1The challenged documents are Bates stamped with numbers

057853 to 057859. Hypertherm represents that counsel for ATTC

has recently disclosed other similar evidence that also should be

barred for failure to disclose within the discovery deadlines.

UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Hypertherm, Inc.

v. Civil No. 05-cv-373-JD

American Torch Tip Company

SEALED ORDER

Hypertherm, Inc. moves to strike certain evidence, which was

submitted in opposition to Hypertherm’s motion for partial

summary judgment on patent validity, and to preclude American

Torch Tip Company’s (“ATTC”) from using that evidence.

Specifically, Hypertherm asserts that the challenged evidence

consists of documents, which ATTC represents are invoices for the

sale of electrodes from March through May of 1990 and two

declarations which discuss sales of the electrodes.1 ATTC

opposes the motion to strike.

Background

ATTC pled an affirmative defense of invalidity of the

patents in suit, including the ‘988 patent, under 35 U.S.C. §§

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 1 of 13
2

102, 103, and 112. In its first set of requests for production

of documents, dated June 28, 2006, Hypertherm asked ATTC to

produce “[a]ll Documents and things tending to support or refute

ATTC’s belief that Patents-in-Suit are invalid, void and

unenforceable under the Patent laws of the United States.” 

Motion to Strike, dkt. #219, Lax Decl. Ex. 2. In its second set

of requests, Hypertherm asked for all documents concerning the

invalidity defense. As part of its first set of interrogatories,

Hypertherm asked ATTC to produce all prior art references that

would support ATTC’s invalidity defense. 

In response to Hypertherm’s discovery requests, ATTC

produced a confidential document captioned “Whitney 648327

Electrode,” which was an engineering drawing of an electrode. 

ATTC’s counsel represented to counsel for Hypertherm, in a letter

dated April 12, 2007, that “the only documents that exist and

have not been already produced, are those documents responsive to

Requests Nos. [sic] 33" relating to the sale of accused products. 

Id., Ex. 5. 

ATTC’s expert, James K. Sprague, provided an expert report

dated May 23, 2007, in which, among other things, he discussed

the validity of the ‘988 patent. In his report, Sprague found

that the ‘988 patent is invalid due to anticipation based on the

prosecution history and the background section of the ‘988

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 2 of 13
2Although Sprague capitalizes “Whitney Electrode” in his

report, the parties do not consistently capitalize “electrode” in

referring to the product or the drawing. 

3

patent. Sprague noted that Table 6 of the ‘988 patent

specification “contains a column for [ATTC’s] Whitney Electrode

(drawing dated 4/8/1991).”2 Sprague Report ¶ 55. Sprague stated

that more than one year before the filing date for the ‘988

patent, “the prior art Whitney Electrode specified operating

current and insert diameter values which resulted in a current

density of at least 1.2 x 105 amperes per inch2.” Id. ¶ 57. 

Sprague concluded that “[t]he electrodes described in the Whitney

Electrode drawing and in the ‘988 background are both intended

for use as plasma arc torches, have very similar operating

characteristics and share many design features.” Id. ¶ 58. 

For the first time, in response to Hypertherm’s motion for

partial summary judgment on ATTC’s affirmative defense of

invalidity as to the ‘988 patent, ATTC asserted that the ‘988

patent was anticipated by sales of ATTC’s Whitney electrode. To

support its claim, ATTC submitted invoices to show sales of the

Whitney electrode and the declarations of ATTC’s vice president,

Jeffrey K. Walters, and an ATTC employee, Daniel Walters, who

state that ATTC sold Whitney electrodes to customers before 1991.

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 3 of 13
4

ATTC represents that “[i]n response to concerns raised by

Hypertherm regarding the adequacy of the evidence of sales of

Whitney electrodes, ATTC made one last effort to locate invoices,

catalogues, or other evidence of sales or offers for sales of the

Whitney Electrode prior to the critical date.” Opp. at 6-7. 

That final effort, according to ATTC, turned up “several old

boxes located in the back of a storage space above ATTC’s

facilities, which inexplicably contained old invoices, . . .

[including] invoices related to sales of the Whitney Electrodes.” 

 Id. at 7. ATTC does not provide a date when the invoices were

found but agrees with Hypertherm that it initially produced 

invoices to Hypertherm on April 17, 2008, and then found more

invoices that were produced on May 15, 2008. 

Under the terms of the parties’ stipulation, which was

entered as a scheduling order in the case on January 5, 2007, the

parties were to complete production of documents in response to

discovery requests by January 22, 2007, and were to complete

supplementation of interrogatory responses by January 29, 2007.

All fact discovery closed on April 16, 2007. 

Discussion

Hypertherm contends that the sales invoices submitted to

support ATTC’s opposition to Hypertherm’s motion for summary

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 4 of 13
5

judgment on validity were not disclosed within the discovery

deadline. As a result, Hypertherm argues that under Federal Rule

of Civil Procedure 37(c)(1) the invoices, along with the

declarations submitted to authenticate them, must be stricken and

barred from use in this case. ATTC acknowledges that the

invoices were “recently produced” but argues that its late

disclosure was substantially justified or harmless.

A party “must supplement or correct its disclosure or

response: (A) in a timely manner if the party learns that in

some material respect the disclosure or response is 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).

Rule 37(c)(1) provides, in pertinent part, that “[i]f a party

fails to provide information . . . as required by Rule 26[] (e),

the party is not allowed to use that information . . . to supply

evidence on a motion, at a hearing, or at trial, unless the

failure was substantially justified or is harmless.” A party may

avoid sanctions under Rule 37(c)(1) by establishing substantial

justification for late disclosure of discovery materials or by

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 5 of 13
3While Federal Circuit law controls patent issues,

procedural issues that are not unique to patent law are reviewed

under the standard applied by the regional circuit, which is the

First Circuit here. See Dominant Semiconductors SDN. BHD v.

Osram GMBH, 524 F.3d 1254, 1260 (Fed. Cir. 2008). The Federal

Circuit holds that the imposition of discovery sanctions is not a

matter substantially related to patent law and that the law of

the regional circuit governs. Transclean Corp. v. Bridgewood

Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002).

6

showing that the delay in disclosure is harmless. See Gagnon v.

Teledyne Princeton, Inc., 437 F.3d 188, 191 (1st Cir. 2006).3

A. Timely Disclosure

Hypertherm contends that ATTC is barred from pursuing its

new theory that the ‘988 patent is invalid due to anticipation by

sale of the Whitney electrode because neither that theory nor the

evidence to support it was disclosed in response to Hypertherm’s

requests for production and interrogatories before the deadline

for fact discovery. ATTC asserts that Hypertherm had notice of

its anticipation by sale theory based on its disclosure of the

Whitney electrode drawing and contends that its expert disclosed

opinions on the theory of anticipation by sale in his report and

deposition. ATTC also faults Hypertherm for failing to uncover

the sale of the electrodes during depositions of its vice

president and expert witness.

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 6 of 13
7

“Once a disclosure is made, it must be kept current.” 

Macaulay v. Anas, 321 F.3d 45, 50 (1st Cir. 2003). “Since an

important object of these rules is to avoid trial by ambush, the

district court typically sets temporal parameters for the

production of such information.” Id. A party has a “continuing

responsibility . . . to investigate [its] causes of action” and

to comply with the deadlines set by the court. Gagnon, 437 F.3d

at 191. 

Disclosure of the confidential engineering drawing of a

Whitney electrode did not disclose evidence of sales of the

electrode. Sprague testified at his deposition that the drawing

alone does not show or suggest that the Whitney electrode was

ever produced or sold. Therefore, disclosure of the drawing did

not obviate ATTC’s obligation to disclose its factual evidence of

sales of the Whitney electrode before the deadline for fact

discovery. 

ATTC also contends that sales of Whitney electrodes were

disclosed by Sprague. ATTC’s references to Sprague’s expert

report pertain to the Whitney electrode drawing not to sales of a

Whitney electrode product. At his deposition, Sprague testified

that Walters told him in a telephone conversation that ATTC

manufactured the Whitney electrode and that ATTC “actually made

metal parts, shipped them out the door, and customers used them.” 

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 7 of 13
8

The deposition, however, was taken on July 19, 2007, after the

close of fact discovery, and further, ATTC did not disclose the

invoices at that time.

The record presented shows that ATTC failed to disclose,

before the discovery deadline, its evidence of invalidity of the

‘988 patent due to anticipation by sale. Therefore, ATTC did not

comply with the requirements of Rule 26(e).

B. Substantially Justified or Harmless

ATTC can avoid sanctions for late disclosure by showing that

the delay was substantially justified or is harmless. Fed. R.

Civ. P. 37(c)(1); Wilson v. Bradlees, 250 F.3d 10, 21 (1st Cir.

2001); accord Primus v. United States, 389 F.3d 231, 234 (1st

Cir. 2004). Substantial justification is determined based on

“whether [the party’s] rationale establishes justification for

his untimeliness.” Gagnon, 437 F.3d at 191. Harmlessness is

judged by considering “a multiplicity of pertinent factors”

including “the history of the litigation, the proponent’s need

for the challenged evidence, the justification (if any) for the

late disclosure, and the opponent’s ability to overcome its

adverse effects. Surprise and prejudice are important integers

in the calculation.” Id. In addition, the court considers the

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 8 of 13
4Statements made by counsel, unsupported by competent

evidence, do not suffice to establish these facts. See Lopez v.

Corporacion Azucarera de P.R., 938 F.2d 1510, 1515-16 n.11 (1st

Cir. 1991).

9

effect the late disclosure will have on the court’s docket. Id.

at 198. 

1. Substantial Justification

ATTC has not provided a clear or properly supported

statement of the circumstances under which the sales invoices

were found. ATTC explains that it began to search for more

evidence only “[i]n response to concerns raised by Hypertherm

regarding the adequacy of the evidence of sales of the Whitney

electrodes.” Opp. at 6. ATTC does not provide a date when the

search began or when the documents were found. It suggests that

either the sales invoices were not found until after the

discovery deadline or that its previous counsel had the invoices

in their possession but failed to disclose them to Hypertherm. 

ATTC has not cited to an affidavit or any other competent

evidence to establish when and how the documents were found.4 

In addition, ATTC’s former counsel’s failure to disclose

documents that are responsive to Hypertherm’s discovery requests

is a violation of Rule 26(e) and does not provide substantial

justification for the delay in disclosure. 

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 9 of 13
5As part of that argument, ATTC asserts that Hypertherm is

wrong about the date when it filed its motion for partial summary

judgment on patent invalidity, stating the motion was filed on

April 19, 2008, and the documents were disclosed on April 17,

2008. Hypertherm stated that ATTC disclosed the documents after

Hypertherm filed its motion for partial summary judgment. 

10

To the extent ATTC contends that Hypertherm is at fault for

failing to pursue further discovery to force disclosure of the

sales invoices, it is mistaken. Hypertherm requested such

evidence in its requests for production of documents and first

set of interrogatories. Thereafter, ATTC was obligated to

investigate to find the requested evidence in a timely manner and

to supplement its responses with any newly discovered evidence. 

ATTC failed to do so.

ATTC asserts that “[w]hile an earlier production of these 

documents would certainly have been preferable for both ATTC and

Hypertherm, under this set of facts, there can be no question

that this production was substantially justified.” Opp. at 7. 

The court disagrees. ATTC has not carried its burden of showing

substantial justification for its failure to disclose the sales

invoices within the time allowed.

2. Harmless

ATTC contends that Hypertherm has not demonstrated that it

is prejudiced.5 ATTC, however, bears the burden of showing that

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 10 of 13
Although Hypertherm filed its motion for summary judgment on

infringement on April 17, it filed its motion for partial summary

judgment on invalidity on April 18. 

11

its late disclosure is harmless. Wilson, 250 F.3d at 21. ATTC

also argues that the delay in disclosing the documents in this

case is harmless because the “recently produced evidence and

related declarations merely lend further support to a defense

theory that ATTC disclosed early and often, and to which

Hypertherm has already had the opportunity to respond.” Opp. at

10-11.

As is discussed above, disclosure of the confidential

Whitney drawing was not disclosure of invoices of sales of

electrodes made from the drawing. The difference is significant

because a patent is invalid if the invention was “described in a

printed publication in this or a foreign country or in public use

or on sale in this country, more than one year prior to the date

of the application for patent in the United States.” 35 U.S.C. §

102(b). A confidential drawing, without some commercial use or

exploitation of the product depicted in the drawing, does not

constitute public use for purposes of § 102(b). See Invitrogen

Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1381-82 (Fed. Cir.

2005). In the absence of the evidence of sales of the Whitney

electrode, which Hypertherm had requested during discovery,

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 11 of 13
12

Hypertherm lacked notice of ATTC’s new theory of anticipatory

sales.

The timing of the disclosure is also prejudicial. ATTC

waited until after discovery was closed and summary judgment

motions were being filed to disclose the new evidence. The

deadline for summary judgment motions on the infringement claims

and defenses has passed. To avoid prejudice caused by ATTC’s new

invalidity theory and evidence, discovery would likely have to be

reopened to address those issues, and Hypertherm would have to be

given the opportunity to file a motion for summary judgment to

address the new theory and evidence.

This case is one of the older cases on the docket. Trial is

now scheduled to begin on November 4, 2008. Pretrial materials

will be due at the end of September. The time necessary to

reopen discovery and provide a new period for filing motions for

summary judgment will delay trial. Therefore, ATTC’s delay in

disclosing its new evidence is not harmless.

C. Sanction

ATTC has not carried its burden to show that its late

disclosure is either substantially justified or harmless. 

Therefore, ATTC is precluded from using the evidence of sales of

Whitney electrodes that was disclosed to Hypertherm after the

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 12 of 13
13

close of fact discovery. The sales invoices with Bates Nos.

057853 to 057895 and those parts of the declarations of Jeffrey

K. Walters and Daniel Walters that address sales of Whitney

electrodes, submitted in support of ATTC’s opposition to

Hypertherm’s motion for partial summary judgment on patent

validity, are stricken and cannot be used for any purpose in this

case. 

Conclusion

For the foregoing reasons, the plaintiff’s motion to strike

and to preclude use of ATTC’s recently produced evidence

(document no. 219) is granted.

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

August 6, 2008

cc: Jill C. Anderson, Esquire

Jacob K. Baron, Esquire

Steven M. Bauer, Esquire

Seth M. Cannon, Esquire

Joseph A. Capraro, Jr., Esquire

Jeffery M. Cross, Esquire

Joseph T. Dattilo, Esquire

Ami D. Gandhi, Esquire

Jamie N. Hage, Esquire

Marc H. Kallish, Esquire

Rhett R. Krulla, Esquire

Jonathan A. Lax, Esquire

Richard C. Nelson, Esquire

W. Scott O'Connell, Esquire

Jeremy P. Oczek, Esquire

John M. Skeriotis, Esquire

Benjamin M. Stern, Esquire

Case 1:05-cv-00373-JD Document 280 Filed 08/06/08 Page 13 of 13