Bausch & Lomb Incorporated v. SBH Holdings LLC
1:20-cv-01463
D. Del.Mar 11, 2025Background
- Bausch & Lomb filed suit alleging that SBH Holdings’ products infringed its patents, specifically the '297 and '522 patents.
- In March 2023, Bausch served an interrogatory seeking all non-infringement contentions; SBH did not disclose a disclosure-dedication theory in response.
- SBH first raised the disclosure-dedication argument in summary judgment papers filed in September 2024, long after discovery closed.
- Magistrate Judge Burke granted Bausch’s motion to strike the late-raised theory as untimely under Rule 26(e), and found exclusion warranted under Rule 37(c) and the Pennypack factors.
- SBH objected to Judge Burke's ruling, arguing the theory was purely legal and not subject to discovery disclosure; Bausch opposed and sought affirmance.
- The District Judge overruled SBH’s objection, adopting Judge Burke’s findings and holding the theory was properly excluded as untimely and prejudicial.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether untimely disclosure of a legal theory (disclosure-dedication) in summary judgment papers should be excluded | Theory not disclosed in discovery violates Rule 26(e) and is prejudicial | Purely legal theory, not required to disclose in discovery | Theory excluded as untimely and prejudicial under Rule 37(c) |
| Whether Interrogatory No. 8 required disclosure of legal contentions | Language includes legal/factual basis for non-infringement | Interrogatory did not seek legal contentions | Interrogatory required disclosure of theories, including legal ones |
| Whether late disclosure is justified/harmless under Rule 37(c) | Late disclosure prevented discovery and response, causing prejudice | No prejudice as issue is purely legal, thus harmless | Late disclosure not justified or harmless; exclusion appropriate |
| Whether exclusion is warranted by Pennypack factors | All factors support exclusion—prejudice, surprise, disruption | Lack of prejudice; purely legal issue | Pennypack factors support exclusion; factual disputes possible |
Key Cases Cited
- Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046 (Fed. Cir. 2002) (establishes the disclosure-dedication rule in patent law)
- Toro Co. v. White Consol. Indus., Inc., 383 F.3d 1326 (Fed. Cir. 2004) (disclosure-dedication may have underlying factual questions affecting legal determination)
- Trudell Med. Int'l Inc. v. D R Burton Healthcare, LLC, 127 F.4th 1340 (Fed. Cir. 2025) (untimely legal defenses may be excluded under Rule 37)