Judge Andrews Denies Defendant’s Request to Add New Non-Infringement Defenses Raised for First Time in Pretrial Order

July 11, 2017

Publication| Intellectual Property

In Orexigen Therapeutics, Inc. v. Actavis Laboratories FL, Inc., C.A. No. 15-451-RGA (D. Del. May 31, 2017), Judge Andrews denied the defendant’s request to add new non-infringement defenses raised for the first time in the pretrial order. In a prior opinion, the Court had found that by not including these non-infringement defenses in its responses to the plaintiff’s interrogatories, the defendant had waived its right to contest infringement of certain limitations in the asserted patent claims. Here, the Court was not persuaded by the defendant’s argument that because a plaintiff bears the burden of proving infringement at trial, it should be permitted to propound new theories of non-infringement or failure of proof on the eve of trial. Specifically, the Court did not consider the defendant’s proffered reason—that the plaintiff’s experts made damaging admissions during depositions on what were then uncontested issues—sufficient to permit the defendant to effectively supplement its interrogatory responses so close to trial. Ultimately, the Court found that the defendant’s position was contrary to the Federal Rules of Civil Procedure’s purpose, which is “to secure the just, speedy, and inexpensive determination” of the case.

Key Points: The Court is unlikely to allow a party to effectively supplement its discovery responses in a pretrial order.

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