The opinion of the court was delivered by: Matthew F. Kennelly, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff Illinois Computer Research, LLC (ICR) has moved to strike twenty-five newly-disclosed witnesses identified in amended Rule 26(a)(1) disclosures that defendant Harpo Productions, Inc. (Harpo) served on April 30, 2010. For the reasons stated below, the Court grants ICR's motion in part.*fn1
This is a patent infringement suit, which ICR filed in December 2008. ICR contends that Harpo infringed U.S. Patent No. 7,111,252, entitled "Enhancing Touch And Feel On The Internet." Harpo denies that it infringed the patent. It also contends that the patent is invalid and that it is unenforceable because the inventor, Scott Harris, engaged in inequitable conduct during the prosecution of the patent. ICR also sued Sony Electronics, Inc., but it dismissed its claims against Sony in late July 2009.
1. The March 16, 2009 Scheduling Order
At the initial Rule 16(b) conference, held on February 25, 2009, the Court advised the parties that it intended to apply this District's not-yet-adopted Local Patent Rules (LPR).*fn2 As of the date of the Rule 16(b) conference, the LPR were in the final stages of the drafting process and had not yet been approved by the judges of this District. The LPR were later approved with some relatively modest changes and formally took effect in the fall of 2009.
The Court entered a scheduling order dated March 16, 2009 that required each party to make its Rule 26(a)(1) disclosures -- as supplemented by the LPR -- by March 11, 2009 (they had already made the disclosures at that point). The scheduling order also included dates for the parties to exchange initial and final contentions regarding infringement, invalidity, and unenforceability, and, following the final contentions, to exchange proposed constructions of potentially disputed terms of the claims of the patent in suit. The scheduling order also set schedules for briefing claim construction; for exchanging expert witness disclosures under Rule 26(a)(2) following a claim construction ruling; and for filing dispositive motions after the completion of expert depositions.
With regard to fact discovery, the March 16, 2009 scheduling order stated that "[f]act discovery shall commence on March 11, 2009 and shall be completed by October 28, 2009. Fact discovery may resume upon entry of a claim construction ruling and shall end forty-two (42) days after entry of the claim construction ruling." Pl. Mot., Ex. A (Mar. 16, 2009 Scheduling Order) ¶ 1a. The parties dispute the interpretation of this term of the scheduling order.
2. Harpo's and Sony's Initial Rule 26(a)(1) Disclosures
In its Rule 26(a)(1) disclosures served in early March 2009, Harpo disclosed only four persons that it contended were likely to have discoverable information: Josh London, Kalpesh Patel, Jennifer Sverns, and Gene Swytnyk. All four were associated with Harpo and were described as having information regarding web pages associated with the "Oprah's Book Club" portion of the Oprah.com website. See Pl. Mot., Ex. B at 1-2.
Sony's Rule 26(a)(1) disclosures identified seven witnesses: four Sony employees (Don Kossman, Joe Nakata, Christian Smythe, and Brenda Owens); Scott Harris, the inventor of the '252 patent; and two entities, Barnes & Noble and Fish & Richardson. The latter entities were identified as likely having information about the validity of the '252 patent. See Def. Resp., Ex. A.
Sony incorporated by reference Harpo's Rule 26(a)(1) disclosures, as well as ICR's. See id. at 1. Harpo, however, did not incorporate, adopt or otherwise reference Sony's Rule 26(a)(1) disclosures. See Pl. Mot., Ex. B.
As the Court has indicated, ICR dropped its claims against Sony in late July 2009. Following that date, Harpo did not amend or supplement its Rule 26(a)(1) disclosures to include the witnesses identified by Sony. In fact, Harpo did not amend its Rule 26(a)(1) disclosures at any time prior to the October 28, 2009 close of fact discovery, or thereafter, until just recently.
3. Modification of the Scheduling Order; the Claim Construction / Summary Judgment Ruling
In mid-October 2009, Harpo -- with ICR's concurrence -- asked the Court to decide claim construction in conjunction with summary judgment and to advance the summary judgment process so that it would precede expert disclosures and expert discovery. Harpo advised the Court that there were only a small number of significant claim construction issues and that the process it proposed would streamline matters. Harpo's motion sought a short extension of time for filing its opening claim construction brief so that it could file a summary judgment motion on that date, stating that this "will not prolong the overall schedule in this case in any material way, because the modified format suggested by Harpo will advance the Court's ultimate ruling on summary judgment." Unopposed Mot. to Modify Sched. Order ¶ 6. The Court agreed to the modification of the scheduling order.
In mid-November 2009, Harpo moved for summary judgment on the issue of infringement, and ICR moved for summary judgment on Harpo's inequitable conduct defense. The parties' papers on Harpo's motion addressed in detail the disputed claim construction issues.
On March 24, 2010, the Court issued a decision in which it construed all but one of the disputed claim terms and denied both Harpo's and ICR's motions for summary judgment. See Ill. Computer Research, LLC v. Harpo Productions, Inc., No. 08 C 7322, 2010 WL 1253973 (N.D. Ill. Mar. 24, 2010). The Court held a hearing on the remaining claim construction issue on May 10, 2010 and decided that issue a short time thereafter.
In the summary judgment ruling, the Court set the case for a status hearing on April 1, 2010 for the purpose of setting a trial date. The Court stated in the order that it was proposing a trial date of June 1, 2010.
4. The April 1, 2010 Status Hearing
At the April 1 status hearing, Harpo's counsel stated that Harpo would be ready for trial on the June 1 date the Court had proposed. ICR's counsel reminded the Court, however, that it had deferred expert discovery until after resolution of the summary judgment motions. The Court set deadlines of April 22, 2010 for Rule 26(a)(2) expert witness disclosures and May 13, 2010 for rebuttal disclosures, and it ordered that expert discovery be completed by June 3, 2010. The Court advised the parties that these were firm dates. See April 1, 2010 Tr. 7.
Because of the need to conduct expert discovery, the Court set the case for trial on July 26, 2010 rather than June 1 and set a date of July 1, 2010 for filing the final pretrial order. The Court also set a hearing date of May 10, 2010 for the last remaining claim construction issue.
During the extended discussion about scheduling at the April 1 status hearing, Harpo's counsel expressed no concern regarding the viability of the July 26 trial date. (Indeed, as the Court has indicated, Harpo's counsel said that Harpo would be ready even earlier, by the June 1 date the Court had proposed.) Harpo's counsel did not suggest at the hearing that Harpo needed to do further fact discovery. Harpo's counsel likewise did not hint that Harpo was considering supplementing its Rule 26(a)(1) disclosures.
5. Harpo's Amended Rule 26(a)(1) Disclosures
As indicated earlier, the Court issued its summary judgment / claim construction ruling on March 24, 2010. Thirty-seven days later, on April 30, 2010 (four weeks after the April 1 status hearing), Harpo served amended Rule 26(a)(1) disclosures. See Pl. Mot., Ex. C at 9.
Harpo's amended disclosures eliminated three of the four persons it had identified in the initial disclosures -- all but Josh London -- and named thirty-one witnesses that Harpo had not previously identified in its Rule 26(a)(1) disclosures. Not counting its four experts and two other persons to whom ICR does not object (Scott Harris and James Parker), Harpo identified twenty-five new persons or entities with discoverable information that Harpo now contends support its claims or defenses.
The twenty-five newly-disclosed persons or entities may be categorized as follows. (The Court notes that each listing of an entity may well entail multiple individual witnesses, as production of documents or service of a Rule 30(b)(6) notice might well reveal that more than one individual from each entity has pertinent information regarding the subjects in question.)
- Ten are persons associated with Harpo identified as having knowledge relating to the Oprah Book Club, the Oprah.com website, or the Oprah's Book Club portion of that site: Jill Adams, Laura Anderson, Carolyn Koller, Alice McGee, Robyn Miller, Garrett Moehring, Doug Pattison, Dianne Starzyk, Natalie Tareghian, Doug Weiner.
- Three are other persons or entities said to have information regarding the Oprah.com or Oprah ONLINE websites: the entity ...