After the district court adopted a specialized scheduling order that was based on local patent rules in other districts, the plaintiffs served detailed infringement contentions and the defendant served detailed invalidity contentions early in the case. The parties could only amend the contentions for "good cause." As the case progressed toward trial, the parties moved to strike various portions of the opposing party's expert reports arguing that certain references and/or theories were not properly disclosed in the contentions.

As explained by the district court, under Federal Rules of Civil Procedure 16 and 37, "court may impose any `just' sanction for the failure to obey a scheduling order, including refusing to allow the disobedient party to support or oppose designated claims or defenses, or prohibiting that party from introducing designated matters in evidence." 02 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1363 (Fed. Cir. 2006). "The scope of contentions and expert reports are not, however, coextensive."Apple Inc. v. Samsung Elec. Co., No. 5:12-CV-0630-LHK-PSG, 2014 WL 173409, at *1 (N.D. Cal. Jan. 2014). Thus, "the line between permissible application of a disclosed theory to disclosed evidence and impermissible reliance on either a new theory or new evidence can blur." Apple Inc. v. Samsung Elec. Co., No. C 11-1846 LHK PSG, 2012 WL 2499929, at *1 (N.D. Cal. June 27, 2012). Under these circumstances, "when asked to strike some or all of an expert report, the court must revert to a simple question: will striking the report result in not just a trial, but an overall litigation, that is more fair, or less?" Id.

The district court then analyzed whether the defendant's expert report should be excluded in part. "Dr. Harrison's expert report relies on two prior art references not disclosed in any way in Defendant's invalidity contentions. Defendant admits that these prior art references were not disclosed. Defendant does not offer any reason or justification as to why these references were not disclosed or why Defendant did not move to amend its invalidity contentions to add them during discovery. Instead, Defendant argues that the references are 'consistent with the arguments that AstraZeneca made in it[s] contentions and merely adds an additional level of evidentiary support' to its argument. However, disclosure of such 'evidentiary support' is the purpose of serving invalidity contentions. Defendant disclosed literally hundreds of prior art references that Plaintiffs had to sift through during discovery, and these two were not among them."

Accordingly, the district court ordered these prior art references excluded.

Charleston Medical Therapeutics, Inc. v. AstraZeneca Pharmaceuticals I, Case No. 2:13-cv-2078-RMG (D. S. C. Apr. 16, 2015)