Simo Holdings Inc. v. Hong Kong Ucloudlink Network Tech. Ltd.
354 F. Supp. 3d 508
S.D. Ill.2019Background
- Court set Sept. 10, 2018 deadline for defendants to serve invalidity contentions under Local Patent Rule 7; defendants served initial contentions by that date.
- Defendants served three supplemental invalidity contentions on Oct. 26, 2018, Jan. 7, 2019, and Jan. 8, 2019 allegedly adding new prior art and 35 U.S.C. § 112 theories.
- Defendants’ expert Feuerstein served a report on Jan. 14, 2019 that plaintiff says adds another new § 112 argument.
- Local Patent Rule 7 requires identification of prior art and other invalidity grounds; Rule 26(e) requires timely supplementation when disclosures are materially incomplete.
- Defendants did not explain what new information they learned or when, leaving the court unable to determine whether the supplements were timely under Rule 26(e).
- Court found the supplements untimely but refused to strike the expert; instead it (1) extended plaintiff’s rebuttal expert deadline to Feb. 14, 2019, (2) allowed additional fact discovery through Feb. 15, and (3) barred further supplemental invalidity contentions and further supplementation of Feuerstein’s report without court permission and a showing of good cause.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Were defendants’ supplemental invalidity contentions timely under Fed. R. Civ. P. 26(e)? | Supplements are untimely because they added new prior art and § 112 theories after the rule deadline. | Supplements were permissible under Rule 26(e) because parties may supplement when they learn new information; discovery was still open. | Untimely: defendants failed to show what new information they learned or when, so duty-to-supplement timing not satisfied. |
| Does this court’s Local Patent Rule require showing good cause to supplement? | N/A (plaintiff urged exclusion based on untimeliness and prejudice). | Argues other courts require good cause; defendants relied on Rule 26(e) rather than a local good-cause standard. | Court: Good-cause cases cited by plaintiff rely on different local rules; here good cause not required but timeliness under Rule 26(e) is required. |
| Is preclusion (striking expert/report) an appropriate sanction for untimely supplements? | Seeks exclusion of Feuerstein’s report/testimony relying on new materials. | Exclusion unnecessary; discovery remains open and prejudice can be mitigated. | Exclusion denied as drastic; prejudice was slight and curable with limited relief. |
| What relief is appropriate for untimely supplementation? | N/A (sought exclusion). | Requested ability to develop theories as case evolves and to rely on supplements. | Court extended plaintiff’s rebuttal report deadline to Feb. 14, 2019, allowed additional fact depositions through Feb. 15, 2019, barred further supplemental invalidity contentions, and barred further supplementation of Feuerstein’s report absent court permission and good cause. |
Key Cases Cited
- Lewis v. FMC Corp., 786 F. Supp. 2d 690 (W.D.N.Y. 2011) (duty to supplement arises when party learns information that renders earlier disclosure incomplete)
- Wechsler v. Hunt Health Sys., Ltd., 381 F. Supp. 2d 135 (S.D.N.Y. 2003) (exclusion of testimony is a drastic, disfavored sanction)
- Coles v. Perry, 217 F.R.D. 1 (D.D.C. 2003) (Rule 26(e) obligates supplementation only when disclosure is incomplete, not to allow unrestricted supplementation)