Digging into Innogenetics v. Abbott Labs, (1/17/08 CAFC), you find a case that went from filing through trial in the W.D. Wisconsin in only one year. That is a laudable goal for patent litigation. While swift justice is hoped for, an accompanying feature is that some proofs and strategies get cut away. Here, the CAFC affirms the pretrial exclusion of a “supplemental” expert report as well as the lay-expert testimony of the inventor of claimed invalidating references. Ouch!
One notion that is not often heard is exclusion of a prior art reference that was not disclosed until “the final day of discovery.” Most patent litigators have gotten use to that disclosure being made 30 days before trial, as the statute allows, and regardless of dates in the pretrial order. Here though, the last day of discovery was deemed too late for the opponent to prepare and deal with the reference.
Similarly, there so often is a last-minute flurry of “supplemental” expert reports, but apparently not in Wisconsin. The lower court excluded that, about six weeks before trial, stating that the permission to supplement is “not a blank check for a party to use submit new arguments regarding a matter previously mentioned.” In application, that exclusionary logic was applied to contentions in the supplemental report, which regarded a previously cited prior art. The supplemental report and excluded reference were known “intimately” to the opponent, since the references were key to the inequitable conduct claims – but, the court ruled that was old, and the way the supplemental submissions dealt with the matters was new, and so, excluded. Ouch! In the main, it was thought that the courts had a duty to assess the validity of a patent, in view of all art, even that which was late-cited or even uncited. The public interest in the validity of any patent monopoly outweighed the narrow concerns with control over the docket and the deadlines. But, apparently not in Wisconsin