The opinion of the court was delivered by: Judge Gregory L. Frost
Magistrate Judge Terence P. Kemp
This matter is before the Court for consideration of the March 27, 2006 motion to strike (Doc. # 222 in 2:03-cv-264; Doc. # 199 in 2:04-cv-1072) filed by Aircraft Technical Publishers and a memorandum in opposition (Doc. # 231 in 2:03-cv-264; Doc. # 207 in 2:04-cv-1072) filed by Tdata Incorporated. The Court finds the motion to strike well taken.
In prior Orders, this Court has repeatedly described the nature and circumstances of this consolidated litigation. For purposes of the record, the Court shall only briefly describe here the most essential facts of this litigation.
Tdata Incorporated ("Tdata") is a company that produces and sells a software product called "Iapproach," which is a resource used for managing aircraft maintenance and repair. Aircraft Technical Publishers ("ATP") is the holder of three patents that are involved in the patent aspect of these two consolidated cases. Tdata is attacking the patents' validity and ATP is asserting infringement of the same patents.
In March 2006, Tdata filed a motion for summary judgment seeking to declare the patents unenforceable on the grounds of inequitable conduct. (Doc. # 212 in 2:03-cv-264; Doc. # 189 in 2:04-cv-1072.) Work on this motion and the Markman decision has been delayed by ATP's subsequent filing of the motion to strike portions of the summary judgment motion and its supporting memorandum. (Doc. # 222 in 2:03-cv-264; Doc. # 199 in 2:04-cv-1072.)
ATP seeks to strike portions of Tdata's pending summary judgment motion (Doc. # 212 in 2:03-cv-264; Doc. # 189 in 2:04-cv-1072) that reference allegedly non-disclosed prior art that is attached to the motion. ATP contends that prior discovery orders encompassed the disclosure of this art, but that Tdata never disclosed the art in any of its discovery responses despite both a rule-derived duty to do so and an order by the Magistrate Judge. ATP additionally asserts that it has repeatedly sought from Tdata all material that would support a contention that the patents involved in this litigation are unenforceable.
These allegations are serious because, as the Sixth Circuit has recognized, "[o]ur system of discovery was designed to increase the likelihood that justice will be served in each case, not to promote principles of gamesmanship and deception in which the person who hides the ball most effectively wins the case." Abrahamsen v. Trans-State Exp., Inc., 92 F.3d 425, 428-29 (6th Cir. 1996). The potential prejudice resulting from gamesmanship is notable here because the prior art in question serves as the basis for Tdata's March 3, 2006 motion for summary judgment, which asserts that three ATP patents are unenforceable because Tdata engaged in inequitable conduct before the United States Patent and Trademark Office in obtaining U.S. Patent No. 5,778,381, No. 5,987,474, and No. 6,292,806. (Doc. # 212 in 2:03-cv-264; Doc. # 189 in 2:04-cv-1072.) The crux of Tdata's motion for summary judgment is that ATP never disclosed prior art from the European patent prosecution to the United States Patent and Trademark Office.
Tdata admits that it has never disclosed the prior art in discovery. To excuse this non-disclosure, the company directs this Court to ATP counsel William Milks' September 13, 2005 deposition testimony that ATP had the prosecution history of European Patent No. EP0573171, which means that ATP had the prior art. In fact, Tdata asserts, ATP has had the prior art since 1994.
ATP's first ground for striking the prior art is that Tdata violated its automatic duty to amend a prior response. This implicates Federal Rule of Civil Procedure 26(e)(2), which provides:
A party is under a duty seasonably to amend a prior response to an interrogatory, request for production, or request for admission if the party learns that the response is in some material respect incomplete or incorrect and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing.
Fed. R. Civ. P. 26(e)(2). ATP posits that Tdata has violated the foregoing rule, while Tdata contends that the prior art was otherwise known to ATP because it is part of ATP's own European Prosecution History. There is some factual support for this latter contention. Although lacking specificity, Milks testified generally that he was involved in the European patent prosecution on behalf of ATP, that he corresponded with the overseas law ...