Vectura Limited v. GlaxoSmithKline LLC et al

Filing 276

MEMORANDUM ORDER: The Motion to Strike Declaration of Professor Qu (Tony) Zhou, Ph.D. (D.I. 230 ) is DENIED. Signed by Judge Richard G. Andrews on 4/1/2019. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

VECTURA LIMITED,
Plaintiff,
Civil Action No. 16-638-RGA

V.

GLAXOSMITHKLINE, LLC and GLAXO
GROUP LIMITED,
Defendants.

MEMORANDUM ORDER
Currently pending before the Court is Defendants' Motion to Strike various portions of Dr.
Zhou's Declaration. (D.I. 230). I have reviewed the parties' briefing. (D.I. 231, 247, 251). The
parties supplemented their briefing to address a late-filed report by Dr. Zhou. (D.I. 271. 274).
I.

BACKGROUND

Plaintiff asserts claim 3 of U.S . Patent No. 8,303 ,991 ("the 991 patent") and claim 3 of
U.S . Patent No. 8,435,567 ("the '567 patent") (collectively, "the Asserted Claims"). (D.I. 1). The
patents-in-suit "relate to pharmaceutical compositions for inhalation and methods of making
them." (D.I. 82 at 1). The asserted claims are dependent claims which cover only composite active
particles made of an active ingredient and an additive material that includes magnesium stearate.
(D.I. 195 at 9). The claims require that the additive material promotes dispersion of the active
material for inhalation, and in the case of the ' 567 patent, delays dissolution of the active material.
(See D.I. 169 at 2).
On August 10, 2018, the parties made various motions for summary judgment. (D.I. 120,
122, 126). On October 1, 2018, I issued my claim construction opinion, and subsequently, the
1

claim construction order. (D.I. 167; D.I. 169). The parties had exchanged expert reports prior to
the opinion, and my constructions of the claim terms differed from that of either party. I then
permitted supplemental expert discovery between the parties and amended summary judgment
briefing. (D.I. 176). The parties have exchanged supplemental expert discovery and amended
their previous summary judgment briefing.
During the amended summary judgment briefing, Plaintiff attached a declaration from its
infringement expert, Dr. Zhou, to its opposition brief to Defendants' motion for summary judgment
of noninfringement.

(D.I. 211 ). Defendants have filed a motion to strike portions of that

declaration as untimely new opinion. (D.I. 230). On March 22, 2019, Plaintiff then filed a surreply report from Dr. Zhou. Defendants then filed a letter requesting that the new report be
addressed with Dr. Zhou's declaration. (D.I. 271).

II.

LEGALSTANDARD
Federal Rule of Civil Procedure 37(c)(l) provides that " [i]f a paity fails to provide

information . .. as required by Rule 26(a) or (e), the party is not allowed to use that information . . .
to supply evidence on a motion, at a hearing, or at trial, unless the failure was substantially justified
or is harmless." To determine whether a failure to disclose was harmless, courts in the Third
Circuit consider the Pennypack factors: (1) the prejudice or surprise to the party against whom the
evidence is offered; (2) the possibility of curing the prejudice; (3) the potential disruption of an
orderly and efficient trial ; (4) the presence of bad faith or willfulness in failing to disclose the
evidence; and (5) the impo1tance of the information withheld. Konstantopoulos v. Westvaco Corp.,
112 F.3d 710, 719 (3d Cir. 1997) (citing Meyers v. Pennypack Woods Home Ownership Ass 'n, 559
F.2d 894, 904-05 (3d Cir. 1977)). " [T]he exclusion of critical evidence is an ' extreme' sanction,
not normally to be imposed absent a showing of willful deception or ' flagrant disregard' of a court
2

order by the proponent of the evidence." Id. The determination of whether to exclude evidence is
within the discretion of the district court. Id.
III.

DISCUSSION

Defendants move to strike the last sentence of paragraph 14 and paragraphs 15 and 22-27
from Dr. Zhou' s Declaration. Defendants assert that Dr. Zhou' s declaration introduces new expert
opinions and contradicts his prior testimony. (D.I. 231 at 6). More specifically, Defendants assert
that the declaration offers new opinions that should have been disclosed in Dr. Zhou's
supplemental expert report as the new opinions are supported by evidence that was available to
Dr. Zhou at the time of his opening supplemental report. (Id.). Plaintiff asserts that Dr. Zhou' s
declaration does not offer new opinions. (D.I. 24 7 at 7). In the alternative, Plaintiff argues that to
the extent any new opinions were offered, the Pennypack factors weigh against exclusion of those
opinions. (Id. at 11 ).
First, I do not understand the last sentence of paragraph 14 of Dr. Zhou' s declaration to

offer an improper new opinion. Rather, in paragraph 14, Dr. Zhou reiterates his opinions from his
supplemental report "and elaborated on how he had reached that opinion by providing greater
detail. ... [S]uch an elaboration on his prior [report] is appropriate" and should not be stricken.
Dow Chem. Co. v. Nova Chems. Corp. (Canada), 2010 WL2044931 , at *2 (D. Del. May 20, 2010).
Second, as Defendants do not move to strike paragraphs 16-21 , which expand on paragraph

15, I determine that paragraph 15 is not prejudicial to Defendants even if it embodies new opinions.
Thus, the first three Pennypack factors weigh against exclusion. The fourth Pennypack factor also
weighs against exclusion as there has been no allegation that Plaintiff acted in bad faith. Finally,
I determine that the opinions in paragraph 15 are important rebuttal evidence, and thus, the fifth
Pennypack factor weighs against exclusion. Therefore, paragraph 15 will not be struck.
3

Third, paragraphs 22-27 provide new rebuttal opinions from Dr. Zhou that Defendants

argue he should have disclosed in his supplemental report because the information he relied upon
was available at that time. (D.I. 231 at 9). As these opinions go beyond mere elaboration, they
are untimely opinions under Rule 26.
The first Pennypack factor weighs in favor of exclusion. These new opinions were first
disclosed when they were filed concurrently with Plaintiffs opposition brief to Defendants' motion
for summary judgment. Moreover, to the extent the opinions contradict previous deposition
testimony of Dr. Zhou, the surprise to Defendants may be greater than the average untimely
disclosure of expert opinion.
However, the second Pennypack factor weighs against exclusion.

In considering

Defendants' motion for summary judgment of noninfringement, I did not rely on the opinions that
Defendants had moved to strike. 1 (Hr' g Trans. at 99:2-7.) Therefore, there was no prejudice to
Defendants in consideration of the summary judgment motions. There is enough time before trial
for Defendants to depose Dr. Zhou on these new opinions and for Dr. Colombo to supplement his
expert report. 2
The third Pennypack factor is neutral. Neither party has asserted that the trial would be
delayed or disrupted if Dr. Zhou' s declaration is allowed to stand or if it is excluded.
The fourth Pennypack factor weighs against exclusion. While Defendants argue that Dr.
Zhou's declaration violates the scheduling order (D.I. 231 at 5), they do not allege that Plaintiff

1

Defendants moved to strike portions of Dr. Zhou ' s declarati on a mere two days after briefing on the non-infringement
motion was complete. (D.I. 224, 230).
2
While Defendants argue that "the cure is worse than the prejudice" (D.I. 251 at I 0), I disagree . Dr. Zhou's declaration
was filed over two months before trial and this is not a situation where permitting a supplemental report will
"perpetuate a never-ending cycle of reports and counter-reports." Robocast, i nc. v. Apple, inc., 2013 WL 7118691 , at
*4 (D. Del. Dec. 3, 2013).

4

acted in bad faith. Additionally, I am not convinced that Dr. Zhou ' s declaration was "flagrant
disregard of a court order" where the scheduling order specificall y contemplated the attachment
of affidavits to summary judgment motions. (D.I. 27

,r 11).

See also B. Braun Melsungen AG v.

Terumo Med. Corp., 749 F. Supp. 2d 210, 221 (D. Del. 2010). Moreover, Plaintiff argues, "Dr.
Zhou could not have included the challenged opinions in his prior reports because his declaration
replies to Dr. Colombo' s supplemental rebuttal opinions, which Dr. Zhou did not have when he
wrote his supplement report." (D.I. 247 at 14). I agree. This also weighs against a determination
that Plaintiff operated in bad faith to blindside Defendants at summary judgment.
The fifth Pennypack factor also weighs against exclusion.

Dr. Zhou' s late-in-time

disclosures are important to Plaintiff's infringement contentions. Moreover, the opinions offered
are directly responsive to assertions of Defendants' expert, Dr. Colombo, in his rebuttal report.
Thus, on balance, the Pennypack factors weigh against exclusion of these paragraphs of
the declaration.
Finally, Dr. Zhou' s sur-reply report provides additional new rebuttal opinions to Plaintiff's

expert reports. Defendants argue that Plaintiff "has no excuse for [the two-month] delay in
disclosing the opinions of its expert." (D.I. 271 at 2). The report is clearly an untimely report
under Rule 26(a)(l) and violates the scheduling order in this case. (D.I. 27,r 10).
The first Pennypack factor weighs in favor of exclusion. The new report was disclosed
only five weeks before trial and there is no indication that Plaintiff informed Defendants that it
would seek to file a reply report to the opinions of Defendants' experts that it believed were
disclosed for the first time in reply during expert discovery.

5

The second Pennypack factor weighs against exclusion. As stated above, there is enough
time before trial for Defendants to depose Dr. Zhou on these new opinions and for Dr. Colombo to
supplement his expert report.
The third Pennypack factor is neutral. Neither party has asserted that the trial would be
delayed or disrupted if Dr. Zhou' s sur-reply report is allowed to stand or if it is excluded.
The fourth Pennypack factor is neutral. Defendants allege that Plaintiff has violated the
scheduling order and that it has done so in bad faith by failing to move for leave to file Dr. Zhou's
report either shortly after receiving the supplemental rebuttal reports or at the time it filed Dr.
Zhou's summary judgment declaration. (D.I. 271 at 2). However, Plaintiff has proffered what it
alleges is substantial justification for this delay-Plaintiff's expert needed the time "to analyze and
respond to the thirty-three new references that GSK introduced into the case" in its responsive
expert reports. (D.I. 274 at 3).
The fifth Pennypack factor also weighs against exclusion.

Dr. Zhou's late-in-time

disclosures are important to Plaintiff's infringement contentions. Moreover, the opinions offered
are directly responsive to assertions of Defendants' experts, Dr. Colombo and Dr. Russell, in their
supplemental rebuttal reports.
Thus, on balance, the Pennypack factors weigh against exclusion of the sur-reply report.

IV.

CONCLUSION
For the foregoing reasons, Defendants' Motion to Strike (D.I. 230) is DENIED as to both

the declaration and his report. Plaintiff shall make Dr. Zhou available promptly for a two hour
deposition on his opinions. Plaintiff's expert, Dr. Colombo, may submit a supplemental expert
report to reply to Dr. Zhou' s newly disclosed opinions.

6

IT IS SO ORDERED this

l

of April, 2019.

7