ChromaDex Opposes Elysium's Invalidity Contention Amendment Proposal

UPDATE September 16, 2020:

The Court has allowed Elysium to amend its Invalidity Contentions to include its late-discovered prior art. So far, the Court has not in public expressed a reason for its decision:

__________________________________________ ChromaDex today filed its opposition to Elysium's letter motion request to amend its invalidity contentions to add an additional patent as prior art. We covered Elysium's motion to amend here. You can read ChromaDex's opposition letter here:

Opposition to Motion to Amend Invalidity Contentions

This is first-rate work by Covington & Burling. I can't imagine Elysium's motion getting granted.

ChromaDex says that Elysium only gets to amend if it shows good cause -- that a prior diligent search wouldn't have uncovered it. But, ChromaDex demonstrates, the '529 patent was cited as prior art in a number of patents that Elysium already cited to the Court. Therefore, although Elysium may not have appreciated the significance of the '529 patent, it cannot plausibly claim that it was not aware of the patent.

I don't think the Court even has discretion to allow this. If it did, as ChromaDex says, good cause to amend would be present in almost every case where an expert is retained following service of contentions. That can't be right.

ChromaDex:

"The ’529 patent, which Elysium’s motion alleges describes a compound that is “closely related” to the compound at issue in this case, has been readily available to the public since it issued in 1998. Elysium contends that it only recently became aware of this reference in connection with interviewing a new expert, but that contention is demonstrably false. The ’529 patent is cited on the face of a key prior art reference that was included in Elysium’s invalidity contentions. In addition, weeks before it served its invalidity contention in this matter Elysium submitted a different prior art reference to the Patent Office that discussed the ’529 patent. Presumably, what Elysium means to say is that it did not appreciate the purported significance of the ’529 patent until it spoke to its expert. But Elysium clearly was aware of the ’529 patent when it served its invalidity contentions in May, and its alleged failure to appreciate the significance of known prior art until recently does not constitute good cause to amend. If it did, good cause would be present in almost every case where an expert is retained following service of contentions.

"Per the Scheduling Order (D.I. 40), amendments to invalidity contentions may only be made “by order of the Court upon a timely showing of good cause.” D.I.40 at ¶7. Furthermore,requests to include new prior art are only to be granted absent “undue prejudice to the non-moving party” and only if the discovery is recent “despite earlier diligent search.” Id. A party moving to amend its contentions must establish diligence...

"Elysium argues that it should be allowed to amend its invalidity contentions to include the ’529 patent because it retained a new expert that brought the patent to its attention. Elysium’s attempt to throw mud in describing the circumstances surrounding its retention of a new expert is baseless, but more importantly, is irrelevant, because Elysium’s retention of a new expert has no bearing on its diligence in searching for prior art. It is well-established that the movant must diligently search for and submit relevant prior art, which is not impacted by a change in expert or even a change in counsel. "Critically, however, Elysium was aware of the ’529 patent when it served its invalidity contentions. Indeed, one of the primary prior art references relied on in Elysium’s invalidity contentions (U.S. Patent No. 6,337,065, “Jacobson”) cites the ’529 patent on its face. See Ex. A at 1. Presumably Elysium carefully reviewed the prior art included in its invalidity contentions, but regardless its own contentions make clear that it was aware of the ’529 patent, even if it failed to appreciate the purported significance of the reference. In addition, on May 13, 2020—two weeks before it served its invalidity contentions in this case—Elysium filed an Information Disclosure Statement with the Patent Office related to one of its own patent applications, disclosing European Patent No. 2,574,339 (“Huber”) to the examiner as relevant to prosecution and asking that the information be “expressly considered.” See Ex. B at 1, 3. Notably, the second paragraph of the Huber reference specifically identifies the ’529 patent. Ex. C at 2. Again, while Elysium may not have appreciated the alleged significance of the ’529 patent, it cannot credibly contend that it was not aware of it. As such, Elysium has not established diligence sufficient to show good cause..." Notice that ChromaDex does not address the substance of whether the '529 patent might constitute prior art that would render Dartmouth's intellectual property obvious. That's not on the table right now because the job right now is to not even have to waste time on that argument.

In any case, it is interesting to note -- and we learn here for the first time, because we have not seen the Invalidity Contentions -- that "immense scope" of Elysium's invalidity contentions includes obviousness arguments "based on 26 prior art references and innumerable distinct combinations of those references."

We'll have so much to blog about!