The Federal Circuit Finds that Section 282 Is Not a Safety Net to Protect Against Failure to Disclosure Relevant Information During Discovery
In a case addressing the issue of untimely disclosure of evidence to show the state of the art at the time of invention, the United States Court of Appeals for the Federal Circuit affirmed a district court’s evidentiary ruling excluding the prior art, finding that 35 U.S.C. § 282 could not be used to argue timelines of discovery. Woodrow Woods et al. v. Deangelo Marine Exhaust, Inc., Case No. 10-1478 (Fed. Cir., Aug. 28, 2012) (Linn, J.).
In a case involving marine exhaust systems, the plaintiff Woodrow Woods licensed co-plaintiff Marine Exhaust Systems, Inc. (MES) under the asserted patents. During discovery, MES propounded an interrogatory that sought all prior art, including identification of the claims that were anticipated or rendered obvious. On the day before the close of fact discovery, defendant Deangelo located several engineering drawings that predated the priority date of the asserted patents. Deangelo sent the drawings to MES in an email stating that they may anticipate the asserted patents, but failed to supplement its interrogatory response with the new materials. MES did not object at that time, but later moved to strike the art at the start of trial under Rule 26(e) as untimely. The district court found the untimely disclosure unjustified and harmful to plaintiffs and excluded the drawings. Deangelo appealed this ruling, in addition to rulings relating to claim construction, invalidity, non-infringement and Rule 11.
While it was undisputed that the drawings were disclosed more than 30 days prior to trial under 35 U.S.C. § 282, the Federal Circuit found that section 282 applied only to defenses at trial and did not relate to untimely disclosures made during discovery under Rule 26(e). The Federal Circuit held that contention interrogatories, such as the one at-issue here seeking identification of prior art, are key aspects of patent litigation, and the supplementation requirements serve an important purpose to help parties discover facts and shape theories at trial. As a result of defendant’s untimely disclosures, MES was unable to follow-up in discovery regarding these drawings. The Federal Circuit found that the trial court exercised its discretion properly to exclude the evidence, and the Federal Circuit found no error.
The Federal Circuit also affirmed the district court’s claim construction, finding that the constructions were consistent with plain meaning, while the rejected constructions required adoption of limitations not defined or required by the specification. The Federal Circuit also affirmed the district court’s denial of Deangelo’s requests for judgment as a matter of law (JMOL) on the grounds of invalidity and non-infringement. Finally, the Federal Circuit affirmed the denial of Deangelo’s Rule 11 motion, finding that the pre-suit investigation was adequate because plaintiff took pictures of the infringing systems and studied those pictures before filing suit.
Practice Note: Section 282 cannot be used as a “backdoor” to allow the use at trial of materials that were untimely disclosed during fact discovery.