Opinion
4:20-cv-03127
06-18-2024
Automated Layout Technology, LLC v. Precision Steel Systems, LLC, Nicholas Donner, and Donner Steel Works, Inc.,
Craig R. Smith, LANDO & ANASTASI, LLP Counsel for Plaintiff
Craig R. Smith, LANDO & ANASTASI, LLP Counsel for Plaintiff
Michael D. Nelson, United States Magistrate Judge
Dear Judge Nelson:
We represent Plaintiff Automated Layout Technology, LLC (“ALT”) and write concerning a discovery dispute related to Defendants' proponent expert report served on May 30, 2024. Defendants' expert relies on prior art that was not disclosed in Defendants' invalidity contentions.
The case progression orders set deadlines for invalidity contentions as September 2, 2022 (for the ‘588 Patent) and April 12, 2023 (for the ‘826 Patent). ECF Nos. 83, 164. ALT has relied on those invalidity contentions in this case, as did Defendants in challenging the patents in the USPTO. Those challenges failed.
After losing in the USPTO, Defendants filed a never-before-seen exhibit containing new invalidity theories and previously undisclosed prior art. ECF No. 212-3 (“Exhibit C”). Defendants filed these new contentions after the deadlines had passed, without having previously served them on ALT, without seeking leave to amend them, and without moving to extend the deadlines. ALT feared that Defendants would incorporate the previously undisclosed prior art into this case, beginning with their proponent expert report. As such, ALT moved to strike the new invalidity contentions. ECF No. 215 at Page ID # 6289-94 (ALT's motion to strike “Exhibit C”). See also ECF No. 227 at Page ID # 6665-67 (ALT's reply brief). ALT's motion has been pending for about six months.
Now, Defendants are doing exactly as ALT feared. Defendants are incorporating their new invalidity contentions into this case as if they are in fair play, which they are not. Specifically, Defendants' expert relies on the previously undisclosed prior art, including references “Lange” and “Messer.” The Federal Rules support precluding Defendants from relying upon or introducing into evidence prior art and arguments not disclosed in their invalidity contentions. See, e.g., Fed.R.Civ.P. 37(b)(2)(A)(ii) (“prohibiting the disobedient party from supporting or opposing designated claims or defenses, or from introducing designated matters into evidence”).
ALT should not be required to respond to prior art references that were not disclosed during fact discovery in accordance with the Court's case progression orders. Resolution of this dispute would be beneficial prior to July 1, 2024, when ALT's rebuttal report to Defendants' proponent expert report is due.
Thank you for your consideration.