Judge: Michael Schneider
Holding: Attempt to Insert New Invalidity Theories DENIED
Judge Schneider is trying this case over in Tyler this week – in fact I'll bet the verdict comes back this afternoon.
This opinion came out last month during the run-up to trial when Judge Schneider resolved various motions he characterized as attempting to insert new invalidity theories in the case. To cut to the case, Judge Schneider granted the plaintiff’s motion to strike the expert opinions offered as to uncharted prior art references, and denied the defendants’ two motions for leave to amend their invalidity contentions (to line up with what the expert said in his report), and to strike the plaintiff’s infringement contentions and expert report on infringement.
Judge Schneider found that the defendants had not shown good cause to amend their invalidity contentions, concluding that the defendants had not been diligent. He wrote:
Defendants had an affirmative duty to disclose their invalidity contentions by the deadline set forth in the Court’s scheduling order. A request for late amendment must be prompt and demonstrate good cause for the amendment. Defendants seek to add prior art that was in their possession when they served their invalidity contentions. Defendants then waited until five weeks after their expert listed the references in his report before requesting leave to amend. Finally, and perhaps most egregiously, Defendants suggest that the burden shifted to Plaintiffs to object to the expert report, which included previously undisclosed references. Defendants’ explanation is inconsistent with the local rules.