UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Marine Polymer Technologies, Inc.

v. Civil No. 06-cv-100-JD

Opinion No. 2010 DNH 063

HemCon, Inc.

O R D E R

Marine Polymer Technologies, Inc. moves to preclude HemCon,

Inc. from introducing into evidence prior art references, and

testimony related to those references, that were first disclosed

in HemCon’s notice under 35 U.S.C. § 282 and that lack supporting

expert opinion. HemCon objects to the motion, contending that

its disclosure was timely under § 282, that Marine Polymer was

not surprised by most of the references, that Marine Polymer’s

own tardy disclosures caused delay as to some of the references,

and that its expert witness, Dr. Dornish, included an opinion in

his 2007 report on one of the cited prior art references.

I. Late Disclosure

Actions involving issues of patent invalidity due to

obviousness, anticipation, or statutory bar rely, at least in

part, on prior art as evidence of invalidity. See 35 U.S.C. §

102 & § 103. Parties asserting patent invalidity are required

Case 1:06-cv-00100-JD Document 289 Filed 04/08/10 Page 1 of 8
to give notice in the pleadings or otherwise in writing

to the adverse party at least thirty days before the

trial, of the country, number, date, and name of the

patentee of any patent, the title date, and page

numbers of any publication to be relied upon as

anticipation of the patent in suit or, . . . as showing

the state of the art, and the name and address of any

person who may be relied upon as the prior inventor or

as having prior knowledge of or as having previously

used or offered for sale the invention of the patent in

suit.

35 U.S.C. § 282. The notice requirement “‘is to prevent unfair

and prejudicial surprise by the production of unexpected and

unprepared-for prior art references at trial.’” ATD Corp. v.

Lydall, Inc., 159 F.3d 534, 551 (Fed. Cir. 1998) (quoting Eaton

Corp. v. Appliance Valves Corp., 790 F.2d 874, 879 (Fed. Cir.

1986)). The thirty-day time limit for notice provided in § 282

is a minimum, however, which is subject to any other applicable

deadlines imposed by the Federal Rules of Civil Procedure or the

court. Id.; see also Flexiteek Americas, Inc. v. Plasteak, Inc.,

641 F. Supp. 2d 1297, 1313 (S.D. Fl. 2009); FLOE Int’l, Inc. v.

Newmans’ Mfg. Inc., 2005 WL 6218040, at *4-*5 (D. Minn. Nov. 9,

2005).

The scheduling order in this case set July 20, 2007, as the

deadline for discovery. In interrogatories dated March 23, 2007,

Marine Polymer asked HemCon to identify “each item of prior art

that HemCon contends invalidates any claim of the ‘245 Patent

under 35 U.S.C. § 102 or § 103" and to describe the basis for

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invalidity based on the asserted prior art. Marine Polymer

represents that HemCon responded to the interrogatory on April

23, 2007, and then supplemented its responses four times, the

last on July 19, 2007. Marine Polymer further represents that

the supplements did not include thirty-eight of the prior art

references that are listed in HemCon’s § 282 notice. 

Marine Polymer states that HemCon did not raise any of the

new prior art references in support of its motion for summary

judgment on invalidity filed in September of 2008. HemCon served

an additional supplemental interrogatory response on February 23,

2010, but did not include the thirty-eight new prior art

references. The new references were first disclosed on March 16,

2010, in HemCon’s § 282 notice and in another supplemental

interrogatory response.

HemCon does not dispute the chronology of events that Marine

Polymer provided. Instead, HemCon argues that the new prior art

references disclosed in the § 282 notice did not surprise Marine

Polymer because “at least some” were known to one of the

inventors of the ‘245 patent, Dr. Vournakis; one is a prior

patent application by Marine Polymer; and several of the prior

art references were cited as prior art during prosecution of the

‘245 patent. HemCon also contends that disclosure of fourteen of

the new prior art references “was prompted by Plaintiff’s own

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failure to disclose a competing collagen bandage to HemCon until

mid-December 2009.” HemCon also attributes knowledge to Marine

Polymer of some of the prior art because its employees were aware

of the cited references.

After Marine Polymer propounded the interrogatory to HemCon

asking HemCon to disclose each item of prior art that HemCon

claimed invalidated a claim of the ‘245 patent under 35 U.S.C. §

102 and § 103 and HemCon provided an answer, HemCon was under a

continuing obligation to supplement its answer “in a timely

manner.” Fed. R. Civ. P. 26(e). If a party fails to supplement

its interrogatory answers as required by Rule 26(e), unless the

failure was substantially justified or harmless, the party will

not be permitted to use that information at trial. Fed. R. Civ.

P. 37(c)(1).

The only justification HemCon provides for its last minute

attempt to supplement its interrogatory answer is an assertion

that fourteen of the new references were found in response to

Marine Polymer’s late disclosure of a competing product. HemCon

does not explain the connection between the competing product and

the fourteen new prior art references or why it then waited

months to disclose the new prior art references. HemCon appears

to argue that the late disclosure is harmless because Marine

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Polymer already was aware of most of the newly-disclosed prior

art references. 

The purpose of requiring HemCon to supplement its discovery

answer in a timely manner was to permit Marine Polymer to engage

in discovery about the bases for HemCon’s defenses and to prepare

its response. See ATD Corp.. 149 F.3d at 550; see also Sheek v.

Asia Badger, Inc., 235 F.3d 687, 693 (1st Cir. 2000). A showing

that Marine Polymer was previously aware that the newly disclosed

prior art references existed, without any indication that those

references would be the bases for HemCon’s invalidity defenses,

was not enough. See ATD Corp., 159 F. 3d. at 550; Flexiteek, 641

F. Supp. 2d at 1313.

Because HemCon has not shown that it supplemented its

interrogatory answer in a timely manner, as required by Rule

26(e), and also has not shown that its failure to do so was

either substantially justified or harmless, under Rule 37(c)(1),

the thirty-eight newly disclosed prior art references cannot be

used at trial.

II. Admissibility

Marine Polymer asserts that HemCon cannot introduce at trial

fifty-two prior art references that are listed in the § 282

notice, which includes the thirty-eight references discussed

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above, because expert testimony is required to establish their

relevance to the invalidity defenses. Marine Polymer asserts

that no expert witness has given an opinion about those

references. HemCon’s only response to that part of Marine

Polymer’s motion is that Dr. Dornish relied on the prior art

listed as reference number 25, Chitin and Chitosan: Sources,

Chemistry, Biochemistry, Physical Properties and Applications,

Skjak-Brak, et al. (1989), in his 2007 report. 

HemCon does not dispute that expert opinion testimony is

necessary to explain how particular prior art supports its

invalidity defenses under § 102 and § 103. See, e.g., Enzo

Biochem, Inc. v. Applera Corp., --- F.3d ---, 2010 WL 1135563, at

*9 (Fed. Cir. March 26, 2010); Pressure Prods. Med. Supplies,

Inc. v. Greatbatch Ltd., --- F.3d ---, 2010 WL 1051154, at *7

(Fed. Cir. March 24, 2010). In light of the technical and

complex nature of the invention claimed by the ‘245 patent, prior

art encompassing the same subject matter would be beyond the

knowledge of jurors in the absence of expert opinion. See Fed.

R. Evid. 702. Therefore, prior art is not admissible to show

invalidity under § 102 or § 103 unless a qualified expert witness

provides an opinion to explain the art and its relationship to

the ‘245 patent.

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HemCon does not provide a citation to where in the fiftypage report Dr. Dornish provided an opinion about the cited prior

art reference. The court will not ferret through the report to

find the reference on HemCon’s behalf. In response to Marine

Polymer’s motion, HemCon bears the burden to show that the

challenged evidence is admissible at trial. See, e.g., Beech

Aircraft Corp. v. Rainey, 488 U.S. 153, 176-77 (1988).

At trial no prior art reference will be admitted into

evidence for purposes of proving invalidity under § 102 or § 103

in the absence of an admissible expert opinion that provides an

explanation of the meaning and relevance of the prior art to an

invalidity defense. Therefore, before HemCon introduces one of

the prior art references that Marine Polymer challenges due to a

lack of expert opinion, HemCon will notify opposing counsel and

seek the court’s approval to allow the evidence.

Conclusion

For the foregoing reasons, Marine Polymer’s motion in limine

to preclude evidence of certain prior art references (document

no. 267) is granted as follows. The thirty-eight prior art

references first disclosed in HemCon’s § 282 notice and March 16,

2010, supplementary disclosure were not timely disclosed and are

not admissible at trial. The remaining prior art references that

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Marine Polymer challenges for lack of expert opinion are not

admissible absent prior notice to opposing counsel and approval

of the court.

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

April 8, 2010

cc: Julie M. Baher, Esquire

Garet K. Galster, Esquire

Daniel R. Johnson, Esquire

Heather E. Krans, Esquire

Joseph A. Kromholz, Esquire

Lynda Q. Nguyen, Esquire

Brian M. Poissant, Esquire

Daniel D. Ryan, Esquire

Ognian V. Shentov, Esquire

Jonathan M. Shirley, Esquire

Daniel E. Will, Esquire

Leigh S. Willey, Esquire

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