In Sloan v. Zurn (April 12, 2012), Judge St. Eve (Northern District of Illinois) allowed Defendant Zurn to supplement its invalidity contentions, despite misgivings about Defendant's dilatory disclosures. In granting the requested supplement as to a flush valve alleged to be in public use, Judge St. Eve explained:
The Court agrees that Zurn failed to properly disclose its Community Center Worn Valve invalidity contention. Although the Court agrees that Zurn’s two invalidity contentions are not the same, as is discussed further below, they are based on the same theory such that Zurn should be allowed to assert the newly-articulated defense. It is a close call, however, and it is apparent from the facts in the record that Zurn unexplainably failed to produce the underlying documentation regarding the Community Center Worn Valve to Sloan despite certifying numerous times that its document production was complete. Accordingly, the Court orders Zurn to pay Sloan’s reasonable costs and attorney’s fees incurred in conducting discovery related to the newly-articulated Community Center Worn Valve defense as set forth in the Order.
(Order at 7). Despite the late identification of a new invalidity contention, the Court permitted the supplement. Judge St. Eve appears to have balanced other factors in this case because the new invalidity contention was determined to be belatedly disclosed. The Court was mindful to shift the costs of discovery for the new invalidity contention away from the Plaintiff and to the Defendant. Although not explicitly addressed in the opinion, another factor may have a recently issued Reexamination Certificate issued for the asserted patent, reciting amended and added claims.
Takeaways - There's not much to say about this one. The new contention was similar in theory to a previous contention, but relied on entirely different evidence (previous contention related to laboratory tests showing simulated valve wear while new contention based on valve wear over time at a public facility). The Court does not really address why the new contention was permitted, except that it was a "close call" and that the two contentions "are based on the same theory. (Order at 7). All other factors appear to have favored the Plaintiff in support of its motion to strike the new contention.