Yesterday, Special Master Gregory B. Williams, who has been nominated to replace Judge Stark, issued an order granting a motion to strike late Doctrine of Equivalents contentions.
In TQ Delta, LLC v. Comcast Cable Communications LLC, C.A. No. 15-611-RGA, D.I. 455 (D. Del. May 24, 2022), plaintiff served a new DOE theory over two months after final contentions were due, after it found—following non-infringement contentions received from the defendants—that its original DOE theory would fail.
Special Master Williams rejected the idea that any delay by defendants in providing non-infringement contentions justified the plaintiff's late DOE theory:
TQ Delta also argues that any delay in it providing the "elucidated" Source Code DOE Theory was a result of Defendants disclosing a new non-infringement theory only eleven (11) days before the Final Infringement Contentions were due. . . . However, TQ Delta . . . cannot point to or rely upon Defendants' Supplemental Interrogatory Responses to justify its failure to disclose the Source Code DOE Theory in the Final Infringement Contentions. . . . Indeed, it is TQ Delta's burden to prove infringement, including infringement under the DOE, and not Defendants' burden. . . . TQ Delta had the obligation to disclose all of its infringement contentions, including DOE theories, on or before December 15, 2021. TQ Delta cannot blame Defendants' non-infringement theories for not timely disclosing its Source Code DOE Theory.
The Court also faulted plaintiff for failing to seek leave before serving its amended infringement contentions.
Pennypack Didn't Save Plaintiff
We've talked repeatedly about the Pennypack factors sometimes—but not always—help parties escape the consequences of a late disclosures. But late-disclosed DOE arguments are one of the more frequently excluded arguments.
That's probably because of their nature. Plaintiffs sometimes pursue literal infringement first and then, if the direct infringement theory fails, assert a last-minute DOE argument in an attempt to save their case.
That seemed to happen here, where plaintiff asserted a new DOE theory after it turned out that the accused products do not use the technique that their first DOE theory relied upon:
The key point here is that the MoCA specifications technique, on which TQ Delta originally based its infringement claims [and DOE theory], is not used by the accused products. . . . Instead, the source code uses a different, alternative bin scrambler technique that is not described in the MoCA specifications. . . . The record reveals that TQ Delta had access to the source code from Broadcom and MaxLinear since September 2021 and also had notice of the distinction between the techniques disclosed by the MoCA Specifications and those used by the accused products before December 15, 2021 [the final infringement contention deadline]. . . . Thus, TQ Delta could have timely disclosed the Source Code DOE Theory in its Final Infringement Contentions but failed to do so.
The Court noted that parties in more sophisticated litigation get less leeway under Pennypack:
"Courts applying the Pennypack factors in the case of sophisticated, complex litigation involving parties represented by competent counsel have been less indulgent in their application and more willing to exclude evidence without a strict showing that each of the Pennypack factors has been satisfied." Bridgestone Sports Co. v. Acushnet Co., 2007 WL 521894, at *4 (D. Del. Feb. 15, 2007) (citing Astrazeneca AB v. Mutual Pharm. Co., 278 F.Supp.2d 491 (E.D.Pa.2003)). The Special Master specifically finds that this litigation is "sophisticated [and] complex" and that the parties to this action are represented by "competent counsel."
The Court found that a late DOE disclosure is particularly prone to causing prejudice:
TQ Delta's belated attempt to introduce a new DOE theory is "not a mere correction of information, but instead creates a new ballgame." Adtran, Inc., 2020 WL 4529865, at *2
Thus, TQ Delta's late disclosure of a new DOE theory is not an insignificant matter. Indeed, a new DOE theory can affect nearly every aspect of the defense and may require adjustments to Defendants' strategy, discovery, and other defense efforts. By failing to timely disclose the Source Code DOE Theory, TQ Delta deprived Defendants of the opportunity to conduct full factual discovery on the various issues that are affected by the new DOE theory (prior art, obviousness, ensnarement, etc.), including but not limited to discovery of the third-party chipset vendors.
Indeed, TQ Delta had the source code for at least three (3) months before the Final Infringement Contentions were due. However, by the time TQ Delta served its Second Amended Final Infringement Contentions, third-party discovery from the chipset vendors had been completed. Thus, Defendants did not have an opportunity to conduct full discovery of the third parties or other fact witnesses tailored to the Source Code DOE Theory. Moreover, Defendants did not have the opportunity to submit amended final invalidity contentions in light of the new DOE theory.
Id. at *12-13 (link added).
Special Master Williams also found that, with fact discovery closed, and much of the information in the hands of third parties, that the prejudice could not be cured, and that it was likely to delay or disrupt trial.
The Court further found that striking the DOE argument did not entirely deprive plaintiff of relief, because plaintiff could still rely on its previous DOE or literal infringement theories.
Thus, the Court granted the motion and struck the late DOE argument.
[Note: if you clicked in just to read the tea leaves about how Special Master Williams may rule as a judge, here is another recent post about an opinion by him.]
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