Inline Plastics accused Lacerta of infringing three patents relating to tamper resistant plastic packages. Lacerta moved to strike portions of Inline’s expert report for allegedly proposing infringement under the doctrine of equivalents for a pair of claims, because Inline had not asserted infringement by equivalents in any of the prior infringement contentions set forth by Inline in accordance with the local patent rules. Inline had supplemented its infringement contentions on three separate occasions. A Markman hearing was held, and fact discovery closed without Inline asserting infringement by equivalents. Judge Hillman determined that this was, in fact, and improperly late disclosure of the doctrine of equivalents theory.
Under the Mass. Local Rule 16.6 ( Massachusetts’ local patent rule), the plaintiff must file infringement contentions that set forth on an element-by-element basis certain information, including whether each element of each asserted claim is asserted to be present literally or under the doctrine of equivalents. None of Inline’s contentions asserted equivalents for any element, which Inline conceded. Judge Hillman rejected Inline’s argument that its late disclosure of the equivalents theory would not prejudice Lacerta, finding that Inline’s proposal that Lacerta be allowed to depose the expert for an additional hour on the theory (Inline’s expert had already been deposed) and allow Lacerta’s expert to rebut the theory would not cure the additional scope of defense and trial preparation that allowing the introduction of the theory would present. He also rejected Inline’s argument that Lacerta’s noninfringement contentions were too vague to permit Inline to present the equivalents theory earlier, noting that Inline had never raised any issue with Lacerta’s report. Judge Hillman further rejected Inline’s request to allow them to supplement their contentions to include the equivalence theory, noting that late supplementation of contentions are only allowed on a showing of good cause and Inline had shown no cause, much less good cause, for such a supplementation.