Richards Layton & Finger

Chief Judge Stark Denies Motion to Reconsider Stricken Infringement Contentions

March 6, 2018

In Galderma Laboratories, L.P. v. Amneal Pharmaceuticals, LLC, No. 16-207-LPS (D. Del. Jan. 22, 2018), Chief Judge Stark denied the plaintiffs’ motion to reconsider the Court’s decision to strike their supplemental contentions of literal infringement, which were served after the close of fact discovery. According to the plaintiffs, reconsideration was appropriate because, after the motion to strike briefing, the defendants’ expert responded to the literal infringement contentions in his rebuttal report, constituting “newly discovered facts” that negated any suggestion of prejudice.

But the Court stated that there was no way to know whether the expert would have held the same opinions if literal infringement had been timely asserted; even if so, the untimely literal infringement theories deprived the defendants of the opportunity to make other litigation strategy decisions, such as retaining additional experts to address literal infringement, asserting different claims or defenses, or taking different claim construction positions.

Aside from prejudice, Chief Judge Stark further explained that other factors supported the decision to strike the literal infringement contentions. According to the Court, the plaintiffs’ explanation for the timing of the literal infringement theory was unpersuasive, and no other available, adequate remedy would avoid disrupting the trial. Accordingly, the Court denied the motion for reconsideration.

Key Point: Contentions should be made timely and parties should not, for example, raise new contentions in expert reports. Responding to contentions deemed untimely does not, in itself, mean that a party has not suffered prejudice.