it could undertake a
more streamlined review of the specific source code
identified in the initial reports at a later date. Moreover,
the third-party escrow vendor's refusal to allow
Defendant's expert to continue to review the source code
after November 14, 2018 was unexpected. Finally, it appears
that Defendant's expert diligently and timely prepared
his reports after gaining access to the source code through
Broadcom itself, examining the code and drafting his opinions
in roughly two weeks. (D.I. 742 at 4, 6). Given the factual
circumstances, and Defendant's inability to access the
source code for a significant period of time during expert
discovery, I do not find that Defendant's failure to
disclose the information during the scheduled period for
expert reports was in bad faith, and thus, the fourth
Pennypack factor weighs against exclusion.
fifth Pennypack factor also weighs against
exclusion. The new opinions offered by Dr. Walker are
important evidence in support of Defendant's
noninfringement case. Plaintiff argues that many of the new
opinions improperly reply to opinions in Dr. Almeroth's
reply reports. (D.I. 848 at 11, 17-18). However, the opinions
offered in Dr. Walker's supplemental reports appear to be
responsive to the corresponding opening reports of Dr.
Almeroth, and to expand upon opinions that would have been
offered in Dr. Walker's timely rebuttal reports if he had
had access to the source code at that time. (Compare,
e.g., D.I. 849-22 ¶ 63 (Family 3 rebuttal report)
with D.I. 849-17 ¶¶ 24-26 (Family 3
supplemental report); compare D.I. 849-22
¶¶ 55-56 with D.I. 849-17 ¶ 27;
compare D.I. 849-21 ¶¶ 43, 48 (Family 2
rebuttal report) with D.I. 849-16 ¶¶ 17-21
(Family 2 supplemental report)). Thus, this factor weighs
the Pennypack factors weigh against exclusion.
See Glaxosmithkline LLC v. Glenmark Pharms. Inc.,
USA, 2017 U.S. Dist. ...