E.I. DuPont de Nemours and Company v. Unifrax I LLC

Filing 295

MEMORANDUM ORDER Granting #276 MOTION to Preclude Argument and Evidence Related to Prior Art Disclosed on April 11, 2017. Signed by Judge Richard G. Andrews on 5/5/2017. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELA WARE

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E.I. DUPONT DE NEMOURS AND
COMPANY,

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Plaintiff,
Civil Action No. 14-1250-RGA

V.

UNIFRAX I LLC,
Defendant.

MEMORANDUM ORDER

Plaintiff seeks to preclude Defendant from arguing that the patent-in-suit is anticipated or
rendered obvious by Defendant's FyreWrap Combi-Film 3G5 ("3G5") and/or Jehier's Terflame
30 ("Terflame 30") because Defendant failed to timely disclose these arguments. (D.I. 276). I
agree.
While Unifrax may argue that 3G7 anticipates the patent-in-suit, it does not follow that
Unifrax can argue that 3G5 alone anticipates or renders obvious the patent-in-suit even though
3G5 is a component of 3G7. Unifrax should have specifically disclosed in its invalidity
contentions its intention to argue that 3G5 alone anticipates or renders obvious the patent-in-suit.
See Carrier Corp. v. Goodman Global, Inc., 64 F. Supp. 3d 602, 620 (D. Del. 2014). It did not

do so. (D.I. 280-1at105-17). Dr. Haber's report fails to cure this deficiency because he does
not argue that 3G5 alone anticipates or renders obvious the patent-in-suit. (See D.I. 280-1 at 68). There is substantial prejudice to Plaintiff from Unifrax's late disclosure because DuPont's
expert has not assessed 3G5 as potentially invalidating art and DuPont is prevented fact
discovery or deposing Unifrax's expert on this issue. To be clear, I am not barring Unifrax from
showing that 3G5 is a layer of 3G7. I am barring Unifrax from putting on 3G5 evidence or

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argument for the purpose of demonstrating that the patent-in-suit is anticipated or rendered

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obvious by 3G5 itself.
It is not disputed that Unifrax may use Terflame 30 for the purpose of showing the state
of the art and that there was no unmet need around the time of the alleged invention. (D.1. 284 at

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2). The issue is whether Unifrax may argue or use Terflame 30 for the purpose of showing that it
anticipates or renders obvious the patent-in-suit. While Unifrax may argue that "Mormont prior

art" anticipates the patent-in-suit, it does not follow that Unifrax can argue that Terflame 30
anticipates or renders obvious the patent-in-suit just because Terflame 30 is an embodiment of
Mormont. Unifrax should have specifically disclosed in its invalidity contentions that Terflame
30 anticipates or renders obvious the patent-in-suit. Mr. Haber's report falls short of putting
Plaintiff on notice that Unifrax intends to make such an argument. Dr. Morgan's admission that
Terflame 30 is related to the Mormont prior art is not enough to cure this issue. There is also
substantial prejudice to Plaintiff from Unifrax's late disclosure because it prevents Plaintiffs
expert from assessing Terflame 30 as potentially invalidating art and from collecting fact
discovery or deposing Unifrax's expert on this issue. I thus bar Unifrax from putting on
Terflame 30 evidence or argument for the purpose of demonstrating that the patent-in-suit is
anticipated or rendered obvious by Terflame 30 specifically.
Plaintiffs Motion to Preclude Argument and Evidence Related to Prior Art Disclosed on
April 11, 2017 is GRANTED to the extent discussed above.

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It is SO ORDERED this

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day of May, 2017.

United States

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1strict Judge

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