By Memorandum Order entered by The Honorable Leonard P. Stark in 3Shape A/S v. Align Technology, Inc., Civil Action No. 18-886-LPS (D.Del. February 1, 2021), the Court overruled the objections of Plaintiff 3Shape contending that Judge Hall misapplied the Pennypack factors when she, by Oral Order dated January 9, 2021, denied 3Shape’s requests to (i) strike two paragraphs of Dr. Singh’s expert report and (ii) preclude Defendant Align’s use of two documents at trial.

In overruling 3Shape’s objections and adopting Judge Hall’s Order, the Court found that “Judge Hall appropriately applied the Pennypack factors” and noted that “[t]here is nothing close to an abuse of discretion here.”  Id. at *1.  The Court further explained that Align did not raise a previously-undisclosed invalidity theory based on the documents at issue and any potential prejudice could be cured by inspection of source code, deposition of experts and rebuttal expert reports.  Id. at *2.  The Court further noted that none of the forgoing actions to cure would be particularly burdensome and would not disrupt trial which has yet to be scheduled.  Id.

A takeaway the Court provided litigants going forward is that, “[w]hen a decision of a magistrate judge is going to be reviewed under a deferential abuse of discretion standard – and particularly when it has been the subject of briefing consisting of short letter briefs – parties should carefully consider whether it is a wise use of resources (theirs, opposing counsel’s and the Court’s) to file 10-page briefs seeking a district judge’s review.”

A copy of the Memorandum Order is attached.