United States District Court, D. Delaware
before the Court is Defendants' motion regarding their
invalidity combinations. (D.I. 353). I have reviewed the
parties' briefing and related letters. (D.I. 348, 349,
354, 382, 385). Defendants' motion builds on the issues
discussed at the February 26, 2019 discovery conference.
September 2015, Plaintiff ChanBond, LLC
("ChanBond") filed thirteen suits against numerous
defendants (collectively, "Defendants").
(E.g., D.I. 1 (complaint against Atlantic Broadband
Group, LLC)). On February 23, 2018, the Patent Trial and
Appeal Board ("PTAB") issued a Final Written
Decision invalidating certain asserted claims. (D.I. 244, Ex.
The PTAB decision is currently on appeal before the Federal
Circuit. Fact discovery closed on July 6, 2018, and expert
discovery closed on February 22, 2019. Opening summary
judgment and Daubert briefs have been filed. (D.I.
358, 361, 364, 367, 370). No. trial date has been set in view
of the pending appeal. (D.I. 347).
present dispute stems from a September 2017 agreement between
the parties, which the Court adopted as a scheduling order.
(D.I. 142). The parties stipulated to certain discovery
deadlines, three of which are relevant here. First, by
November 3, 2017, the parties agreed to "[substantially
comply with outstanding written discovery and document
production." Second, by November 10, 2017, ChanBond
agreed to reduce its number of asserted claims to eighteen.
Third, by December 4, 2017, Defendants agreed to reduce their
number of prior art references to eighteen and their number
of invalidity combinations to four per claim. (Id.
at 2). The parties made their respective reductions.
January 4, 2019, Defendants introduced a new invalidity
combination relating to U.S. Patent No. 8, 341, 679
("the '679 patent") via the reply report of
their invalidity expert, Dr. Prucnal. (D.I. 355, Ex. O). Dr.
Prucnal combines two references-U.S. Patent Nos. 7, 017, 176
("Lee") and 7, 274, 679 ("Amit")-that he
independently addressed in his opening report. (Id.,
Ex. M §§ LX.A-B, X.A.2, X.C.2). Defendants argue
that the Lee/Amit combination is in response to
ChanBond's new validity argument presented by its expert,
Dr. Akl, in his opposition report. (D.I. 354 at 6). Dr. Akl
opined, "Lee's purported innovation only relates to
the upstream transmission from the cable modem to the head
end" (D.I. 355, Ex. N ¶ 154), and similarly,
"Amit's purported innovation only relates to the
downstream transmission from the [head end] to the cable
modem" (id, ¶ 176). In response, Dr.
Prucnal testified that a person of ordinary skill in the art
would have been motivated to combine Lee and Amit to produce
a "bidirectional" device, having both
"upstream" and "downstream" transmission,
as required by the '679 patent claims. (Id., Ex.
O ¶ 495).
moved to strike Dr. Prucnal's reply testimony regarding
the Lee/Amit combination as a violation of the September 2017
scheduling order. (D.I. 348). I heard argument at the
February 26, 2019 discovery conference. (D.I. 351). I
declined to decide the issue at the time but gave the parties
the option of further briefing. (Id. at
27:25-28:21). Defendants then filed the present motion
requesting an order allowing Defendants to rely on the
Lee/Amit combination. (D.I. 353, 354).
parties disagree on the legal standard that should apply.
ChanBond argues that, since Defendants seek to add a new
invalidity theory in violation of the September 2017
scheduling order, they must show good cause under Federal
Rule of Civil Procedure 16. (D.I. 382 at 6-7). Defendants
argue that this Court generally applies the
Pennypack factors, under Federal Rule of Civil
Procedure 37, to assess whether exclusion is an appropriate
sanction. (D.I. 354 at 7-10).
Court addressed a similar situation in St. Clair
Intellectual Property Consultants, Inc. v. Matsushita
Electric Industrial Co., 2012 WL 1015993 (D. Del. Mar.
26, 2012), aff'd, 522 Fed.Appx. 915 (Fed. Cir.
2013). In St. Clair, the plaintiff sought to add
additional infringement theories past the Court's
scheduling order deadline for serving infringement
contentions. Id. at *5. The Court applied both Rule
16 and Pennypack, first finding no good cause under
Rule 16 and then finding exclusion appropriate under the
Pennypack factors. Id. at *5-9. Although I
come out differently on good cause, I will still consider
both standards. See Rowe v. E.I. du Pont de Nemours &
Co., 2010 WL 703210, at *4-5 (D.N.J. Feb. 24, 2010)
(finding an extension of time to serve expert reports and
disclosures supported by good cause, as well as "further
supported" by the Pennypack factors).
Defendants Show Good Cause under Rule 16
16(b)(4) provides, "A schedule may be modified only for
good cause and with the judge's consent."
Fed.R.Civ.P. 16(b)(4). "Good cause is present when the
schedule cannot be met despite the moving party's
diligence." Meda Pharm. Inc. v. Teva Pharm. USA,
Inc., 2016 WL 6693113, at *1 (D.Del. Nov. 14, 2016).
argue that they have been diligent because the new Lee/Amit
combination is responsive to ChanBond's new validity
theory that was first disclosed in Dr. Akl's opposition
report, served on November 30, 2018. (D.I. 354 at 3-6, 13-15;
D.I. 355, Ex. N). Defendants assert that prior to then,
ChanBond had only provided boilerplate answers to discovery
requests about its validity theories. (D.I. 354 at 3-6).
Therefore, Defendants raised the Lee/Amit combination at the
first available opportunity-Dr. Prucnal's reply report,
served on January 4, 2019. (D.I. 354 at 15; D.I. 355, Ex. O).
rely on ChanBond's responses to Interrogatory No. 9,
If you contend that any of the references cited in the
exhibits in Defendants' Invalidity Contentions (and any
supplements thereto) do not invalidate or render obvious the
asserted claim of the Asserted Patent(s) for which it was
cited, identify each claim limitation that You believe is
missing from the reference and ...