UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF COLUMBIA 

UNIQUE INDUSTRIES, INC., : 

 : 

Plaintiff, : Civil Action No.: 08-1095 (RMU) 

 : 

 v. : Re Document Nos.: 38, 39, 40, 41, 42, 50 

 : 

965207 ALBERTA LTD., : 

 : 

 Defendant. : 

MEMORANDUM OPINION

RE-OPENING DISCOVERY FOR A PERIOD OF NINETY DAYS; SANCTIONING PLAINTIFF’S 

COUNSEL FOR FAILING TO COMPLY WITH THE COURT’S SCHEDULING ORDERS; DENYING 

WITHOUT PREJUDICE THE PARTIES’ CROSS-MOTIONS FOR SUMMARY JUDGMENT;

DENYING THE PLAINTIFF’S MOTION FOR LEAVE TO AMEND

I. INTRODUCTION 

The defendant is the holder of two design patents for numerical and star-shaped sparklers, 

a type of firework that throws off sparks when lit. The plaintiff, a company that also produces 

numerical and star-shaped sparklers, commenced this action seeking a declaratory judgment that 

its products do not infringe on the defendant’s design patents. The plaintiff also challenges the 

validity of the defendant’s patents. The defendant maintains that its patents are valid and has 

asserted counterclaims against the plaintiff for patent infringement. 

This matter is now before the court on the parties’ cross-motions for summary judgment. 

The defendant has filed motions for summary judgment that its design patents are not invalid, 

that the plaintiff’s products infringe on those patents and that the plaintiff’s infringement has 

been willful. The plaintiff, in turn, has moved for summary judgment that its products are noninfringing. In addition, the plaintiff has moved to amend its pleadings to supplement the factual 
2

allegations underlying its affirmative defenses, to raise new affirmative defenses and a new claim 

and to add new defendants to the suit. 

In its submissions, the plaintiff relies on evidence of prior art that was not disclosed to the 

defendant until after the close of discovery. As discussed below, the plaintiff’s failure to 

disclose this evidence before the discovery deadline – indeed, on the eve of the deadline for 

filing motions for summary judgment – indicates at best an utter lack of diligence and at worst 

bad faith. This conduct constitutes a clear violation of this court’s scheduling orders. It also 

prejudices the defendant, which was deprived an opportunity to investigate or properly address 

this new evidence before preparing its final contentions and motions for summary judgment. 

Most troubling, however, is the fact that this new evidence may prove to be very relevant to the 

validity of the patents at issue. 

Because of the public interest in assessing the validity of the patents, as well as the 

availability of less drastic measures to mitigate the prejudice to the defendant, the court shall not 

disregard this evidence, as the defendant suggests. Instead, the court shall re-open discovery for 

a period of ninety days to permit the defendant an opportunity to investigate the evidence of prior 

art disclosed after the discovery deadline. As a result, the court denies without prejudice the 

parties’ cross-motions for summary judgment with leave to renew those motions following the 

close of this period of additional discovery. To mitigate the resulting prejudice to the defendant, 

the court orders plaintiff’s counsel to pay the reasonable attorney’s fees and costs incurred by the 

defendant as a result of the plaintiff’s failure to comply with the court’s orders. Lastly, the court 

denies the plaintiff’s motion for leave to amend on the grounds of undue delay and unfair 

prejudice. 

4

Def.’s Mot. for Claim Construction, Ex. B (’164 Patent). 

In June 2008, the plaintiff commenced this action seeking a declaratory judgment that its 

line of sparklers does not infringe on the defendant’s design patents. See generally Compl. In 

September 2008, the defendant responded to the complaint by asserting counterclaims of patent 

infringement. See generally Countercl. The plaintiff answered the counterclaims in October 

2008, denying the defendant’s allegations of patent infringement and asserting a variety of 

affirmative defenses, including patent invalidity and inequitable conduct. See generally Answer 

to Countercl.; Am. Answer to Countercl. 

At the initial status hearing held in early November 2008, the court established deadlines 

for the exchange of expert reports, final contentions and the close of discovery. Minute Entry 

(Nov. 3, 2008). These deadlines were based largely on dates proposed by the parties in the joint 

report they submitted prior to the hearing. See generally Joint 16.3 Scheduling Report (Oct. 27, 

2008). The court ordered that discovery on liability would close on January 26, 2010, with the 

case on damages to follow the resolution of motions for summary judgment on the issue liability. 

Id. 

In July 2009, the court granted the defendant’s motion to dismiss the plaintiff’s defense 

of inequitable conduct because that claim was not pleaded with sufficient particularity.1

 Mem. 

Op. (July 22, 2009) at 3-8. In the same ruling, the court resolved the parties’ cross-motions for 

claim construction. Id. at 8-17. The court construed the ’207 Patent and the ’164 Patent in the 

following manner: 

 

1

 More specifically, the court concluded although the plaintiff alleged that the defendant had 

engaged in inequitable conduct by knowingly withholding from the Patent and Trademark Office 

(“PTO”) prior art invalidating its two design patents, the plaintiff had not identified what prior art 

the defendant withheld from the PTO and had provided no factual allegations suggesting that the 

defendant specifically intended to mislead the PTO. Mem. Op. (July 22, 2009) at 7-8. 
5

The ’207 Patent is construed as the ornamental design of a set of sparklers, as 

shown in Figures 1-5 of the patent. The patented design includes all of the 

sparklers illustrated in the drawings, including the number-shaped sparklers and 

the “?”-shaped sparkler. The term “set” encompasses sparklers that belong or are 

used together, regardless of whether they are packaged or sold together or 

separately. 

The ’164 Patent is construed as the ornamental design of a star-shaped sparkler, as 

shown in Figures 1-4 of the patent. 

Id. at 16-17. 

 On January 20, 2010, the court granted the parties’ joint motion to extend the January 26 

discovery deadline set during the initial status hearing. Minute Order (Jan. 20, 2010). The court 

ordered the parties to complete discovery on liability by March 26, 2010, exchange final 

contentions by April 12, 2010 and file any motions for summary judgment by April 27, 2010. 

Id. 

 The parties exchanged final contentions as directed on April 12, 2010. In its final 

contentions, the plaintiff asserted that the inventor listed for the ’207 Patent and the ’164 Patent – 

Alok Sharma, a principal of the defendant – had appropriated the designs for these patents from 

numerical and star-shaped sparklers manufactured by a Czech company, Drutep Teplice 

(“Drutep”), years before Sharma applied for his patents. See Def.’s Mot. for Summ. J. on 

Validity of the Design Patents (“Def.’s Validity Mot.”), Ex. 7 at 1-3. The plaintiff also identified 

a number of companies and individuals who would verify that the sparklers in the designs 

patented by the defendant had been commercially available in Europe, China and Australia 

before Sharma applied for his patents. Id. Furthermore, the plaintiff attached to its final 

contentions a series of photographs purporting to illustrate these earlier-available sparklers. Id.

at 8-15. 
6

None of this evidence regarding prior art had been disclosed to the defendant before 

discovery closed. Def.’s Validity Mot., Ex. 9. The defendant objected to the inclusion of this 

new material in the plaintiff’s final contentions and initiated a conference call with the 

undersigned judge’s law clerk on April 15, 2010 to relay its concerns to the court. Id. During 

the call, the parties reached an agreement that would permit them to keep the previously-imposed 

litigation schedule, which called for the submission of motions for summary judgment by April 

27, 2010. See Minute Order (Jan. 20, 2010). Specifically, the parties agreed that the plaintiff 

would not use any evidence disclosed after the discovery deadline at the summary judgment 

stage and the defendant would not move for sanctions at that time. Def.’s Validity Mot., Ex. 10. 

Accordingly, on April 27, 2010, the defendant moved for summary judgment that its 

design patents are not invalid. See generally Def.’s Validity Mot. In addition, the defendant 

moved for summary judgment on the issue of infringement. See generally Def.’s Mot. for 

Summ. J. that the Pl.’s Star Sparklers Infringe Patent D451,164; Def.’s Mot. for Summ. J. that 

the Pl.’s Numerical Sparklers Infringe Patent D447,207. Finally, the defendant filed a motion for 

summary judgment that the plaintiff’s infringement has been willful. See generally Def.’s Mot. 

for Summ. J. that the Pl.’s Infringement of Patent D451,164 and D447,207 Has Been Willful. 

The plaintiff, in turn, filed a motion for summary judgment that its products do not infringe on 

the defendant’s design patents. See generally Pl.’s Mot. for Summ. J. for Non-Infringement. 

In late May 2010, the plaintiff filed its oppositions to the defendant’s motions for 

summary judgment. In its opposition to the defendant’s motion regarding the validity of its 

design patents, the plaintiff asserts, inter alia, that Alok Sharma is not the inventor of the designs 

illustrated in the patents. Pl.’s Opp’n to Def.’s Validity Mot. at 6-7. In support of that 

contention, the plaintiff has attached to its opposition the evidence of prior art first disclosed as 
7

part of the plaintiff’s final contentions. Id., Verified Statement of Kerry Healy; id.; Verified 

Statement of Nick Dale. 

Also in late May, the plaintiff filed a motion for leave to amend its pleadings to 

incorporate the evidence of prior art attached to its final contentions. See generally Pl.’s Mot. for 

Leave to Amend. Specifically, the plaintiff seeks leave to amend its affirmative defenses to 

incorporate the allegation that other companies had been marketing sparklers in the same 

ornamental design for years before Sharma applied for his patent. Id., Ex. A at 14-15, 18-20. 

The plaintiff also seeks leave to assert a claim of inequitable conduct against the defendant and 

Sharma based on the allegation that Sharma intentionally withheld information about this prior 

art in his submissions to the PTO. Id. at 22-25. Finally, the plaintiff seeks leave to add Sharma 

and Samrok Canada, Inc., a company controlled by Sharma, as defendants in this case. Pl.’s 

Mot. for Leave to Amend at 3. The plaintiff has proposed that the court re-open discovery for a 

period of ninety days to permit the parties to investigate the allegations raised in its proposed 

amended pleading. Id. 

The motions referenced above are ripe for adjudication. The court therefore turns to the 

applicable legal standards and the parties’ arguments. 

III. ANALYSIS 

A. The Court Denies Without Prejudice the Defendant’s Motion for Summary Judgment 

on the Validity of Its Patents and Sanctions Plaintiff’s Counsel for Failing to 

Comply With the Court’s Scheduling Orders 

1. Legal Standard for a Motion for Summary Judgment 

Summary judgment is appropriate when the pleadings and evidence show “that there is 

no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of 
8

law.” FED. R. CIV. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); 

Diamond v. Atwood, 43 F.3d 1538, 1540 (D.C. Cir. 1995). To determine which facts are 

“material,” a court must look to the substantive law on which each claim rests. Anderson v. 

Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A “genuine dispute” is one whose resolution 

could establish an element of a claim or defense and, therefore, affect the outcome of the action. 

Celotex, 477 U.S. at 322; Anderson, 477 U.S. at 248. 

 In ruling on a motion for summary judgment, the court must draw all justifiable 

inferences in the nonmoving party’s favor and accept the nonmoving party’s evidence as true. 

Anderson, 477 U.S. at 255. A nonmoving party, however, must establish more than “the mere 

existence of a scintilla of evidence” in support of its position. Id. at 252. To prevail on a motion 

for summary judgment, the moving party must show that the nonmoving party “fail[ed] to make 

a showing sufficient to establish the existence of an element essential to that party’s case, and on 

which that party will bear the burden of proof at trial.” Celotex, 477 U.S. at 322. By pointing to 

the absence of evidence proffered by the nonmoving party, a moving party may succeed on 

summary judgment. Id.

 The nonmoving party may defeat summary judgment through factual representations 

made in a sworn affidavit if he “support[s] his allegations . . . with facts in the record,” Greene v. 

Dalton, 164 F.3d 671, 675 (D.C. Cir. 1999) (quoting Harding v. Gray, 9 F.3d 150, 154 (D.C. Cir. 

1993)), or provides “direct testimonial evidence,” Arrington v. United States, 473 F.3d 329, 338 

(D.C. Cir. 2006). Indeed, for the court to accept anything less “would defeat the central purpose 

of the summary judgment device, which is to weed out those cases insufficiently meritorious to 

warrant the expense of a jury trial.” Greene, 164 F.3d at 675. 
9

2. The Court Cannot Determine At This Time Whether the Plaintiff Can 

Demonstrate the Invalidity of Either Patent at Issue 

 The defendant argues that it is entitled to summary judgment on the validity of the ’207 

Patent and the ’164 Patent because the plaintiff has not produced any evidence of prior art that 

would call into question the validity of those patents. See generally Def.’s Validity Mot. The 

defendant asserts that although the plaintiff produced a smattering of prior art before the 

discovery deadline, none of that prior art has any bearing on the design patents at issue; indeed, 

the plaintiff chose not to rely on this prior art in its final contentions. Id. at 2-3. Furthermore, 

the defendant states that although the plaintiff disclosed additional evidence of prior art with its 

final contentions, the court should not consider it because it was produced after the discovery 

deadline and the plaintiff agreed not to rely on it on summary judgment. Id. at 3-4. Thus, the 

defendant argues, the plaintiff has produced no evidence of invalidating prior art and the court 

should grant summary judgment to the defendant on the validity of the patents. Id. at 5-6. 

 The plaintiff responds that there is significant evidence that the defendant’s patents are 

invalid. See generally Pl.’s Opp’n to Def.’s Validity Mot. The plaintiff asserts that the 

defendant’s designs are entirely conventional and therefore not patentable. Id. at 3-5. The 

plaintiff also contends that summary judgment is precluded due to the defendant’s spoliation of 

evidence. Id. at 5-6. More specifically, the plaintiff contends that Sharma’s patent agent, 

George Seaby, discarded the original drawings allegedly sent to him by Sharma in connection 

with the patents at issue. Id. Lastly, the plaintiff contends that Sharma is not the inventor of the 

designs illustrated in the’207 Patent and the ’164 Patent. Id. at 6-7. In support of that 

contention, the plaintiff relies on the evidence of prior art first disclosed as part of its final 

contentions – namely, evidence that sparklers in the same ornamental designs had been available 
10

in Europe long before Sharma obtained his design patents. Id., Verified Statement of Kerry 

Healy; id., Verified Statement of Nick Dale. 

 “A patent is presumed valid and the party asserting invalidity has the burden of 

persuasion to show the contrary by clear and convincing evidence.” Research Corp. Techs. v. 

Microsoft Corp., 627 F.3d 859, 870 (Fed. Cir. 2010) (citing Tech. Licensing Corp. v. Videotek, 

Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). At the outset of an invalidity challenge, “[t]he 

challenger has the burden of going forward with invalidating prior art.” Id. (citing Tech. 

Licensing Corp., 545 F.3d at 1327). “The patentee then has the burden of going forward with 

evidence to the contrary, i.e., the patentee must show that the prior art does not actually 

invalidate the patent or that it is not prior art because the asserted claim is entitled to the benefit 

of an earlier filing date.” Id. (citing Tech. Licensing Corp., 545 F.3d at 1327; PowerOasis, Inc. 

v. T-Mobile USA, Inc., 522 F.3d 1299, 1304-06 (Fed. Cir. 2008)); accord Titan Tire Corp. v. 

Case New Holland, Inc., 566 F.3d 1372, 1376-77 (Fed. Cir. 2009) (observing that “[o]nce the 

challenger presents initially persuasive evidence of invalidity, the burden of going forward shifts 

to the patentee to present contrary evidence and argument” (citing Tech. Licensing Corp., 545 

F.3d at 1327)). “Ultimately, the outcome of the trial on this point will depend on whether, in 

light of all the evidence, the party challenging the patent’s validity has carried its burden of 

persuasion to prove by clear and convincing evidence that the patent is invalid.” Titan Tire 

Corp., 566 F.3d at 1377 (citing Tech. Licensing Corp., 545 F.3d at 1328). 

a. Originality of the Defendant’s Patented Designs 

The plaintiff begins its attack on the validity of the patent by calling into question the 

originality of the defendant’s patented designs. Pl.’s Opp’n to Def.’s Validity Mot at 2-4; see 

also 35 U.S.C. § 171(a) (providing that “[w]hoever invents any new, original and ornamental 
11

design for an article of manufacture may obtain a patent therefor[e]”) (emphasis added). 

Specifically, the plaintiff asserts that its own sparklers are based on conventional, existing 

designs, such as public domain fonts and earlier designs for birthday candles. Pl.’s Opp’n to 

Def.’s Validity Mot at 3-4; see also Pl.’s Mot. for Non-Infringement, Decl. of Joseph Italiano 

(“Italiano Decl.”) ¶¶ 3-12, 27-28.2

 Because its sparklers are based on conventional designs, the 

plaintiff argues, the defendant’s design patents cannot encompass the plaintiff’s products and 

still be valid because the patents would then encompass conventional, existing designs. Pl.’s 

Opp’n to Def.’s Validity Mot. at 2-4; see also Pl.’s Opp’n to Def.’s Validity Mot. at 2-4. 

Yet to demonstrate that these conventional designs invalidate the defendant’s patented 

designs, the plaintiff was required to offer some evidence that the conventional designs share the 

same overall visual appearance as the patented designs. See Durling v. Spectrum Furniture Co., 

Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (noting that in assessing whether prior art invalidates a 

patent, the court must consider whether prior art “create[s] the same overall visual appearance as 

the claimed design”). The plaintiff, however, has offered no evidence comparing the visual 

impression created by the conventional designs and the visual impression created by the 

defendant’s designs. See generally Pl.’s Opp’n to Def.’s Validity Mot. 

Instead, the plaintiff reasons that because the conventional designs are similar to the 

plaintiff’s sparklers and the plaintiff’s sparklers are, according to the defendant, similar to the 

defendant’s designs, the defendant’s designs must be similar to the conventional designs. Id. at 

2-4. This argument is flawed. Although Italiano states that he “consulted” conventional designs 

and that the plaintiff’s sparklers “resemble” and are “similar to” existing designs for birthday 

candles, Italiano Decl. ¶¶ 3-10, he acknowledges that the plaintiff’s sparklers are not identical to 

these conventional designs, id. ¶¶ 13-25. Given these differences in appearance, it does not 

 

2

 Joseph Italiano was employed by the plaintiff to design its line of sparklers. Italiano Decl. ¶ 2. 
12

follow as a matter of logic, as the plaintiff suggests, that any similarity between the defendant’s 

patented designs and the plaintiff’s sparklers necessarily entails a similarity between the 

defendant’s patented designs and the conventional designs. In fact, Italiano suggests in his 

declaration that both the plaintiff’s sparklers and the conventional designs which they resemble, 

differ in appearance from the defendant’s patented designs. See, e.g., Italiano Decl. ¶ 13 (stating 

that the plaintiff’s “1” sparkler “has the same ornamentation” as a “1” birthday candle marketed 

by the plaintiff but “is noticeably different in ornamental design from the numeral ‘1’ sparkler of 

the ’207 patent”); see also id. ¶¶ 14-25. Thus, the plaintiff’s assertion that its own sparklers 

resemble conventional designs does not raise a genuine of issue of fact as to the validity of the 

defendant’s designs. 

The only other evidence offered by the plaintiff regarding the originality of the 

defendant’s designs – other than the evidence of prior art disclosed after discovery, which is 

discussed below – is a snippet of testimony from Sharma’s deposition, in which Sharma testified 

that he “tried to make a standard star” when he designed the ’164 Patent. Pl.’s Opp’n to Def.’s 

Validity Mot., Decl. of Gerard Dunne (“Dunne Decl.”), Ex. C. This testimony, however, is of 

limited significance at best. As an initial matter, Sharma’s testimony does not address the 

originality of the numerical sparkler designs in the ’207 Patent. See id. Moreover, even if this 

deposition testimony provides some indication of Sharma’s intent at the time he designed the 

star-shaped sparkler, it is well established that the originality of a patented design turns on its 

appearance, not the designer’s intent. See Gorham Mfg. Co. v. White, 81 U.S. 511, 524 (1871) 

(noting that the patentability of a design resides in its appearance); see also In re Harvey, 12 F.3d 

1061, 1064 (Fed. Cir. 1993) (observing that the focus of the court’s inquiry into the validity of a 

patent is on its appearances rather than its uses); cf. 35 U.S.C. § 103(a) (“Patentability shall not 
13

be negatived by the manner in which the invention was made.”). Because the originality of the 

’164 Patent depends on its visual appearance in relation to the prior art, whether Sharma intended 

to create a “standard star” (whatever that may be) or a “novel star” is not directly relevant to the 

inquiry. What would be relevant – evidence of prior art having the same visual appearance as 

the defendant’s patented designs – the plaintiff has not placed in the record (with the exception 

of the evidence of prior art disclosed after discovery deadline). As a result, the plaintiff has not 

raised a genuine issue of material fact with respect to the originality of the plaintiff’s designs. 

b. Spoliation of Evidence 

The plaintiff next argues that the defendant should not be granted summary judgment 

because Sharma’s patent agent, Seaby, failed to maintain the original drawings that Sharma 

allegedly sent to Seaby in connection with the patents at issue. Pl.’s Opp’n to Def.’s Validity 

Mot. at 5-6. Indeed, the spoliation of evidence can, in certain circumstances, can give rise to an 

adverse inference against the party that failed to maintain the evidence. See Bolger v. Dist. of 

Columbia, 608 F. Supp. 2d 10, 30 (D.D.C. 2009) (citing Mazloum v. D.C. Metro. Police Dep’t, 

530 F. Supp. 2d 282, 291 (D.D.C. 2008)). Yet the “destruction of evidence, standing alone, is 

[not] enough to allow a party who has produced no evidence – or utterly inadequate evidence – 

in support of a given claim to survive summary judgment on that claim.” Talavera v. Fore, 648 

F. Supp. 2d 118, 133-34 (D.D.C. 2009) (quoting von Muhlenbrock v. Billington, 579 F. Supp. 2d 

39, 45 (D.D.C. 2008)); see also Byrnie v. Town of Cromwell, Bd. of Educ., 243 F.3d 93, 107 (2d 

Cir. 2001) (observing that “[i]n borderline cases, an inference of spoliation, in combination with 

‘some (not insubstantial) evidence’ for the plaintiff’s cause of action, can allow the plaintiff to 

survive summary judgment (citing Kronish v. United States, 150 F.3d 112, 126 (2d Cir. 1998)). 
14

In this case, the plaintiff has presented almost no evidence that the patents at issue are 

invalid, beyond the evidence of prior art disclosed after the discovery deadline. See generally

Pl.’s Opp’n to Def.’s Validity Mot. In addition, although the plaintiff suggests that Seaby had an 

obligation to preserve Sharma’s drawings because patent litigation is always a possibility, it has 

cited no authority for this blanket proposition. See Pl.’s Opp’n to Def.’s Validity Mot. at 5; see 

also Kronish, 150 F.3d at 126 (noting “for an adverse inference to arise from the destruction of 

evidence, the party having control over the evidence must have had an obligation to preserve it at 

the time it was destroyed”). Furthermore, the only explanation offered for how these records 

would have supported its invalidity defense is the plaintiff’s vague speculation that these 

materials “would help establish whether the drawings for the ornamental designs of the patents 

asserted in this matter had been hand drawn by Mr. Sharma[,] or if the drawings had been made 

from pre-existing sparklers already manufactured.”3

 Dunne Decl. ¶ 12; see also Bolger, 608 F. 

Supp. 2d at 30 (noting that for an adverse inference to be warranted, the missing evidence must 

have been “‘relevant’ to the claims or defenses of the party that sought the discovery of the 

spoliated evidence, to the extent that a reasonable factfinder could conclude that the lost 

evidence would have supported the claims or defense of the party that sought it”). Thus, the 

plaintiff has not shown that Seaby’s alleged failure to maintain Sharma’s original drawings 

warrants the withholding of summary judgment on the issue of validity. 

 

3

 Plaintiff’s counsel states in this declaration that “Sharma testified that the drawings for [the ’207 

Patent] were not exact to his drawings because of production issues. This suggests the patent 

drawings were made from pre-existing sparklers, and not photocopies of bent wire with sparkler 

materials.” Dunne Decl. ¶ 11. How the former “suggests” the latter, however, is simply not clear 

and is not explained by counsel. 
15

c. Inventorship of the Defendant’s Patented Designs and the Plaintiff’s Failure to Comply 

With the Court’s Scheduling Orders 

 Lastly, the plaintiff contends that the design patents are not valid because Sharma, the 

defendant’s principal, did not, in fact, invent those designs. Pl.’s Opp’n to Def.’s Validity Mot. 

at 6-7. In support of that contention, the plaintiff has submitted statements from two employees 

of Octavius Hunt Limited (“Octavius”), a British company that markets decorations. See 

generally id., Statement of Kerry Healy; id., Statement of Nick Dale. Both of these individuals 

state that long before Sharma obtained his design patents, Octavius had been purchasing 

numerical and star-shaped sparklers from a Czech company, Drutep. Id. Statement of Kerry 

Healy ¶ 2; id., Statement of Nick Dale ¶ 2. Sharma testified that Drutep was the first company 

he used to manufacture numerical sparklers. Dunne Decl., Ex. B. 

 There is no dispute that the plaintiff did not disclose any evidence regarding Drutep’s sale 

of numerical and star-shaped sparklers prior to the March 26, 2010 discovery deadline. See

Def.’s Validity Mot. at 4-5; see generally Pl.’s Opp’n to Def.’s Validity Mot. Indeed, the 

correspondence submitted by the parties makes clear that the plaintiff disclosed these materials, 

along with all its evidence concerning numerical and star-shaped sparklers sold in Europe, China 

and Australia, for the first time with its final contentions on April 12, 2010, Def.’s Validity Mot., 

Ex. 9, just two weeks before the deadline for filing motions for summary judgment, Minute 

Order (Jan. 20, 2010). This late disclosure occurred despite the fact that the defendant had 

issued document requests and interrogatories to the plaintiff in December 2008 requiring the 

disclosure of all evidence of prior art, Def.’s Validity Mot., Ex. 3, 4. 

 It is also clear that the plaintiff’s failure to disclose this evidence prior to the close of 

discovery resulted from the plaintiff’s lack of diligence in investigating its case. In its October 

2008 amended answer to the defendant’s counterclaims, the plaintiff challenged the validity of 
16

the defendant’s patents and expressly alleged that the defendant had failed to disclose evidence 

of prior art to the PTO. See Am. Answer to Countercl. ¶¶ 31, 43-48. By that time, plaintiff’s 

counsel must have been aware of some evidentiary basis for these allegations. See FED. R. CIV.

P. 11(b)(3) (stating that by presenting a pleading, motion or other paper to the court, the attorney 

certifies that to the best of his or her knowledge, formed after a reasonable inquiry, the factual 

contentions “have evidentiary support or, if specifically so identified, will likely have evidentiary 

support after a reasonable opportunity for further investigation or discovery”). Furthermore, the 

plaintiff was aware of Drutep’s role in the manufacture of the defendant’s sparklers by at least 

December 2009, when it deposed Sharma. Pl.’s Opp’n to Def.’s Validity Mot., Ex. B. 

Nonetheless, the plaintiff did not disclose any evidence regarding Drutep’s alleged prior 

production of numerical and star-shaped sparklers until months later, on the eve of the summary 

judgment deadline set by the court. Def.’s Validity Mot., Ex. 9. 

 The only excuse offered by the plaintiff for this delay is the suggestion, made in the 

declaration of plaintiff’s counsel, that the investigation that ultimately led to the discovery of this 

prior art was sparked by the revelation in January 2010 that Seaby had discarded Sharma’s 

original drawings. Dunne Decl. ¶¶ 9-13, 18. Yet the plaintiff has not explained how this 

revelation suddenly prompted it to investigate the issue of prior art or, more importantly, how it 

excuses its failure to that point to investigate the validity of the patents. See id. After all, the 

plaintiff had raised the issue of invalidating prior art more than a year earlier in October 2008. 

Answer to Countercl. ¶ 30. Indeed, although counsel exchanged numerous e-mails regarding the 

plaintiff’s belated document production, at no point in these contemporaneous discussions did 

plaintiff’s counsel cite Seaby’s destruction of evidence as a justification for the lateness of its 
17

disclosures.4

 See Def.’s Validity Mot., Ex. 9, 10; Dunne Decl., Ex. F; Def.’s Opp’n to Pl.’s Mot. 

for Leave to Amend, App. G, H. In sum, counsel’s reliance on Seaby’s purported failure to 

maintain records appears to be a post hac rationalization and does not excuse counsel’s lack of 

diligence. 

 Moreover, even if there were some justification for the lateness of the plaintiff’s 

investigation or its failure to complete discovery before the discovery deadline, that still would 

not excuse the plaintiff’s failure to produce any evidence regarding this prior art until after the 

close of discovery. Had this evidence been produced on a rolling basis, at least some of the 

prejudice to the defendant might have been avoided, as the defendant would have been able to 

obtain some discovery on these new materials. Instead, in an act reeking of gamesmanship and 

bad faith, the plaintiff waited until discovery closed to produce all of this evidence of prior art in 

a single burst. Def.’s Validity Mot., Ex. 9. 

 In apparent recognition of the prejudice caused by this conduct, plaintiff’s counsel agreed 

that the plaintiff would not rely on any of the evidence disclosed after the discovery deadline at 

summary judgment, so that the parties could keep their deadline for filing motions for summary 

judgment. Def.’s Validity Mot., Ex. 10; Dunne Decl. ¶ 21 (“During the call . . . referred to by 

[the plaintiff], I indicated . . . that I would not use new material disclosed after the close of 

discovery for summary judgment inasmuch as counsel for [the defendant] had stated [that they] 

would be prejudiced by the use of such material disclosed after the close of discovery.”). 

Nonetheless, the plaintiff reneged on that agreement by relying on that evidence in opposing the 

 

4

 Instead, plaintiff’s counsel simply asserted, without any explanation or limitation, that the 

plaintiff would continue to investigate its case and supplement its responses to the defendant’s 

discovery requests as needed, regardless of the discovery deadline. Dunne Decl., Ex. F; Def.’s 

Opp’n to Pl.’s Mot. for Leave to Amend, Ex. H. 
18

defendant’s motion for summary judgment on the issue of validity. Pl.’s Opp’n to Def.’s 

Validity Mot. at 5-6. 

At the very least, the conduct of plaintiff’s counsel constitutes a clear violation of the 

court’s scheduling order, which required the parties to complete discovery by March 26, 2010.5

 

Minute Order (Jan. 20, 2010). Counsel’s decision to disregard the court-ordered discovery 

deadline has clearly prejudiced the defendant, which prepared its final contentions and motions 

for summary judgment without having had the opportunity to obtain discovery regarding this 

newly disclosed evidence. 

 Federal Rule of Civil Procedure 16(f) provides that “[o]n motion or on its own, the court 

may issue any just orders, including those authorized by Rule 37(b)(2)(A)(ii)-(vii), if a party or 

its attorney . . . fails to obey a scheduling or other pretrial order.” FED. R. CIV. P. 16(f)(1)(C). 

Rule 37(b)(2)(A), in turn, expressly authorizes the court to impose the following sanctions: 

(ii) prohibiting the disobedient party from supporting or opposing designated 

claims or defenses, or from introducing designated matters in evidence; 

(iii) striking pleadings in whole or in part; 

(iv) staying further proceedings until the order is obeyed; 

(v) dismissing the action or proceeding in whole or in part; 

(vi) rendering a default judgment against the disobedient party; or 

(vii) treating as contempt of court the failure to obey any order except an order to 

submit to a physical or mental examination 

Id. 37(b)(2)(A)(ii)-(vii). 

 Accordingly, the Federal Rules authorize the court to dismiss the plaintiff’s claims in 

whole or part or prohibit the plaintiff from relying on the evidence produced after the close of 

 

5

 As previously noted, under the court’s original scheduling order, discovery was scheduled to 

close on January 26, 2010, Minute Entry (Nov. 3, 2008), and was extended to March 26, 2010 at 

the parties’ request, Minute Order (Jan. 26, 2010). Although the request to extend the discovery 

deadline was filed by the parties jointly, see Joint Stipulation to File Request for an Extension of 

Present Schedule, the plaintiff does not dispute that this request was made at the plaintiff’s 

insistence, see Pl.’s Statement of Material Facts ¶ 6; Def.’s Validity Mot. at 4. 
19

discovery as a sanction for its failure to comply with the court’s scheduling order.6

 Id.; see also, 

e.g., Tex. Instruments Inc. v. Powerchip Semiconductor Corp., 2007 WL 1541010, at *12 

(S.D.N.Y. May 24, 2007) (precluding the defendant from relying on documents produced after 

the close of discovery pursuant as a sanction under Rule 16(f)). The court, however, is not 

persuaded that such severe sanctions are appropriate here, despite the plaintiff’s abusive conduct. 

The Supreme Court has “emphasized the importance to the public at large of resolving questions 

of patent validity.” Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 100 (1993) (citing 

Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 330 (1971)). The evidence of 

prior art belatedly disclosed by the plaintiff has the potential at least to weigh heavily in the 

court’s validity analysis. See, e.g., Pl.’s Opp’n to Def.’s Validity Mot., Statement of Kerry Healy 

¶ 2. Furthermore, the court is confident that less severe sanctions can minimize the unfair 

prejudice that would result from allowing the plaintiff – and the court – to rely on this evidence. 

See Trakas v. Quality Brands, Inc., 759 F.2d 185, 187 (D.C. Cir. 1985) (noting that dismissal of 

a case “is a sanction of last resort to be applied only after less dire alternatives have been 

explored without success”); C.K.S. Eng’rs, Inc. v. White Mountain Gypsum Co., 726 F.2d 1202, 

1209 (7th Cir. 1984) (noting that the imposition of less severe sanctions, such as the award of 

attorney’s fees, may be “sufficiently effective in alerting an irresponsible litigant to the 

seriousness of his or her neglect, protecting the interests of the other litigants in the case, and 

vindicating the integrity of the court”). 

 

6

 The court also possesses the inherent authority to impose similar sanctions based on the plaintiff’s 

bad faith conduct in waiting until just after the close of discovery to produce this evidence of 

prior art, agreeing not to use that information on summary judgment and then simply disregarding 

that agreement. See Webb v. Dist. of Columbia, 146 F.3d 964, 971 (D.C. Cir. 1998) (observing 

that “[a] district court may order sanctions, including a default judgment, for misconduct either 

pursuant to Rule 37(b)(2) of the Federal Rules of Civil Procedure . . . or pursuant to the court’s 

inherent power to ‘protect [its] integrity and prevent abuses of the judicial process’” (quoting 

Shepherd v. Am. Broad. Cos., Inc., 62 F.3d 1469, 1474 (D.C. Cir. 1995))). 
20

Conversely, simply staying the proceedings to provide the defendant an opportunity to 

obtain additional discovery is not an acceptable alternative. The defendant, after all, has already 

expended substantial resources in preparing final contentions and motions for summary 

judgment, which will likely have to be amended to account for any newly discovered 

information. Furthermore, allowing additional discovery will inevitably delay the resolution of 

this matter. Finally, staying the proceedings without any additional sanction provides no 

disincentive for parties who might otherwise disregard the court’s scheduling orders. See Smith 

v. Georgetown Univ., 1993 WL 18927, at *1 n.* (D.D.C. Jan. 14, 1993) (“Plaintiffs sought no 

enlargement of time from the court for responding to the discovery requests, and sought no 

protective order. They cannot simply ignore discovery requests and deadlines, and not incur 

sanctions.”). 

 In light of these considerations, the court will permit the plaintiff to rely on this belatedly 

disclosed evidence of prior art and denies without prejudice the defendant’s motion for summary 

judgment on the validity of its design patents. See 10A FED. PRAC. & PROC. § 2718 (observing 

that “it is within the trial court’s discretion to deny a motion for summary judgment without 

prejudice to its being renewed at a later time and the court may grant a renewed motion upon a 

showing of good cause”). In addition, the court shall re-open discovery to the defendant for a 

period of a ninety days to permit the defendant an opportunity to obtain discovery regarding the 

plaintiff’s newly disclosed evidence. See In re Breast Implant Cases, 942 F. Supp. 958, 961 

(S.D.N.Y. 1996) (“In cases where additional information is required to adequately pass on a 

motion for summary [judgment], the practice has been to deny the motion, with leave to renew, 

allowing further discovery and development of evidence.”). 
21

Plaintiff’s counsel7

 shall, however, pay the reasonable attorney’s fees and costs incurred 

by the defendant in revising its final contentions (including the fees and costs associated with 

preparing new expert reports) and amending and re-filing its motions for summary judgment 

(including any oppositions and replies) to address the evidence of prior art disclosed after the 

discovery deadline.8

 See FED. R. CIV. P. 16(f)(2) (providing that “the court must order the party, 

its attorney, or both to pay the reasonable expenses – including attorney’s fees – incurred 

because of any noncompliance with this rule, unless the noncompliance was substantially 

justified or other circumstances make an award of expenses unjust”); see also Burton v. R.J. 

Reynolds Tobacco Co., 203 F.R.D. 636, 641-42 (D. Kan. 2001) (sanctioning plaintiff’s counsel 

for failing to comply with the court’s scheduling orders and ordering plaintiff’s counsel to pay 

attorney’s fees, witness fees and costs associated with re-deposing witnesses based on evidence 

disclosed after the discovery deadline). Plaintiff’s counsel shall also pay all reasonable 

attorney’s fees and costs incurred by the defendant in re-deposing any witnesses who have 

already been once deposed, insofar as additional depositions are needed to address the newly 

disclosed evidence. See Burton, 203 F.R.D. at 641-62. 

 

7

 To date, the court has been presented with no evidence that the plaintiff shares responsibility for 

the abusive conduct of its counsel. See Seismic Int’l Research Corp. v. South Ranch Oil Co., Inc., 

793 F.2d 227, 230 (10th Cir. 1986) (noting that “a court should, when possible, enter sanctions 

against counsel, and not the parties they represent” when imposing sanctions pursuant to Rule 

16(f)). 

8

 The defendant shall submit a detailed accounting of these expenses, supported by 

contemporaneous time records, one week after any renewed motions for summary judgment have 

been fully submitted. This accounting shall be sufficiently detailed to permit the court to 

ascertain that the expenses resulted from the plaintiff’s disclosure of evidence after the discovery 

deadline. 
22

B. The Court Denies Without Prejudice the Parties’ Cross-Motions 

on the Issue of Infringement 

 In addition to the defendant’s motion for summary judgment on the issue of validity, the 

parties have also filed cross-motions on the issue of infringement. See generally Def.’s Mot. for 

Summ. J. that the Pl.’s Star Sparklers Infringe Patent D451,164; Def.’s Mot. for Summ. J. that 

the Pl.’s Numerical Sparklers Infringe Patent D447,207; Def.’s Mot. for Summ. J. that the Pl.’s 

Infringement of Patent D451,164 and D447,207 Has Been Willful; Pl.’s Mot. for Summ. J. for 

Non-Infringement. Although it may be possible for the court to resolve the issue of infringement 

before addressing the validity of the defendant’s design patents, see Pandrol USA, LP v. Airboss 

Ry. Products, Inc., 320 F.3d 1354, 1364-65 (Fed. Cir. 2003) (observing that “patent infringement 

and invalidity are separate and distinct issues”), the court must address the validity issue 

regardless of its ruling on the issue of infringement, see Sinclair & Carroll Co. v. Interchemical 

Corp., 325 U.S. 327, 330 (1945) (stating that the lower courts should inquire fully into the 

validity of the patent even if it is possible to dispose of the case on the ground of noninfringement). Furthermore, addressing the issue of infringement before resolving the question 

of validity may render the latter an advisory ruling. See Altvater v. Freeman, 319 U.S. 359, 363 

(1943) (“To hold a patent valid if it is not infringed is to decide a hypothetical case.”); see also 

Ditto, Inc. v. Minn. Min. & Mfg. Co., 336 F.2d 67, 69 (6th Cir. 1964) (“The validity question is 

of greater public importance than the infringement issue and it is usually the better practice to 

first consider the validity issue.”). Finally, although the issues of patent validity and 

infringement are separate and distinct, the possibility remains that in the course of investigating 

the former issue, additional evidence may be uncovered relevant to the latter. 

Thus, rather than addressing the issues of validity and infringement in a piecemeal 

fashion, the court denies without prejudice the parties’ cross-motions for summary judgment on 
23

the issue of infringement with leave to re-submit these motions following the close of the 

supplemental period of discovery ordered above. 

C. The Court Grants in Part and Denies in Part the Plaintiff’s Motion 

for Leave to Amend Its Pleadings 

1. Legal Standard for Amending Pleadings Pursuant to Rule 15(a) 

Rule 15(a) governs the amendment of pleadings, stating generously that “[t]he court 

should freely give leave when justice so requires.” FED. R. CIV. P. 15(a). Courts shall 

“determine the propriety of amendment on a case by case basis.” Harris v. Sec’y, U.S. Dep’t of 

Veterans Affairs, 126 F.3d 339, 344 (D.C. Cir. 1997). Whether to grant or deny leave to amend 

rests in the district court’s sound discretion. Foman v. Davis, 371 U.S. 178, 182 (1962). Such 

discretion is not unlimited, however, for it is an “abuse of discretion” when a district court denies 

leave to amend without a “justifying” or sufficient reason. Id. at 181, 182; Firestone v. 

Firestone, 76 F.3d 1205, 1208 (D.C. Cir. 1996). Reasons that justify a denial of leave to amend 

include undue delay, bad faith, repeated failure to cure a pleading’s deficiencies, undue prejudice 

to the opposing party, and futility of amendment. Foman, 371 U.S. at 182; Richardson v. United 

States, 193 F.3d 545, 548-49 (D.C. Cir. 1999); Caribbean Broad. Sys., Ltd. v. Cable & Wireless 

P.L.C., 148 F.3d 1080, 1084 (D.C. Cir. 1998). 

 Courts require a sufficient basis for denial of leave to amend because the purpose of 

pleading under the Federal Rules of Civil Procedure is “to facilitate a proper decision on the 

merits,” not to set the stage for “a game of skill in which one misstep by counsel may be decisive 

to the outcome.” Foman, 371 U.S. at 181-82 (citing Conley v. Gibson, 355 U.S. 41, 48 (1957)). 

Under Rule 15(a), the non-movant generally carries the burden in persuading the court to deny 

leave to amend. Cf. Dussouy v. Gulf Coast Inv. Corp., 660 F.2d 594, 598 n.2 (5th Cir. 1981) 

(endorsing exceptions to the general rule that the burden of persuasion rests with the non-movant 
24

in the Rule 15(a) context); see also Gudavich v. District of Columbia, 22 F. App’x 17, 18 (D.C. 

Cir. 2001) (noting that the non-movant “failed to show prejudice from the district court’s action 

in allowing the [movant’s] motion to amend”) (unpublished decision). 

2. The Plaintiff’s Motion for Leave to Amend Is Unduly Delayed and 

Would, if Granted, Unfairly Prejudice the Defendant 

 The plaintiff has moved to amend its pleadings to include additional affirmative defenses 

concerning the alleged invalidity of the defendant’s design patents. See Pl.’s Mot. for Leave to 

Amend, Proposed Am. Compl. & Am. Answer ¶¶ 23-30, 36-46. The plaintiff also seeks leave to 

supplement its pleadings with a claim of inequitable conduct, based on allegations that the 

defendant and Sharma withheld information regarding prior art when they applied for the ’207 

and ’164 Patents. Id. ¶¶ 56-69. Both the newly proposed claim and the proposed defenses are 

based on the evidence of prior art disclosed after the close of discovery. See id. ¶¶ 23-30, 36-46, 

56-69; see also supra Part III.A.2.c. Lastly, the plaintiff seeks leave to add Sharma and an entity 

known as Samrok Canada, Inc. as defendants in this action. Pl.’s Mot. for Leave to Amend,

Proposed Am. Compl. & Am. Answer ¶¶ 3-4. 

 The plaintiff contends that the court should grant it leave to amend its pleadings because 

it requested leave to amend promptly after receiving the new evidence of prior art, the new 

evidence is crucial to its defense against the infringement claims and the public interest demands 

a full exploration into the validity of a patent.9

 Pl.’s Mot. for Leave to Amend at 4; Pl.’s Reply 

in Support of Pl.’s Mot. for Leave to Amend at 2-3. The plaintiff also requests that the court reopen discovery for a period of ninety days to permit the parties to obtain additional discovery 

regarding these new allegations. Id. at 3. The defendant responds that the plaintiff’s motion 

 

9

 The plaintiff also contends, as it did in its opposition to the defendant’s validity motion, that its 

discovery of this new evidence was delayed by Seaby’s allegedly wrongful destruction of certain 

materials sent to him by Sharma. Pl.’s Mot. for Leave to Amend at 4. As previously discussed, 

however, this contention is not credible. See supra Part III.A.2.c n.3. 
25

should be denied because the plaintiff was not diligent in investigating these new allegations and 

acted in bad faith in failing to disclose any evidence regarding these new allegations during 

discovery. Def.’s Opp’n to Pl.’s Motion for Leave to Amend at 3-5. In addition, the defendant 

asserts that it would be prejudiced by this last minute addition of new allegations. Id. at 7. 

As noted above, both undue delay and prejudice justify the denial of leave to amend. See 

Foman, 371 U.S. at 178; Richardson, 193 F.3d at 548-49; see also 6 FED. PRAC. & PROC. § 1488 

(noting that “courts have not allowed amendments to be made that seek to add new claims or 

theories, parties, or new defenses or counterclaims to the action when allowing the amendment is 

deemed to be unduly burdensome, given the stage to which the litigation has advanced”). Here, 

the plaintiff’s motion for leave to amend comes after the preparation of expert reports, after the 

close of discovery and after the submission of motions for summary judgment. See generally

Pl.’s Mot. for Leave to Amend. The tardiness of the plaintiff’s motion is not excused by the 

plaintiff’s failure to discover evidence of prior art until after the close of discovery, for as 

previously discussed, the plaintiff’s purported failure to uncover this evidence earlier in the 

litigation resulted from its lack of diligence in investigating its case. See supra Part III.A.2.c. 

The plaintiff’s failure to seek leave to amend until after the close of discovery and the 

submission of summary judgment briefs constitutes an unjustifiable lack of diligence that plainly 

weighs against granting leave to amend. 

Moreover, it is clear that such a last minute amendment would, if permitted, unfairly 

prejudice the defendant. Although the defendant will have an opportunity to obtain discovery 

regarding the evidence of prior art disclosed after the discovery deadline, see supra Part 

III.A.2.c, the addition of new parties, new defenses and new claims would necessitate yet 

additional discovery and result in even more delay. See In re Vitamins Antitrust Litig., 217 
26

F.R.D. 30, 33 (D.D.C. 2003) (denying the plaintiff’s motion for leave to amend, which would 

have resulted in new claims that the defendant would be forced to deal with after discovery, 

because “[a]llowing the addition of this claim at this time [would] create[] an undue delay in trial 

preparation and would thus be prejudicial”). This prejudice, coupled with the plaintiff’s lack of 

diligence in investigating its case and seeking leave to amend its pleadings, justifies denial of the 

plaintiff’s motion for leave to amend. See Acosta-Mestre v. Hilton Int’l of Puerto Rico, Inc., 156 

F.3d 49, 51-52 (1st Cir. 1998) (holding that the district court did not abuse its discretion in 

denying the plaintiff’s motion to amend the complaint to add an additional party because the 

motion, which was filed near the close of discovery, was tardy and the plaintiff lacked any 

sufficient excuse for delaying so long before moving for leave to amend); Becker v. Dist. of 

Columbia, 258 F.R.D. 182, 184-85 (D.D.C. 2009) (denying the defendants’ motion for leave to 

amend their answer on the grounds of undue delay because the motion came years after the filing 

of the answer and after discovery had closed and motions for summary judgment had been filed); 

see also Cameron v. Thornburgh, 983 F.2d 253, 258 (D.C. Cir. 1993) (affirming the district 

court’s denial of a motion for leave to amend on the grounds of undue delay because leave to 

amend was not sought until fifteen months after motions to dismiss had been filed); 

Williamsburg Wax Museum, Inc. v. Historic Figures, Inc., 810 F.2d 243, 247 (D.C. Cir. 1987) 

(affirming the denial of a motion for leave to amend on the grounds of undue delay because the 

motion came years after the plaintiff filed its first complaint and after the close of discovery and 

after the court had resolved a motion for summary judgment). The court therefore denies the 

plaintiff’s motion for leave to amend.10

 

10 The denial of the plaintiff’s motion for leave to amend does not preclude the plaintiff from 

relying on the evidence of prior art disclosed after discovery to attack the validity of the 

defendant’s patents. The plaintiff’s operative pleadings include an affirmative defense of 

invalidity, invoking, inter alia, 35 U.S.C. § 103, prohibiting patents for inventions anticipated by 
27

IV. CONCLUSION 

For the foregoing reasons, the court denies without prejudice the parties various motions 

for summary judgment, denies the plaintiff’s motion for leave to amend, sanctions the plaintiff’s 

counsel based on his failure to abide by the court’s scheduling order and re-opens discovery for a 

period of ninety days. An Order consistent with this Memorandum Opinion is separately and 

contemporaneously issued this 17th day of February, 2011. 

 

 RICARDO M. URBINA 

United States District Judge 

 

prior art. Am. Answer to Countercl. ¶ 31. The evidence of prior art is plainly relevant to that 

affirmative defense.