Opinion
No. 00 C 4298
January 4, 2002
ORDER
ATM has moved in limine to bar Centurion from attempting to assert at trial the defense of prior invention by Centurion. For the reasons set forth below, the motion is granted.
This suit was filed on July 14, 2000. Centurion answered on October 26, 2000 and amended its answer on January 30, 2001. In neither pleading did Centurion assert the defense of prior invention. ATM served written interrogatories on Centurion on November 8, 2000, explicitly requesting, in interrogatory number 8, that Centurion identify "the basis for each alleged failure to comply with Title 35 in Defendant's contention in paragraph 10 of Defendant's counterclaim that the 6,034,639 patent is not valid." While stating that it had not yet completed discovery and accordingly viewed the question as premature, defendant responded that it believed that many of the claims of the patent in suit had been anticipated by specified patents or were invalid on the basis of certain other specified patents. Prior invention was not mentioned.
On May 10, 2001, trial was set for January 28, 2002. Fact discovery closed on August 31, 2001. Expert discovery was completed on November 7, 2001. The final pretrial order was due on December 10, 2001.
Centurion first raised its prior invention defense in supplemental interrogatory answers and document production on November 29 and 30, 2001. It did so in an offhand, superficial manner, stating, at the end of a long supplemental interrogatory response: "Defendant also contends that the subject matter of the `639 patent was first invented by employees of Centurion." Supplemental Answer to Interrogatory No. 21, p. 4.
Centurion argues that ATM cannot complain that Centurion failed to identify the defense of prior invention in response to interrogatory no. 8 because Centurion objected on the grounds that the question was premature and ATM never moved to compel an answer. This argument is without merit. Centurion set forth the grounds on which it believed, as of the date of its response, that the patent in suit was invalid, and there was nothing in its answer that would have put ATM on notice that Centurion was withholding a theory of invalidity of which it was aware on grounds of prematurity. At no time prior to November 2001 did Centurion suggest that it might assert additional defenses. Nor has Centurion argued that it was unaware of the facts giving rise to the prior invention defense (that its own employees had invented the subject antenna before ATM did) at the time it first responded to interrogatory no. 8. Not only does Centurion not contend that at the time it responded to interrogatory no. 8, it was unaware of the facts giving rise to its late-asserted defense, but it actually suggests that its conduct should somehow "have given Mr. Fallon some clue that Centurion was vigorously pursuing the `prior invention' theory." Centurion's Opposition to ATM's Motion in Limine to Exclude the Defense of Prior Invention, p. 3. Centurion does not explain why, if it was vigorously pursuing this defense, it never mentioned it until long after the close of discovery.
Centurion next argues that it produced 57 documents during discovery "which specifically dealt with Centurion's conception and reduction to practice dates of the Vader antenna prior to the filing date of the `639 patent." Centurion's Opposition, p. 4. If Centurion means to suggest, by this description of its document production, that ATM should have known that it intended to raise prior invention as a defense, its argument backfires. Surely Centurion, whose documents these were, should have been aware-if there was any basis for ATM to be so aware-that it had a potential prior invention defense. Centurion's failure to amend its answer to assert this defense, or to amend its discovery responses to disclose it, is incomprehensible in view of its own description of the documents it produced.
The court held a preliminary injunction hearing in this case on October 12 and November 9, 2001. It has ruled on many motions in this case including four summary judgment motions. At no time was the court aware that Centurion was claiming that it had invented the antenna in issue before ATM filed its patent application.
It has been ATM's position since the commencement of this litigation that it was being irreparably damaged in the marketplace by Centurion's alleged infringement and that the damage was extremely concrete: ATM claims that because Centurion has stolen ATM's patented design, Centurion has captured ATM's most important customer. ATM has sought from the outset an early trial, and the court has promised it a January 2002 trial, the earliest date which the court had available which provided the parties with a reasonable opportunity for adequate discovery. Permitting Centurion at this late date to assert a new defense, which would require more discovery, a revision of the final pretrial order and possibly additional motions, would be manifestly unfair to ATM. For this reason, ATM's motion is granted.