Earlier today, Judge Connolly issued a ruling precluding a defendant from pursuing its inventorship theory under 35 U.S.C. § 102(f). The ruling is notable because the request for preclusion came at trial after the defense was included in the parties' pretrial order. Nonetheless, Judge Connolly found that the circumstances justified exclusion.
Although defendant Sandoz's final contentions had raised an inventorship defense, it was focused on misjoinder as opposed to nonjoinder, Judge Connolly explained.
And although Sandoz included a nonjoinder defense in its portion of the pretrial order, Judge Connolly noted that "given the number of contested facts and issue of law Sandoz identified in the 8,629-page PTO, I would not fault Plaintiffs if they failed to appreciate in the throes of last-minute trial preparation that the Pharmorphix inventorship theory was beyond the scope of Sandoz's final contentions."
Judge Connolly held that Sandoz had not shown good cause to modify its final contentions (in fact, he concluded that "Sandoz waived its right to present at trial an invalidity theory not disclosed in its final contentions."), nor had it established that its failure to disclose the defense earlier was substantially justified and harmless. According to the Court,
In short, Sandoz's disclosure of its inventorship theory on the eve of trial and almost eight months after it served its final contentions was unjustified, prejudiced Plaintiffs, and deprived Plaintiffs of the opportunity to cure any prejudice.
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