Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED April 13, 2017, Order) (Bryson, CJ)
Monday, April 17, 2017
Challenge to Printed Publication Status of Prior Art Reference Does Not Justify Late Disclosure of New Reference
The court granted plaintiff's motion to strike a previously undisclosed prior art publication from defendant's invalidity contentions and rejected defendant's argument that the reference was necessary to address plaintiff's challenge to another reference. "[W]hile it is true that the printed publication argument was raised only in response to [defendant's] motion for summary judgment of anticipation, [defendant] should not have been caught entirely unawares by [plaintiff's] printed publication defense to [defendant's] reliance on the [originally disclosed] reference as anticipating prior art. Given the obscurity of the [original] reference, it is not surprising that [plaintiff] would raise an issue as to whether the [original] publication was sufficiently in the public domain to qualify as prior art. . . . Nothing prevented [defendant] from citing both [the original] and the [new] reference in its original invalidity contentions. . . . [I]t would be highly prejudicial to [plaintiff] for [defendant] to be allowed to use the [new] reference after having raised it for the first time only a few weeks before trial and after the close of discovery."