Case 1:19-cv-01642-GBW-CJB Document 603 Filed 10/12/22 Page 1 of 7 PageID #: 46451
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`IN THE UNITED STATES DISTRJCT COURT
`FOR THE DISTRJCT OF DELAWARE
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`SYSMEX Corp. and SYSMEX
`AMERICA, Inc.,
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`Plaintiffs,
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`V.
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`BECKMAN COULTER, Inc.,
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`Defendant.
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`Civil Action No. 19-1642-GBW
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`MEMORANDUM ORDER
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`Plaintiffs Sysmex Corp. and Sysmex America, Inc. ("Sysmex") move to strike Defendant
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`Beckman Coulter, Inc.'s ("Beckman") written description defenses (D.I. 576) for the terms
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`"plurality of detectors" and "the body fluid measuring mode includes a sequence of operations for
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`measuring cells in the body fluid sample" (the "BFMM term"). D.I. 577 at 1. Since Beckman
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`never asserted a lack of written description for these terms in either its expert report, D.I. 577-1 ,
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`Ex. 2, or its invalidity contentions, D.I. 586-1, Ex. A, Ex. B, & Ex. C, the Court finds Beckman' s
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`written description defenses untimely and will grant the Motion to Strike. The Court has reviewed
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`the parties' briefing, D.I. 577; D.I. 586; D.I. 587, and no hearing is necessary.
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`Claim 1 of United States Patent No. 10,401,350 (the "' 350 patent") and of United States
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`Patent No. 10,401 ,351 (the "'351 patent") recites:
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`A sample analyzer comprising:
`a plurality of detectors each configured to sense cells in a sample ... ;
`a controller programmed to selectively operate the sample analyzer in a blood
`measuring mode or a body fluid measuring mode, wherein ... the body fluid
`measuring mode includes a sequence of operations for measuring cells in the
`body fluid sample . ...
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`D.I. 1-1, Ex. A at claim 1 & Ex.Bat claim 1 (emphases added); see also D.I. 541, 15 (including
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`claim 1 of the '350 and '351 patents among the "Asserted Claims"). The '350 and '351 patents
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`share a common specification. 1 D .I. 1-1 , Ex. A at 2 & Ex. B at 2 ( explaining that both patents are
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`continuations of United States Patent No. 8,968,661); see also Wi-LAN USA, Inc. v. Ericsson, Inc. ,
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`675 F. App'x 984, 987 n.2 (Fed. Cir. 2017) (explaining that two patents "share a common
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`specification" because one patent is a continuation of the other patent). Beckman contends that
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`each patent's claim I-among other claims-are invalid for lack of written description. The Patent
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`Act requires that each patent's specification "contain a written description of the invention, and of
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`the manner and process of making and using it ... . " 35 U.S.C. § 112(a). "[A] patent' s
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`specification must reasonably convey to those skilled in the art that the inventor had possession of
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`the claimed subject matter as of the filing date." Novartis Pharms. Corp. v. Accord Healthcare,
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`Inc., 38 F.4th 1013, 1016 (Fed. Cir. 2022) (cleaned up).
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`Federal Rule of Civil Procedure 37(c)(l) provides that, "[i]f a party fails to provide
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`information ... as required by Rule 26(a) or (e), the party is not allowed to use that information
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`... to supply evidence ... at a trial, unless the failure was substantially justified or is harmless."
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`Beckman's invalidity contentions are disclosures subject to Rule 26(a). 2 This Court has applied
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`the so-called Pennypack factors to "determine whether a failure to make timely disclosure of
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`1 "Strictly speaking, the specification includes both the written description and the claims. In
`common parlance, however, ' specification' is used to refer only to the written description
`component of a patent." Tun-Jen Chiang & Lawrence B. Solum, The Interpretation-Construction
`Distinction in Patent Law, 123 Yale L.J. 530, 538, n.17 (2013). Here, the '350 and '531 patents
`share a common written description, but have different claims.
`2 See Intel!. Ventures I LLC v. AT&T Mobility LLC, 2017 WL 658469, at * 1 (D. Del. Feb. 14,
`2017) (applying Rule 26(a) to initial infringement contentions); D.I. 29 , 1 (incorporating "the
`Court's Default Standard for Discovery"); Default Standard for Discovery, Including Discovery
`of Electronically Stored Information, U.S. Dist. Ct. for Dist. of Del., at 4-5 (Accessed Oct. 11,
`2022), https://www.ded.uscourts.gov/sites/ded/files/pages/Electronic%20Discovery%20Default
`%20Standard_0.pdf (requiring initial invalidity and infringement contentions).
`2
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`information required to be disclosed by court order or rule should lead to sanctions or should be
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`regarded as harmless." Lipocine Inc. v. Clarus Therapeutics, Inc., 2020 WL 4794576, at *9 n.4
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`(D. Del. Aug. 18, 2020); see id ( declining to apply the Pennypack factors because the disclosure
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`of "final invalidity contentions was not untimely"). The Pennypack factors are as follows :
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`(1) the prejudice or surprise in fact of the party against whom the evidence would
`have been presented, (2) the ability of that party to cure the prejudice, (3) the extent
`to which the presentation of the evidence would disrupt the orderly and efficient
`trial of the case or other cases in the court, (4) bad faith or willfulness in failing to
`comply with the court's order, and (5) the importance of the excluded evidence.
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`LabMD Inc. v. Boback, 4 7 F .4th 164, 189 (3d Cir. 2022).
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`The Court's Amended Scheduling Order, entered on October 15, 2021, provides that, "by
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`no later than October 29, 2021, [Beckman] shall narrow its prior art invalidity positions to no more
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`than 20 total prior art references and no more than 70 prior art invalidity grounds." DJ. 373 ,r 23
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`(emphasis omitted). That date was later amended to June 17, 2022. DJ. 553 at 2. In a June 10,
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`2022 letter, Sysmex argued that " [Beckman] refused to agree that it will identify the invalidity
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`defenses it will assert at trial by June 1 7, 2022" and asked the court to "require [Beckman] ' s
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`narrowed defenses ... to include . . . the specific limitations that form the basis of any § 112
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`defenses." Id Beckman responded that it would narrow its invalidity defenses but that the Court
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`should reject Sysmex's request for "a brand new ... identification of 'specific limitations"'
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`because "Section 112 is not addressed in that way." Id Beckman contended that these "new
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`narrowing requirements . . . were not negotiated, agreed upon, or even required under the
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`applicable precedent." Id On June 14, 2022, the Court ordered Beckman "to identify the specific
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`claim limitations that form the basis for its Section 112 defenses." D .I. 561 at 1.
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`On June 17, 2022, Beckman disclosed that one of its defenses was
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`[i]nvalidity under § 112 for lack of written description for all asserted claims and
`claim 7 of the '3 51 patent, for the terms "multimode detectors," "plurality of
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`3
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`detectors," "electrical detector" and/or "the body fluid measuring mode includes
`a sequence of operations for measuring cells in the body fluid sample", to the
`extent Plaintiffs contend those terms cover an electrical detector that is used to
`count white blood cells in the body fluid mode ....
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`D.I. 577-1 , Ex. 1 at 1 (emphases altered). The parties' dispute centers on only two of these terms:
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`(1) the "plurality of detectors" term and (2) the BFMM term.
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`Sysmex argues that "[Beckman] disclosed for the first time on Friday, June 17, 2022 at
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`8:43 P.M. EST, that it was asserting written description defenses with respect to" the two terms at
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`issue. D.I. 577 at 1. Sysmex asserts that Beckman' s final expert report and Beckman' s final
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`invalidity contentions both disclosed written description defenses for certain claim terms but failed
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`to address either the "plurality of detectors" or the BFMM terms. Id. Thus, Sysmex argues, the
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`Court should strike these "new" invalidity defenses both for untimeliness and under the Third
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`Circuit's Pennypacktest. Id. at 1-2. Beckman does not deny that its prior invalidity contentions
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`or expert reports failed to discuss written description defenses for the two terms at issue. D.I. 586.
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`Beckman instead argues that "whether the scope of the claim is supported by the specification ...
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`is independent of any specific limitation" because, here, "it is the absence of a limitation that
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`establishes a lack of written description." Id. at 2 (emphasis in original). Beckman argues that the
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`claims asserted in this case "lack(cid:143) a limitation to optically counting white blood cells in body
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`fluids" and, instead, "broadly cover electrically sensing and differentiating white blood cells in
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`body fluids" when "the specification discloses only optically sensing such cells." Id. at 1-2
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`( emphases in original). Sysmex responds that Beckman never disclosed that its "written
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`description defense is independent of any specific [claim] limitation" and that, to this point,
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`"[Beckman]'s defenses have all been directed to specific claim limitations." D.I. 587 at 1-2
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`(internal quotation marks and citations omitted).
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`4
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`First, the Court first finds that Beckman untimely disclosed its invalidity contentions as to
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`the "plurality of detectors" term and as to the BFMM term. Beckman has argued, since at least
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`May 7, 2020, that the "common patent specification ... consistently discloses that an optical
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`detector ... is required to perform sensing of white blood cells in the body fluid .... " D.I. 586-
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`1, Ex. A at 9, Ex. Bat 13, & Ex.Cat 13. Indeed, the Federal Circuit has recognized the validity
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`of a similar argument. ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1378
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`(Fed. Cir. 2009) (upholding summary judgment for lack of written description because the patent's
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`specification "describe[ d] only medical valves with spikes," but certain claims also covered
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`"valves that operate ... without a spike").
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`However, Beckman's initial, D.I. 586-1 , Ex. A, final, D.I. 586-1 , Ex. B, and supplemental
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`final, D.I. 586-1, Ex. C, invalidity contentions related to lack of written description were directed
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`to particular claim terms, see, e.g., D.I. 586-1 , Ex. B at 12, 16 & Ex. Cat 12, 15. Beckman's
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`supplemental final invalidity contentions mention the BFMM term, see, e.g., D.I. 577-1, Ex. 3,
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`App'x B at 23, 29, 31, 34 (noting the BFMM term in a table of prior art disclosures), and the
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`"plurality of detectors" term, D.I. 577-1 , Ex. 3, App'x Bat 2, 15, 22, 24, 28-30, 33 & App'x Cat
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`2, 15, 29, 30, 39, 40 (same as BFMM term), as to other invalidity defenses, but not as to Beckman' s
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`written description defense, but see D.I. 577-1 , Ex. 3, App'x Bat 3, 23 & App'x Cat 3, 30 (reciting
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`a claim that includes the BFMM term in a discussion of§ 112 as to a different claim term).
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`Beckman, itself, highlights invalidity contentions that relate to specific claim terms other than the
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`"plurality of detectors" and the BFMM terms. See, e.g., D.I. 586-1 , Ex. A at 9, 11. Further, as the
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`passages Beckman highlights demonstrate, Beckman's expert discussed the lack of written
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`description as to specific claim terms, but not as to the "plurality of detectors" or the BFMM
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`Case 1:19-cv-01642-GBW-CJB Document 603 Filed 10/12/22 Page 6 of 7 PageID #: 46456
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`terms. D.I. 586-1 , Ex. D at 30--50; see also D.I. 577-1 , Ex. 2 (discussing, in Beclanan' s expert
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`report, seven other claim terms under the heading "Lack of Written Description").
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`In short, Beckman has consistently represented to Sysmex that its written description
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`arguments related to specific claim limitations, but not to the two terms at issue here. Therefore,
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`Beckman's attempt to assert its defense as to new claim limitations at this late hour is untimely.
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`Second, the Court concludes that Beckman cannot introduce its untimely disclosed
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`invalidity contentions under the Pennypack factors. Beckman does not attempt to defend its late
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`assertion of new defenses under the Pennypack factors, D.I. 586 at 4 ("Pennypack is inapposite"),
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`so the Court considers any defense Beckman could have asserted for its late filing waived. Had
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`Beckman asserted such a defense, the Court would have had little trouble finding in Sysmex's
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`favor. The introduction of new invalidity defenses after deposition of expert witnesses had ended
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`prejudices Sysmex. See D.I. 373 at 1- 2 (noting completion of "Expert Depositions" on August 6,
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`2021 and of depositions as to supplemental reports "by no later than November 23, 2021 "
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`( emphasis omitted)). While Beckman asserts that its written description theory applies ''with equal
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`force" across all claim terms, see D.I. 586 at 4, Beckman specified its written description defense
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`by claim term in its prior invalidity contentions and failed to mention either of the two claim terms
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`at issue in those contentions, see D.I. 586-1 , Ex. A at 6-12, Ex.Bat 9- 18 & Ex.Cat 12-16. Only
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`exclusion ofBeckman' s newly asserted defenses can cure the prejudice Sysmex would suffer. As
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`well, Beckman' s application of the same defense to at least one other term in claim 1 of the ' 350
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`and ' 351 patents, compare D.I. 586-1 , Ex. A at 9- 10 (discussing "multi-mode detector" term),
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`with D.l. 1-1 , Ex. A at claim 1 & Ex. B at claim 1 (requiring a "multi-mode detector"), suggests
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`that Beckman' s newly asserted defenses are not important. Thus, even if Beckman acted in good
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`faith, the Pennypack factors would favor exclusion here.
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`6
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`Case 1:19-cv-01642-GBW-CJB Document 603 Filed 10/12/22 Page 7 of 7 PageID #: 46457
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`Thus, the Court will grant Sysmex' s Motion to Strike Beckman' s untimely written
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`description defenses as to the "plurality of detectors" and BFMM claim terms. D.I. 576.
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`WHEREFORE, at Wilmington this 12th day of October, 2022, IT IS HEREBY
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`ORDERED that Sysmex' s Motion to Strike (D.I. 576) is GRANTED, and Beckman' s untimely
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`written description defenses are STRIKEN.
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`GREGORY B. WILLIAMS
`UNITED STATES DISTRICT JUDGE
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`7
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