By Memorandum entered by The Honorable Richard G. Andrews in Viatech Technologies, Inc. v. Microsoft Corp., Civil Action No. 17-570-RGA (D.Del. February 19, 2021), the Court granted Defendant’s motion to strike barring Plaintiff from asserting, and its expert from opining on (1) any theory under the doctrine of equivalents (“DOE”) other than for the terms “user system” and “range of tolerance” and (2) any theory of infringement relying on the graphical user interface (“GUI”) of third party products or generated by server software.  The Court granted Defendant’s motion to strike after finding that Plaintiff’s stricken theories under the DOE and Plaintiff’s GUI literal infringement theory were not timely disclosed in its infringement contentions and during fact discovery; rather, these new infringement theories were disclosed for the first time in Plaintiff’s opening expert report.  Id. at *3-9.  The Court found that the Pennypack factors favored exclusion of the portions of Plaintiff’s expert report that related to the untimely disclosed infringement theories.  Id.

In its Memorandum, the Court noted that “[n]o court likes to say that a party acted in bad faith.”  Id. at *9.  That being said, the Court went on to note that it did “not understand how Plaintiff’s experienced lawyers could have thought that springing clearly new theories on a defendant in opening expert reports was in compliance with the scheduling order, the Rules, or expected standards of practice.”  Id.  Although the Court stopped short of finding that Plaintiff acted in bad faith, the Court noted that “[Plaintiff’s] actions approach that standard.”  Id.

Certainly a situation wise practitioners want to avoid in the future by disclosing all infringement theories in a timely manner.  Copies of the Memorandum and Order are attached.