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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF INDIANA
`INDIANAPOLIS DIVISION
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`ELI LILLY AND COMPANY,
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` Plaintiff/Counterclaim Defendant,
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` vs.
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`DR. REDDY’S LABORATORIES, LTD.,
`et al.,
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` Defendants/Counterclaimants.
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` No. 1:16-cv-0308-TWP-DKL
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`Entry and Order on Motion to Strike Portions of Plaintiff’s Expert Reports [doc. 74]
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`Defendants have moved for an order striking portions of two of Plaintiff’s expert
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`reports—the Expert Report of Bruce A. Chabner, M.D., and the Expert Report of Rodolfo
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`Pinal, Ph.D.—and prohibiting Plaintiff from introducing evidence regarding the stricken
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`portions of the reports. Defendants contend that certain infringement theories were first
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`disclosed in the expert reports in violation of the Patent Case Management Plan
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`(“PCMP”) as well as the Federal Rules of Civil Procedure and Local Rules. The portions
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`of the reports at issue concern all opinions and bases therefor directed to literal
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`infringement, all opinions and bases therefor concerning infringement under the doctrine
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`of equivalents that are beyond the scope of those set forth in Plaintiff’s Preliminary
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`Infringement Contentions (“Infringement Contentions”), and all opinions and bases therefor
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`concerning inducement of infringement and contributory infringement that are beyond
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`the scope of those set forth in the Infringement Contentions.
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 2 of 21 PageID #: 1129
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`Plaintiff opposes the motion, arguing that it did not violate the PCMP or any rule.
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`Plaintiff asserts that its Infringement Contentions gave notice that it was asserting all of the
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`theories of infringement identified in the expert reports. Plaintiff argues that the
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`contentions served on September 6, 2016 were preliminary, that it was entitled to develop
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`its infringement case through discovery, and that it properly did so. Plaintiff also argues
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`that there is no basis to strike any portion of its expert reports; that Defendants have not
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`been prejudiced; and even if Defendants were prejudiced, the prejudice can easily be
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`cured. For the reasons that follow, the undersigned finds that the motion to strike should
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`be granted.
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`Background
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`Eli Lilly and Company (“Lilly”) commenced this patent-infringement action on
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`February 5, 2016, against Dr. Reddy’s Laboratories, Ltd. and Dr. Reddy’s Laboratories,
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`Inc. (collectively “DRL”). DRL had filed a New Drug Application (NDA) with the U.S.
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`Food and Drug Administration, seeking approval to manufacture and sell its Pemetrexed
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`for Injection 100 mg/vial and 500 mg/vial products prior to the expiration of U.S. Patent
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`No. 7,772,209 (“the ‘209 patent”). Lilly believes that DRL’s NDA Products will be
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`marketed as competing products to ALIMTA®, a chemotherapy agent developed and
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`distributed by Lilly and used for treatment of cancer. Lilly alleges that DRL’s filing of
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`NDA No. 208297 and the use of the product described therein infringe its ‘209 patent”.
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`DRL alleges that the patent is invalid. Lilly received DRL’s Notice Letter relating to NDA
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`No. 208297 on December 29, 2015. A thirty-month stay of approval of NDA No. 208297
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`is in effect until June 29, 2018.
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`2
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 3 of 21 PageID #: 1130
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`On June 20, 2016, the undersigned held the Initial Pretrial Conference in the case,
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`discussing discovery, case management, and other matters. The parties expressed a
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`desire to have this matter resolved before the approval of DRL’s NDA 208297 and the
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`parties’ proposed case management deadlines were designed with the thirty-month stay
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`of approval in mind. Yet, the parties disputed the appropriate deadline for infringement
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`contentions. Lilly proposed an October 5, 2016 deadline, whereas DRL proposed a July
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`15, 2016 deadline. Lilly acknowledged the parties’ interests in early disclosure of
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`contentions; DRL asserted it was important to discover Lilly’s infringement theories as
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`early as practicable. DRL argued for resolution of this case before the expiration of the
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`stay in order to avoid a potential “launch at risk” scenario. They also argued that the
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`specific nature of Lilly’s infringement theories (which were unknown at that time),
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`including whether Lilly was alleging literal infringement or infringement under the
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`doctrine of equivalents, would impact discovery. More specifically, DRL asserted that
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`the infringement theories would affect the categories of documents requested and the
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`number and type of experts they would need to obtain. After much discussion, the
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`undersigned proposed a September 6, 2016 infringement-contentions deadline.
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`On July 8, 2016, the undersigned approved as amended the parties PCMP, setting
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`September 6, 2016 as the deadline for Lilly’s infringement contentions and DRL’s
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`invalidity contentions. [See Patent Case Management Plan, Section IV.B, doc. 45 at 5.] The
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`PCMP set May 15, 2017 as the deadline for all liability discovery and stated: “The parties
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`should focus their early discovery in a manner that prepares them to respond timely to
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`discovery requests concerning their preliminary infringement and invalidity contentions.”
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`3
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 4 of 21 PageID #: 1131
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`[Id. at 4-5 (emphasis added).] The PCMP set June 16, 2017 as the dispositive motion
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`deadline and stated that “the party with the burden of proof must file a statement of the
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`claims or defenses it intends to prove at trial” within 14 days after the liability discovery
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`deadline. [Id. at 7, 8.] Further, the PCMP said that “[u]pon approval, this Plan constitutes
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`an Order of the Court. Failure to comply with an Order of the Court may result in
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`sanctions … as provided under Rule 16(f) ….” [Id. at 13.] The parties having moved for
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`and having been granted enlargements of time, the liability discovery deadline is now
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`June 20, 2017, the dispositive motion deadline is July 14, 2017, and the case is set for trial
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`on January 29, 2018.
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`On September 6, 2016, Lilly filed its Infringement Contentions. [Doc. 48.] Lilly
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`contended that DRL infringes each of claims 1-22 of the ‘209 patent, asserting that “[t]he
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`use of DRL’s NDA Products meets all limitations of each of the asserted claims, either
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`literally or under the doctrine of equivalents.” [Infringement Contentions, doc. 48 at 1.]
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`Lilly asserted that DRL is liable as a direct infringer as well as “for active inducement of
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`infringement and/or for contributory infringement.” [Id. at 1-2.] A few weeks later, on
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`September 23, 2016, DRL advised Lilly that its contentions were deficient, focusing on the
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`doctrine of equivalents. [Mot. Strike Portions of Pl.’s Expert Reports, Ex. A, doc. 74-1.] DRL
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`did not mention any other theory of alleged infringement.
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`In a letter dated November 29, 2016, Lilly responded to DRL’s claim that its
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`infringement contentions were deficient. The response repeatedly referenced the
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`doctrine of “equivalents” or “equivalence” and used terms such as “equivalent
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`infringement” and “equivalency analysis.” The letter stated:
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`4
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 5 of 21 PageID #: 1132
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`As the claim chart reflects, setting aside the question of the salt form of the
`pemetrexed, each step of the claimed methods is carried out literally; the only
`remaining question is whether the administration of DRL’s NDA product is
`equivalent, in the context of the claimed methods, to administering pemetrexed
`disodium, which is what the claims recite.
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`[Mot. Strike, Ex. B, doc. 74-2 at 1.] The letter did not address infringement under any
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`theory other than the doctrine of equivalents. Lilly wrote that there was no “need for
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`Lilly to supplement its initial infringement contentions” but “it will disclose further
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`evidence on which it intends to rely consistent with the Case Management Plan,
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`including in conjunction with expert discovery.” [Id. at 3.]
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`On March 21, 2017, Lilly provided DRL with the Expert Report of Bruce A.
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`Chabner, M.D., and the Expert Report of Rodolfo Pinal, Ph.D. The reports go beyond the
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`claims of infringement under the doctrine of equivalents, asserting literal infringement,
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`inducement of infringement, and contributory infringement as well as new opinions of
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`infringement under the doctrine of equivalents that were not disclosed in the Infringement
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`Contentions. The Chabner Report contains: (1) a literal infringement analysis and opinion
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`at Exhibit C (a Claim Chart) to the report and in paragraphs 38-59 of the report at pages
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`15-28 and literal infringement-related statements in the report (see, e.g., paragraphs 60,
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`63, and 80); (2) an “Inducement of and Contribution to Infringement” section, comprised
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`of paragraphs 81 and 82 at pages 39-40 of the report, as well as a portion of paragraph 60;
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`(3) a different Claims Chart attached as Exhibit C to the report in support of Lilly’s new
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`theories; and (4) in paragraphs 60-61, 64-73, 77-80, new theories under the doctrine of
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`equivalents that are outside the scope of Lilly’s Infringement Contentions. The Pinal Report
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`contains: (1) a section entitled, “DRL’s NDA Products Administered with Saline Literally
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`5
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 6 of 21 PageID #: 1133
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`Meets the Pemetrexed Disodium Limitation in the Claims of the ‘209 Patent,” comprised
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`of paragraphs 72 and 73 at page 30 of the report; and (2) a partial doctrine of equivalents
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`analysis under the function-way-result test in paragraphs 15 and 16 at pages 4-5.
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`DRL’s counsel contacted Lilly’s counsel and asserted that Lilly’s expert reports
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`violated the PCMP by raising new infringement contentions not disclosed in the
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`Infringement Contentions. The parties attempted to resolve their dispute in a telephone
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`conference, but were unable to do so.
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`On January 9, 2017, the parties filed a joint motion for extension of time for
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`discovery and related deadlines, including the deadline for expert reports. The motion
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`was granted, and the deadline for opening expert reports was extended to March 7, 2017.
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`The parties moved for another extension of the discovery and related deadlines, and their
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`motion was granted, extending the deadline for opening expert reports to March 21, 2017.
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`Lilly never sought a modification of the infringement contentions deadline. Nor
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`has it sought leave to amend its Infringement Contentions.
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`On March 31, 2017, DRL filed its Motion to Strike. The undersigned attempted to
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`resolve the parties’ dispute informally during a telephonic conference but was unable to
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`do so. Lilly has filed a response to the motion, and DRL has filed its reply. The motion
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`has been referred to the undersigned for ruling.
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`Discussion
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`A court scheduling order “controls the course of the action unless the court
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`modifies it.” Fed. R. Civ. P. 16(d). Federal Rules of Civil Procedure 16(b) and 6(b) govern
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`motions to modify scheduling orders filed after the deadline sought to be modified has
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`6
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 7 of 21 PageID #: 1134
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`expired. “A schedule may be modified only for good cause and with the judge’s
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`consent.” Fed. R. Civ. P. 16(b)(4); see Trustmark Ins. Co. v. Gen. & Cologne Life Re of Am.,
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`424 F.3d 542, 553 (7th Cir. 2005) (“To amend a pleading after the expiration of the trial
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`court’s Scheduling Order deadline …, the moving party must show ‘good cause.’”). The
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`“good cause” standard focuses on the party’s diligence. Trustmark Ins. Co., 424 F.3d at
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`553. Further, “[w]hen an act may or must be done within a specified time, the court may,
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`for good cause, extend the time … on motion made after the time has expired if the party
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`failed to act because of excusable neglect.” Fed. R. Civ. P. 6(b)(1)(B). Under Rule 16 “the
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`court may issue any just orders, including those authorized by Rule 37(b)(2)(A)(ii)-(vii)”
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`for the failure “to obey a scheduling or other pretrial order.” Fed. R. Civ. P. 16(f)(1)(C).
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`Such orders include striking expert witness testimony and portions of an expert report
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`that violate the court’s scheduling order. Fed. R. Civ. P. 37(b)(2)(A)(ii).
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`“[I]nfringement contentions are intended to frame the scope of the case so that the
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`parties can conduct appropriate discovery.” Robert Bosch LLC v. Snap-On Inc., No. 12-
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`11503, 2013 WL 673718, at *3 (E.D. Mich. Feb. 25, 2013) (quoting Realtime Data, LLC v.
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`Packeteer, Inc., No. 6:08cv144, 2009 WL 2590101, at *5 (E.D. Tex. Aug. 18, 2009)).
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`Infringement contentions should “‘provide fair notice of the scope of the plaintiff’s
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`infringement theory.’” Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-cv-4811, 2014 WL
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`4477932, at *2 (N.D. Ill. Sept. 10, 2014) (quoting Fujitsu Ltd. v. Tellabs Operations, Inc., No.
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`08 C 3379 & 09 C 4530, 2012 U.S. Dist. LEXIS 101766, *25 (N.D. Ill. July 23, 2012)). Thus,
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`“‘infringement contentions must set forth particular theories of infringement with
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`sufficient specificity to provide defendants with notice of infringement’” and expert
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`7
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 8 of 21 PageID #: 1135
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`“‘reports may not introduce theories not previously set forth in infringement
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`contentions.’” Id. Mere reference to a theory in infringement contentions may not act as
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`a placeholder for later clarification of the theory. Trading Techs. Int’l, 2014 WL 4477932,
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`at *3-4; ASUS Computer Int’l v. Round Rock Research, LLC, Case No. 12-cv-02099 JST (NC),
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`2014 WL 1463609, at *3 (N.D. Cal. Apr. 11, 2014) (placeholder language stating that “to
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`the extent that any claim element is found not to be literally embodied in the Accused
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`Instrumentalities, [defendant] contends that the Accused Instrumentalities embody such
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`claim elements under the doctrine of equivalents” was insufficient to assert infringement
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`under the doctrine of equivalents and defendant’s experts could not assert that theory).
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`Courts have stricken theories of infringement presented in expert reports that were
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`not previously disclosed in infringement contentions. See, e.g., Howmedica Osteonics Corp.
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`v. Zimmer, 822 F.3d 1312, 1324-25 (Fed. Cir. 2016) (concluding district court did not abuse
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`its discretion in applying local patent rules to preclude theory that was not disclosed in
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`infringement contentions); Baltimore Aircoil Co. v. SPX Cooling Techs. Inc., Civ. No. CCB-
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`13-2053, 2016 WL 4426681, at *15 (D. Md. Aug. 22, 2016) (granting motion to strike
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`portions of expert report regarding infringement under doctrine of equivalents that was
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`not disclosed in infringement contentions); Trading Techs. Int’l, 2014 WL 4477932, at *3-4,
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`*5 (striking doctrine of equivalents argument in expert report and precluding reliance on
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`theories and evidence related to stricken portions where infringement contentions
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`addressed only literal infringement). “The threshold question in deciding whether to
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`strike an expert report is whether the expert has permissibly specified the application of
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`8
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 9 of 21 PageID #: 1136
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`a disclosed theory or impermissibly substituted a new theory altogether.” Finjan, Inc. v.
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`Proofpoint, Inc., No. 13-cv-05808-HSG, 2016 WL 612907, at *1 (N.D. Cal. Feb. 16, 2016).
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`Lilly contends that the authorities cited by DRL where courts struck portions of
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`expert reports that relied on theories not disclosed in the infringement contentions are
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`inapposite because the infringement contentions at issue were “final” or “supplemental”
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`and were served after the close of discovery. While discovery was closed when the new
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`theories were presented in the expert reports, which is an important consideration, it is
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`not the only relevant consideration. The crux of the matter was the prejudice to the
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`opposing party. Here, although discovery is not yet closed, as discussed later in this
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`Entry, the prejudice to DRL in allowing Lilly to proceed on its new infringement theories
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`is substantial.
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`Lilly also argues that DRL’s authorities are inapplicable because those cases
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`involved violations of local patent rules or court orders regarding the timing of
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`infringement contentions and supplementation thereof. This distinction is of no practical
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`or legal importance. Here, the Court entered an order approving the PCMP as amended,
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`setting the deadline for disclosure of infringement contentions. As a court scheduling
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`order, the order controls the course of this case. Lilly offers no persuasive reason why a
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`violation of the Court’s scheduling order should be treated less seriously than a violation
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`of a local patent rule. See O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355,
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`1363 (Fed. Cir. 2006) (stating that local patent rules “are essentially a series of case
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`management orders”). Though the PCMP does not describe the infringement contentions
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`due on September 6, 2016, as “final”; no language in the PCMP provides that the
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`9
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 10 of 21 PageID #: 1137
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`contentions are “preliminary” either. The text of the PCMP is clear: Lilly’s infringement
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`contentions were due September 6, 2016. The PCMP did not contemplate separate
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`“preliminary” and “final” contentions, but rather, “infringement contentions.”
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`Review of the Infringement Contentions confirms DRL’s assertion that the
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`contentions address only the doctrine of equivalents. [See, e.g., Infringement Contentions,
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`doc. 48 at 2 (“There is an insubstantial difference between administering pemetrexed
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`ditromethamine and administering pemetrexed disodium in accordance with claim 1.”)]
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`In addition, counsel’s November 29, 2016 letter indicated that Lilly’s contentions disclose
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`infringement under the doctrine of equivalents; it does not even hint at any other theory
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`of infringement. Thus, the letter reinforced the DRL’s view that Lilly was asserting
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`infringement under the doctrine of equivalents only, and not under any other theory.
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`Lilly offers that its letter was responding to DRL’s own letter that only raised the
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`deficiency of Lilly’s infringement contentions under the doctrine of equivalents. But
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`contrary to Lilly’s suggestion, its Infringement Contentions did not plainly and sufficiently
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`present the theories of literal infringement, inducement or contribution. While the
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`Infringement Contentions state that “[t]he use of DRL’s NDA Products meet all limitations
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`of each of the asserted claims, either literally or under the doctrine of equivalents” [doc.
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`48 at 1], this conclusory assertion in an introductory paragraph of the contentions is
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`insufficient to assert a theory of
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`literal
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`infringement, particularly where the
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`accompanying claim chart fails to raise literal infringement. See, e.g., Baltimore Aircoil Co.,
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`2016 WL 4426681, at *15 (“Allowing [plaintiff] to offer specific opinions under the
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`doctrine of equivalents theory after it disclosed only its general belief that all claims were
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`10
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 11 of 21 PageID #: 1138
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`infringed under the doctrine … would unfairly disadvantage [defendant] by subjecting
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`it to a ‘shifting sands approach’ to litigation.”). The same is true with regard to mere
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`references in the introductory paragraph to theories of literal infringement, active
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`inducement of infringement, and contributory infringement; these theories are asserted
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`with insufficient particularity to give DRL fair notice of the scope of Lilly’s infringement
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`theory.
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`Lilly’s Infringement Contentions purport to “reserve[] the right to modify, amend,
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`or otherwise supplement these contentions as additional information becomes available
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`during the court of fact and expert discovery.” [Doc. 48 at 1.] But Lilly has no right to
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`modify or amend its contentions after the deadline for filing infringement-contentions
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`has expired. See, e.g., Baltimore Aircoil Co., 2016 WL 4426681, at *16 (rejecting the argument
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`that plaintiff reserved the right to amend its infringement contentions where local rules
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`required consent or good cause and leave of court for amendments); Howmedica Osteonics
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`Corp. v. Depuy Orthopaedics, Inc., Civil Action No. 11-6498 (SDW), 2014 WL 6675923, at *2,
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`*4-5 (D.N.J. Nov. 24, 2014) (concluding that general reservation in infringement
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`contentions of right to pursue theory under doctrine of equivalents was insufficient under
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`local rules), aff’d sub nom., Howmedica Osteonics Corp. v. Zimmer, 822 F.3d 1312 (Fed. Cir.
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`2016). Because the infringement-contentions deadline was entered as part of the Court’s
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`Rule 16(b) scheduling order, Lilly could modify or amend its contentions only upon first
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`showing “good cause” and with the Court’s consent. See Fed. R. Civ. P. 16(b)(4); S.D. Ind.
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`L.R. 16–1(e). And since Lilly’s expert reports effectively amend its infringement
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`contentions after the time for filing contentions has expired, Federal Rule of Civil
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`11
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 12 of 21 PageID #: 1139
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`Procedure 6(b) further requires a motion and “excusable neglect.” Lilly has not shown
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`good cause or excusable neglect. And Lilly has never requested the Court’s permission
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`to amend or modify its infringement contentions.
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`As for Lilly’s right to supplement its contentions, Federal Rule of Civil Procedure
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`26(e) imposes a duty to supplement Rule 16 disclosures in a timely manner. Fed. R. Civ.
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`P. 26(e)(1); see Teashot LLC v. Green Mountain Coffee Roasters, Inc., Civil Action No. 12-cv-
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`0198-WJM-KMT, 2014 WL 485876, at *6-7 (D. Colo. Feb. 6, 2014) (explaining that a party’s
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`infringement contentions subject to the scheduling order “operated as the legal and
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`functional equivalent of responses to interrogatories, and were therefore subject to Rule
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`26(e)’s requirements”). Yet, Lilly’s expert reports go way beyond supplementation of the
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`Infringement Contentions; they seek to assert entirely new theories of infringement. And
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`to the extent the expert reports supplement the contentions as to the doctrine of
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`equivalents, Lilly has not properly supplemented its Infringement Contentions. Instead, it
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`attempts to do so through a side door, which is improper.
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`Lilly argues its Infringement Contentions were only “preliminary.” After all, it says,
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`the PCMP identified its contentions as “preliminary” and the contentions themselves are
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`titled, “Preliminary Infringement Contentions.” While the PCMP mentioned “preliminary
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`infringement and invalidity contentions” in the first section concerning discovery and
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`related deadlines, the use of the word “preliminary” appears to be a carryover from
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`another, possibly earlier, version of the Court’s standard PCMP. The use of the term
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`“preliminary” in the section preceding the section addressing the dispute over the
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`deadline for infringement contentions does not convey the intent that the contentions be
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`12
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 13 of 21 PageID #: 1140
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`only preliminary. Furthermore, the Court inserted language regarding the deadline for
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`infringement contentions that does not refer to the contentions as “preliminary.” This
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`language provides even greater clarity. Moreover, DRL has pointed to other patent case
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`management plans that did set deadlines for both preliminary contentions and final
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`contentions. [See, e.g., Reply Brief, Ex. H at 4-5, 9, doc. 92-4 at 4-5, 9.] Some of these patent
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`case management plans were entered in cases in which Lilly is a party. The other case
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`management plans show that the parties and the Court allow for preliminary contentions
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`when they intend for the contentions to be preliminary. But the PCMP in this case does
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`not make a distinction between preliminary and final contentions. The September 6, 2016
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`deadline for infringement contentions was the only infringement-contentions deadline
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`contemplated by the Court’s order.
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`That Lilly chose to identify its infringement contentions as “Preliminary” is not
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`controlling where the order does not identify the contentions as “preliminary.” The fact
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`that DRL referred to the contentions as “Preliminary Infringement Contentions” is not
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`controlling: DRL was simply using Lilly’s own terminology. Lilly argues that DRL took
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`a position in its March 10 letter to counsel that is inconsistent with its position here: DRL
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`thought Lilly should supplement
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`its contentions. Yet, an earlier request for
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`supplementation does not preclude DRL from arguing that the expert reports improperly
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`and belatedly introduce new infringement theories. And the fact that DRL could have
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`filed a motion seeking to compel Lilly to supplement its contentions, but did not do so,
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`does not relieve Lilly of any consequences coming from its late disclosures after the
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`deadline for infringement contentions has passed. See Teashot LLC, 2014 WL 485876, at *7
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`13
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`Case 1:16-cv-00308-TWP-DKL Document 96 Filed 04/28/17 Page 14 of 21 PageID #: 1141
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`(noting that defendants were not required to complain about Plaintiff’s contentions or
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`serve discovery related to plaintiff’s infringement theories).
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`Lilly attempts to fault DRL for not surmising that Lilly would assert theories of
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`infringement other than that specifically raised in its Infringement Contentions. DRL had
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`a right to believe that the Infringement Contentions asserted all of Lilly’s theories it was
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`pursuing in this case. See Teashot LLC, 2014 WL 485876, at *7 (“A party has the right to
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`assume that opposing counsel is acting with diligence, and in compliance with the
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`Federal Rules of Civil Procedure, during discovery. Because Plaintiff was already ordered
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`… to provide its infringement contentions, and required by Rule 26€ to timely
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`supplement the same, Defendants were justified in believing that Plaintiff’s disclosures
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`contained all of the infringement theories it was pursuing in the case.”). Besides, if DRL
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`who was not a party to Teva Parenteral Medicines litigation should have divined that Lilly
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`would assert the same theories it raised in that litigation, then Lilly who was the plaintiff
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`in that litigation should have known it would raise all those same theories in this case.
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`Also, DRL’s awareness of that prior litigation may explain why DRL could have thought
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`(as Lilly argues) that DRL would receive “final” contentions early in the discovery phase.
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`Further, Teva Parenteral Medicines involved the defendants’ generic version of Lilly’s
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`ALIMTA®, whereas this case does not involve a generic—DRL’s product is pemetrexed
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`ditromethamine, not pemetrexed disodium. Thus, in contrast with the Teva Parenteral
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`Medicines, this case has been about infringement under the doctrine of equivalents.
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`Lilly asserts that it served its Infringement Contentions near the beginning of
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`discovery and long before it had received the information necessary to develop that
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`information with its experts and build its infringement case. (More on that later.) Yet
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`Lilly still has not sought leave to amend its Infringement Contentions at any time. Its failure
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`to have done so by even this late point in time suggests a lack of diligence on Lilly’s part.
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`As for Lilly’s argument that it has not sought to alter a scheduling order and it has
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`complied with the scheduling order, this argument elevates form over substance. With
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`its expert reports, Lilly attempts to introduce new theories of infringement into the case,
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`and does so without seeking leave to amend its infringement contentions. Because the
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`deadline for infringement contentions has long passed, good cause and excusable neglect,
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`in addition to the court’s consent, are required for Lilly to assert new theories that go
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`beyond those timely identified in the Infringement Contentions.
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`Lilly contends that absent prior notice to a party that infringement contentions
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`cannot be amended, a court errs in precluding a party from amending its contentions.
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`But MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006), cited as support, is inapposite.
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`This case is unlike MIT where, after the plaintiff had filed its preliminary infringement
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`contentions, the court ordered that the preliminary contentions were deemed final. Id. at
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`1358. The court concluded that the plaintiff was not given sufficient notice that its
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`preliminary contentions would be deemed final or that it could only update them for
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`good cause. Id. at 1359. Unlike MIT, Lilly’s contentions were not “preliminary” and
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`preliminary contentions were not deemed “final” after the fact. The PCMP and Federal
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`and Local rules provided Lilly with sufficient notice that modifying or amending their
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`infringement contentions would require a showing of “good cause.”
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`The Chabner and Pinal reports seek to introduce new theories of infringement not
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`properly disclosed in the Infringement Contentions. Lilly’s belated disclosure of these new
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`theories violated the PCMP. Thus, the Court must decide the appropriate sanction for
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`the failure to disclose these new theories of infringement.
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` In deciding whether to impose sanctions for a discovery violation, a district court
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`should consider: “(1) the prejudice or surprise to the party against whom the evidence is
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`being offered; (2) the ability of the party to cure the prejudice; (3) the likelihood of
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`disruption to the trial; and (4) the bad faith or willfulness involved in not disclosing the
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`evidence at an earlier date.” Judson Atkinson Candies, Inc. v. Latini-Hohberger Dhimantec,
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`529 F.3d 371, 386 (7th Cir. 2008) (quoting David v. Caterpillar, Inc., 324 F.3d 851, 857 (7th
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`Cir. 2003)). Although Judson Atkinson Candies addressed the imposition of sanctions for
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`a Rule 45 violation, the factors identified apply equally to the consideration of whether
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`sanctions are appropriate for other discovery rule violations. See Eli Lilly and Co. v. Teva
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`Parenteral Medicines, Inc., No. 1:10-cv-01376-TWP-DKL, 2015 WL 735724, at *3 (S.D. Ind.
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`Feb. 20, 2015) (applying factors to exclude expert testimony and evidence relating to the
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`infringement under the doctrine of equivalents on the ground that report failed to comply
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`with Rule 26(a)).
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`DRL contends that they are prejudiced by Lilly’s belated infringement contentions
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`in several ways. First, they argue that they formulated their defense strategy, discovery
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`plan, expert work, and case preparation based on the Infringement Contentions and
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`counsel’s representations that the contentions were sufficient under the doctrine of
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`equivalents. DRL asserts that allowing Lilly to augment its infringement theories at this
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`stage in the proceedings would require DRL to undertake additional discovery, including
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`finding new experts, with an enlarged deadline for discovery, and DRL would incur
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`substantial additional expenses. An enlargement of the discovery deadline, DRL argues,
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`would require extension of other case management deadlines, including the deadline for
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`expert disclosures and reports. DRL submits that even without additional time for
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`discovery, because of the new theories advanced in the expert reports, the expert
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`discovery deadlines need to be enlarged by at least sixty days. Most importantly, DRL
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`asserts that they have a great interest in resolving this action within the thirty-month
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`Hatch-Waxman Act stay. DRL maintains that Lilly’s late disclosure of its new contentions
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`jeopardizes the ability to resolve this action within the stay, thu