UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Hypertherm, Inc.

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

Opinion No. 2009 DNH 024

American Torch Tip Company

O R D E R

American Torch Tip Company (“ATTC”) filed a motion in

limine, as part of its final pretrial filings, to exclude

evidence of infringement by recent modifications of accused

products. At the same time, ATTC notified Hypertherm, Inc. that

it would introduce drawings at trial of design changes to its

accused products which ATTC contends establish end dates for

infringement by the accused products. ATTC also provided a

supplemental interrogatory answer about its attempts to design

around the patents in suit and drawings of the new designs. In

response, Hypertherm filed a motion to preclude ATTC from using

its newly-disclosed drawings to establish infringement cutoff

dates.

ATTC argues that the modified products shown in its new

drawings cannot be accused in this litigation as infringing

products because they were developed in the normal course of

business after discovery closed. ATTC further argues that the

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new products can be used to show an end date of infringement. 

Hypertherm contends that ATTC cannot rely on the drawings that

were first disclosed on January 16, 2009, for any purpose in this

case.

The parties agree that in interrogatories Hypertherm

requested disclosure of products and versions of products that

ATTC contended did not infringe the patents in suit, including

ATTC’s attempts to design around the patents. ATTC maintains

that its disclosure of the drawings of its new designs, on

January 16, 2009, was merely a supplemental response as required

by Federal Rule of Civil Procedure 26(e). Hypertherm contends

that the disclosure was untimely and the evidence should be

excluded.

Rule 26(e)(1)(A) requires parties to supplement or correct a

previous discovery disclosure “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.” A

supplemental disclosure under Rule 26(e)(1)(A) is timely if it is

made as soon as possible. See, e.g., Malozienc v. Pac. Rail

Servs., 572 F. Supp. 2d 939, 943 (N.D. Ill. 2008); Walls v.

Paulson, 250 F.R.D. 48, 53 (D.C.C. 2008); Hummer v. BNSF Ry. Co.,

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2006 WL 3523752, at *2 (C.D. Ill. Dec. 6, 2006) (supplemental

disclosure made nine days after party became aware of evidence is

timely). In contrast, a supplemental expert report under Rule

26(e)(2) is due at the time pretrial materials are filed unless

the parties have agreed to a different schedule, as they did in

this case. 

The dates of last manufacture for the products listed in the

supplemental response range from August of 2008 back to January

of 2006. In the meantime, Hypertherm requested updated sales

information from ATTC of the accused products for the purpose of

calculating damages. ATTC provided the requested sales

information without indicating that it had new designs or

products which it now claims establish cut off dates for

infringement. ATTC offers no explanation of why it waited until

the deadline for final pretrial filings to supplement its

interrogatory answers with the new information. 

In addition, ATTC asks that it be allowed to use the

drawings at trial to show cut off dates of infringement for

purposes of limiting Hypertherm’s damages. As Hypertherm points

out, however, the drawings, by themselves, do not establish

infringement cut off dates. Instead, expert testimony would be

required to explain the changes the drawings purportedly show and

the effect of the changes on Hypertherm’s infringement claims. 

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ATTC lacks an expert witness to provide that information. 

Further, additional evidence would be needed to establish that

the infringing products or versions of products were not sold

after a particular date. Therefore, even if the drawings were

not untimely, they would not be admissible in the absence of

expert testimony.

Conclusion

For the foregoing reasons, the drawings disclosed by ATTC on

January 16, 2009, will not be admissible at trial for any

purpose. ATTC’s motion to exclude evidence of infringement

(document no. 422) is granted to the extent that the newlydisclosed drawings will not be used for any purpose at trial.

Hypertherm’s motion to preclude the use of the drawings (document

no. 448) is granted.

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

March 16, 2009

cc: Jill C. Anderson, Esquire

Jacob K. Baron, Esquire

Steven M. Bauer, Esquire

Lucas M. Blower, Esquire

Colin G. Cabral, Esquire

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Seth M. Cannon, Esquire

Joseph A. Capraro, Jr., Esquire

Christopher J. Carney, Esquire

Jeffery M. Cross, Esquire

Joseph T. Dattilo, Esquire

Maia H. Harris, Esquire

Marc H. Kallish, Esquire

Rhett R. Krulla, Esquire

Jonathan A. Lax, Esquire

Edward F. McCormack, Esquire

Richard C. Nelson, Esquire

W. Scott O'Connell, Esquire

Jeremy P. Oczek, Esquire

Richard D. Rochford, Jr., Esquire

David W. Ruoff, Esquire

John T. Shapiro, Esquire

John M. Skeriotis, Esquire

Benjamin M. Stern, Esquire

Wayne Tang, Esquire

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