Accenture Global Services GmbH et al v. Guidewire Software Inc., No. 1:2007cv00826 - Document 483 (D. Del. 2010)
Court Description: MEMORANDUM OPINION. Signed by Judge Sue L. Robinson on 3/5/2010. (lid)
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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ACCENTURE GLOBAL SERVICES GMBH and ACCENTURE LLP, Plaintiffs, v. GUIDEWIRE SOFTWARE INC., Defendant. ) ) ) ) ) ) Civ. No. 07-826-SLR ) ) ) ) Richard L. Horwitz, Esquire, and David E. Moore, Esquire, of Potter, Anderson & Corroon, LLP, Wilmington, Delaware. Counsel for Plaintiffs. Of Counsel: James P. Bennett, Esquire, of Morrison & Foerster LLP, San Francisco, California; L. Scott Oliver, Esquire, Diana Luo, Esquire, Ruchika Agrawal, Esquire, Matthew Chen, Esquire and Douglas Chartier, Esquire of Morrison & Foerster LLP, Palo Alto, California. Jack B. Blumenfeld, Esquire and Julia Heaney, Esquire, of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Defendant. Of Counsel: Daralyn J. Durie, Esquire and Clement S. Roberts, Esquire, of Durie Tangri LLP, San Francisco, California. MEMORANDUM OPINION Dated: March 5, 2010 Wilmington, Delaware I. INTRODUCTION Plaintiffs Accenture Global Service GmbH and Accenture LLP (collectively, UAccenture" or "plaintiffs") brought this action against defendant Guidewire Software Inc. (UGuidewire" or "defendant") on December 18,2007. (0.1. 1) In their complaint, plaintiffs asserted that defendant infringes U.S. Patent No. 7,013,284 ("the '284 patent"), describing a computer program for developing component-based software capable of performing tasks relating to insurance transactions (such as claims processing). (0.1. 1) Plaintiffs also brought state law claims,1 as well as a claim for trade secret misappropriation. (Id.) On October 8, 2008, the court granted defendant's motion to dismiss the non-patent claims. (0.1. 75) Subsequently, and by stipulation of the parties, 2 plaintiffs filed an amended complaint re-alleging their trade secret misappropriation and tortious interference with business relations claims. (0.1.77; 0.1. 79) Plaintiffs filed a second amended complaint on December 17, 2008 adding a claim for infringement of plaintiffs' U.S. Patent No. 7,017,111 (the '111 patent). (0.1. 92) Defendant moved to dismiss the second amended tortious interference with business relations claim on January 9,2009; that motion was denied by the court. (0.1. 98; 0.1. 224) Defendant was granted leave to amend its counterclaims to add a fifth counterclaim alleging trade secret misappropriation. (0.1. 226) Defendant also maintains its originally-filed affirmative defenses for patent invalidity, unenforceability, 1Unfair competition and deceptive trade practices in violation of the Delaware Uniform Deceptive Trade Practices Act (UDTPA"), 6 Del. C. §§ 2531 et seq., common law unfair competition, and tortious interference with business relations. 2Pursuant to the scheduling order, February 15, 2009 was the final date to seek amendment of pleadings. failure to mark, unclean hands, and patent misuse, as well as counterclaims for declaratory judgments of non-infringement, invalidity, and unenforceability, as well as breach of contract. 3 (ld., 0.1. 10) ~iscovery has now ended. By memorandum order dated February 26,2010, the court denied without prejudice to renew defendant's motion for summary judgment that the '284 and '111 patents are invalid under 35 U.S.C. § 101 for claiming unpatentable subject matter. (0.1. 348; 0.1. 478) Currently before the court are several summary judgment motions filed by defendant. Defendant seeks judgments that: (1) the '284 patent is invalid as indefinite (0.1. 346); (2) the '284 patent is invalid because of an onsale bar (0.1. 352); (3) the '284 patent is invalid as anticipated or, in the alternative, obvious (0.1. 356); (4) plaintiffs' trade secret misappropriation claim is barred by the statute of limitations (0.1. 350); and (5) defendant does not infringe the '111 patent (0.1. 354). Also before the court is a motion by plaintiffs to strike defendant's on-sale bar arguments and related documents not identified in its invalidity contentions during discovery. (0.1. 381) II. BACKGROUND A. The Parties Plaintiffs and defendant are competitors in the consulting and technology services industry. Among other things, the parties provide computer software and consulting services to help design tools to aid insurance companies in their 3Guidewire's counterclaims of bad faith litigation as proscribed by Section 43(a) of the Lanham Act, sections 2532(a)(5), (8), & (12) of the OTPA, and the common law of unfair competition (claims V-VII) were dismissed by the court on October 8,2008. (0.1. 10; 0.1. 75) 2 management and processing of information. Plaintiffs provide the "Accenture Claim Components Solution" ("Claim Components") product suite and associated services; defendant's insurance claims management product is called "Guidewire Insurance Suite," which consists of "Guidewire ClaimCenter," "Guidewire PolicyCenter," and "Guidewire BillingCenter" platforms. B. "rhe Patents at Issue The '284 patent, entitled "Component based interface to handle tasks during claim processing," was filed as U.S. Patent Application No. 09/305,331 on May 4, 1999. The critical date is May 4, 1998, or one year before filing. Listed inventors are George V. Guyan ("Guyan") and Robert H. Pish ("Pish"); Accenture LLP is the named assignee. Generally, the '284 patent provides a computer program for developing component based software for the insurance industry. The program includes a data component, a client component, and a controller component. The client component is responsible for allowing users to edit tasks, add new tasks, and "achieve an insurance-related goal upon completion," as well as to generate a historical record of completed tasks. Claims 1 and 8 are independent claims. They read as follows: 1. A system for generating tasks to be performed in an insurance organization, the system comprising: an insurance transaction database for storing information related to an insurance transaction, the insurance transaction database comprising a claim folder containing the information related to the insurance transaction decomposed into a plurality of levels from the group comprising a policy level, a claim level, a participant level and a line level, wherein the plurality of levels reflects a policy, the information related to the insurance transaction, claimants and an insured person in a structured format; a task library database for storing rules for determining tasks to be completed upon an occurrence of an event; a client component in communication with the insurance transaction database configured for providing information relating to the insurance 3 transaction, said client component enabling access by an assigned claim handler to a plurality of tasks that achieve an insurance related goal upon completion; and a server component in communication with the client component, the transaction database and the task library database, the server component including an event processor, a task engine and a task assistant; wherein the event processor is triggered by application events associated with a change in the information, and sends an event trigger to the task engine; wherein in response to the event trigger, the task engine identifies rules in the task library database associated with the event and applies the information to the identified rules to determine the tasks to be completed, and populates on a task assistant the determined tasks to be completed, wherein the task assistant transmits the determined tasks to the client component. 8. An automated method for generating tasks to be performed in an insurance organization, the method comprising: transmitting information related to an insurance transaction; determining characteristics of the information related to the insurance transaction; applying the characteristics of the information related to the insurance transaction to rules to determine a task to be completed, wherein an event processor interacts with an insurance transaction database containing information related to an insurance transaction decomposed into a plurality of levels from the group comprising a policy level, a claim level, a participant level and a line level, wherein the plurality of levels reflects a policy, the information related to the insurance transaction, claimants and an insured person in a structured format; transmitting the determined task to a task assistant accessible by an assigned claim handler, wherein said client component displays the determined task; allowing an authorized user to edit and perform the determined task and to update the information related to the insurance transaction in accordance with the determined task; storing the updated information related to the insurance transaction; and generating a historical record of the completed task. The '111 patent, entitled "Insurance file note generation method and system," was filed as U.S. Patent Application No. 09/550,449 on April 14, 2000. The critical date is April 4, 1999. Named inventors are Guyan, Peter L. Treacy, Mark W. Moran, and Amy N. Shaheen; Accenture LLP is the assignee. Generally, the' 111 patent provides methods and systems for the automatic generation of file notes for insurance claims using predefined text. Provided components of the foregoing include a claim folder interface and a file note interface 4 (containing fields and selectable items). A claim handler is able to select a category and subcategory and provide short text associated with the selection in a predefined text area; a larger text area for free form text may also be provided. Claims 1, 9 and 13 are independent claims. Claims 1 and 9 are method claims, and read as follows: 1. A method for generating a file note for an insurance claim, comprising the steps of, executed in a data processing system, of: prefilling a first set of fields with information identifying a file note, said information comprising at least one suffix indicating a type of insurance coverage for a participant in a claim and identification of the participant, wherein the at least one suffix is preselected from one or more types of insurance coverage applicable to the claim; obtaining a selection of fields of a first set of fields from a user, the selection identifying information for a second set of fields; displaying in the second set of fields, the information identified by selection of field of the first set of fields; permitting the user to add data to a predefined text area related to each field of the second set of fields based on the selected fields; generating a file note that contains the first set of fields, the second set of fields, and the data in the predefined text area; identifying a level of significance of the file note; and storing the file note with the identified level of significance in a claim database including 'file notes associated with the claim. 9. A method for generating a file note for an insurance claim folder, comprising: providing on a display device a claim folder screen depicting attributes associated with a claim, the attributes comprising at least one suffix indicating a type of insurance coverage for a participant in the claim; permitting the selection of at least one attribute associated with a claim on the claim folder screen; providing on a display device a file note screen depicting the selected at least one attribute in a criteria section, and a text entry section, wherein the text entry section is based on the selected at least one attribute in the criteria section; receiving from a user information associated with the text entry section; generating the file note based on information received from the user; identifying a level of Significance of the file note according to information received from the user; and storing the file note with the identified level of significance in a searchable claim database, the claim database associating the file note being with a file note index indicating changes to the file note. In contrast, claim 13 is a system claim, as follows: 13. A system for generating a file note for an insurance claim, comprising: prefilling means for prefilling a first set of fields with information identifying a file 5 note, said information comprising at least one suffix indicating a type of insurance coverage for a participant in a claim and identification of the participant, wherein the at least one suffix is preselected from one or more types of insurance coverage applicable to the claim; obtaining means for obtaining a selection of fields of a first set of fields from a user, the selection identifying information for a second set of fields; displaying means for displaying in the second set of fields, the information identified by selection of field of the first set of fields; permitting means for permitting the user to add data to a predefined text area related to each field of the second set of fields based on the selected fields; generating means for generating a file note that contains the first set of fields, the second set of fields, and the data in the predefined text area; and identifying means for identifying a level of significance of the file note; and storing means for storing the file note with the identified level of significance in a claim database including file notes associated with the claim. III. STANDARD OF REVIEW A court shall grant summary judgment only if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). The moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita E/ec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.10 (1986). "Facts that could alter the outcome are 'material,' and disputes are 'genuine' if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct." Horowitz v. Fed. Kemper Life Assurance Co., 57 F.3d 300,302 n.1 (3d Cir. 1995) (internal citations omitted). If the moving party has demonstrated an absence of material fact, the nonmoving party then "must come forward with 'specific facts showing that there is a genuine issue for triaL'" Matsushita, 475 U.S. at 587 (quoting Fed. R. Civ. P. 56(e)). The court will "view the underlying facts and all reasonable inferences therefrom in the light most favorable to the party 6 opposing the motion." Pa. Coal Ass'n v. Babbitt, 63 F.3d 231, 236 (3d Cir. 1995). The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment; there must be enough evidence to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson v. Uberty Lobby, Inc., 477 U.S. 242, 249 (1986). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). IV. DISCUSSION A. Accenture's Motion to Strike and Defendant's Motion for Invalidity Based on the On-Sale Bar Defendant moves for summary judgment on its on-sale bar defense. Plaintiffs move to strike arguments and documents related to this defense that were not identified in defendant's invalidity contentions or, alternatively, arguments and documents not contained in defendant's initial invalidity or supplemental invalidity expert reports. Insofar as plaintiffs' arguments are informed by a discussion of the substance of defendant's invalidity claim, the court addresses the motions together. 1. Law regarding the on-sale bar Section 102{b) provides in relevant part that ural person shall be entitled to a patent unless ... the invention was ... 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). "The overriding concern of the on-sale bar is an inventor's attempt to commercialize his invention beyond the statutory term." Atlanta Attachment Co. v. Leggett & Platt, Inc., 7 516 F.3d 1361, 1365 (Fed. Cir. 2008) (citation omitted). There are two prongs to establishing an on-sale bar. With respect to the first, an accused infringer must demonstrate by clear and convincing evidence that there was a definite sale or offer for sale of the claimed invention prior to the critical date. Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale under § 102(b). In addition, to satisfy the on-sale bar, the subject matter of the sale or offer for sale must satisfy each limitation of the claim, though it may do so inherently. Inherency, however, may not be established merely by probabilities or possibilities. Lacks Industries, Inc. v. McKechnie Vehicle Components USA, Inc., No. 2008-1167, 300 Fed. Appx. 904, 906-07, 2008 WL 4962687, *2 (Fed. Cir. Nov. 21,2008) (internal quotations and citations omitted). In addition to public use, the invention must also be complete and "ready for patenting" at the time the offer was made. Pfaff v. Wells Elecs., Inc., 525 U.S. 55,67 (1998). An on sale bar determination requires that the claimed invention asserted to be on sale was operable, the complete invention claimed was embodied in or obvious in view of the device offered for sale, and the sale or offer was primarily for profit rather than for experimental purposes.[4] Section 102(b) may create a bar to patentability either alone, if the device placed on sale is an anticipation of the later claimed invention or, in conjunction with 35 U.S.C. § 103 [], if the claimed invention would have been obvious from the on-sale device in conjunction with the prior art. Keystone Retaining Wall Systems, Inc. v. Westrock, Inc., 997 F.2d 1444, 1451-52 (Fed. Cir. 1993) (internal quotations and citations omitted). Whether a product was placed on sale under 35 U.S.C. § 102(b) is a question of law based on underlying factual 4Evidence of experimental use may negate either prong. EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1351 (Fed. Cir. 2002). 8 determinations. Id. at 1451. 2. Defendant's on-sale bar defense Throughout the 1990s, plaintiffs offered consulting services to the insurance industry to make insurance claims processing more consistent and efficient. Such services included studying clients' claims operations and making recommendations to reduce inconsistencies in processing. Plaintiffs ultimately partnered with two companies, St. Paul Insurance ("St. Paul") and Reliance Insurance ("Reliance") to develop an automated system. Plaintiffs called the st. Paul projects "Salsa," "Claim Works" and "Astro" at different stages. The Reliance project was dubbed "Tango."5 It is defendant's position that these names all reflect a common project and sales or offers for sale of the same product, which today is referred to as "Claim Components." According to plaintiffs, "Salsa" and "Claim Works" were separate projects; "Salsa" was terminated in 1998 and "Claim Works," utilizing a new programming language. became the "Astro" project, which was also terminated. A new "Astro" project began in July 1998 which was extensively tested in the last few months of 1998. At the same time, project "Tango" was underway at Reliance. Testing was completed at Reliance in 1999. and this program became plaintiffs' Claim Components product. The '284 patent was filed thereafter. Defendant's on-sale bar defense is premised on two allegedly invalidating acts: (1) plaintiffs' sale of its invention to St. Paul; and (2) plaintiffs' offer to sell its invention to Reliance, which later purchased an embodiment of the claimed invention. (0.1. 377 at 5Defendant asserts that the Tango project was also synonymous with "Task Assistant Claims System" and "Millennium Claims." 9 1) Defendant compares the disclosures of several key pre-bar date technical specification and design documents to the specification of the '284 patent in an effort to demonstrate that the product sold and offered for sale meets the limitations of the asserted claims of the '284 patent. On April 27, 2009, plaintiffs served a supplemental response to defendant's interrogatory numbered 16, seeking the exact passages that plaintiffs contend describe and enable each limitation of the asserted claims of the '284 patent (as required by 35 U.S.C. § 112). (0.1. 362 at 3642-43) Plaintiffs provided two charts identifying "exemplary" support. (Id. at 3648 et seq.) Defendant has provided two of its own charts with its moving papers comparing the '284 patent specification to pre-bar date Accenture documentation. (0.1. 377, exs. A & 8) Defendant compares, on a limitationby-limitation basis, portions of the specification (with certain portions cited by plaintiffs as enabling) to disclosures in plaintiffs' documents. The first document is a "Component Description" for "Project Tango," the project codename the Reliance project (hereinafter, "the Component Description paper"). (0.1. 362 at 4357 et seq.) There appears to be no cover page for this document filed with the court. Only parts of the paper appear to have been provided, and each portion has a different footer date, ranging from April 30, 1998 to July 30, 1998. (0.1. 362, exs. 85-97) File metadata cited by defendant reveals a creation date of April 30, 1998. (0.1. 377, ex. A at 26, n.1; 0.1. 364, ex. 142) The Component Description paper provided definitions for several functionalities, including the "Event Processorrrask Engine" 10 functionality.S (0.1. 362 at 4357) Descriptions of the Claim Folder functionality and User Interfaces are also cited. 7 (ld. at 4376-78) As detailed in defendant's exhibits, a large amount of text from the as-filed specification appears verbatim in the Component Description paper. 8 The Component Description paper contains several, but not all, of the portions of enabling text for claims 1 and 8. 9 The enabling text for the added requirements of dependent claims 2-4,9-15, 18-20 and 22 is all contained verbatim in the Component Description paper. There is some correlation with respect to dependant claims 5,6, 16 and 21, but some of the cited portions of the '284 patent do not appear verbatim. For dependant claim 17, defendant cites disclosures contained in two documents outside of the Component Description paper. The first is a portion of what appears to be a presentation entitled "Leadership in Claims Workers Composition Simulation Script."10 (0.1. 362 at 4143) The second is another Project Tango document SThe date printed on the section describing the event processor/task engine is April 30, 1998. (0.1. 362 at 4357) 7The date printed on this section is April 29, 1998. (0.1. 362 at 4376-78) 8The court incorporates defendant's exhibits by reference. (0.1. 377, exs. A & B) With respect to claim 8, the primary difference is that the Components Paper does not contain the text of the '284 specification corresponding to the flow chart at Figure 13. The same applies for claim 1, however there are additional enabling portions of the '284 patent specification that are also not disclosed, relating to the server components (222), claim tree feature in the Claim Folder window, the Task Library Controller, and the Task Library component. lOThe only date on this document is a footer noting October 27, 2009. Defendant lists the document as "undated" in its table of contents. It appears as though the 2009 date may be the date the document was printed. 11 concerning "UI Design" (hereinafter, the "UI design paper").l1 (Id. at 4379 et a/.) Defendant also provides a comparison of the '284 patent specification with the Component Description paper that goes beyond those portions of the '284 patent specification cited by plaintiffs as enabling the asserted claims.12 (0.1.377, ex. B) A substantial amount of text appears verbatim in both documents. With respect to the actual offers for sale, defendant points to separate evidence. Specifically, defendant relies upon a series of contract documents between plaintiffs and St. Paul: (1) a February 8, 1995 consulting services agreement (hereinafter, the "St. Paul CSA") (0.1. 362, ex. 70 at 4129-37); (2) a June 16, 1997 letter agreement modifying the St. Paul CSA (Id., ex. 74 at 4190-98); and (3) a September 29,1997 letter confirming the ongoing collaboration on "Claim Works" (Id. at 4199-4202). (0.1. 377 at 8-10) With respect to Reliance, the key document is a Power Point® presentation on the "Millennium Claims System Release 1 Business Case," titled for "Reliance Insurance Company" and dated February 19, 1998 (hereinafter, the "Reliance presentation"). (Id., ex. 73 at 4156-89) 3. Plaintiff's motion to strike Plaintiffs assert that they were "ambushed" by the foregoing on-sale bar theory. 11The cited portion of the UI Design paper corresponds to a description of the "Injury Window," "ICD-9 Search Window" and "Disability Management Window" functionalities. (0.1. 362 at 4459) 12For claim 8, the corresponding portions are: '284 patent col. 83: 15-85:35; col. 103:59-105:63 (the Component Description presentation omits a paragraph corresponding to figure 13 in the patent); 105:64-107:17 (minus brief descriptions of Figs. 14 & 15). Other citations are included as correlating text relating to dependant claims. 12 Plaintiffs argue that defendant's on-sale bar summary judgment motion makes "new arguments" and documents not identified in discovery. (D.I. 382 at 2) The motion at bar comes on the heels of a contentious discovery process between the parties; the court intervened, on multiple occasions, to settle disputes related to production and privilege. A brief history of the relevant discovery follows. a. Discovery timeline The scheduling order entered by the court on June 26, 2008 provided that fact discovery would close November 21,2008 and expert discovery would be completed by September 26, 2009. (D.1. 57) Expert reports were due on September 17, 2009, opening claim construction briefs were due October 2, 2009, and summary judgment motions were due October 9,2009. (ld.) On March 19, 2009, the parties entered a joint stipulation amending the scheduling order pushing back the final date for document production (June 10, 2009), the close of fact discovery (August 12, 2009), and the close of expert discovery {November 30,2009).13 (0.1. 141) A second amended schedule was approved by the court on December 4, 2009, designating additional time for rebuttal expert reports (through December 14, 2009) and motion practice {commencing December 16, 2009).14 (0.1. 338) b. Defendant's identification of its defense Early on in fact discovery, on May 24, 2008, plaintiffs served a set of contention 13The court executed this proposed order on March 23, 2009, as reflected on the docket. 14A review of the docket indicates that depositions have been noticed (by defendant) through February 2010. 13 interrogatories including Interrogatory numbered 3, as follows: For each claim of the '284 patent, state all facts and evidence supporting any contention by Guidewire that the claim is invalid. under 35 U.S.C. §§ 102, 103 and/or 112, including but not limited to the identification of all prior art to the '284 patent and an explanation of why such prior art anticipates and/or renders obvious the invention in the '284 patent. (D.1. 383, ex. 1 at 6) Defendant did not provide a contention relating to the on-sale bar until its third supplemental response to plaintiffs' interrogatories, served September 24. 2009. In that response, defendant stated the following: [E]ach of the claims of the '284 patent is invalid under 35 U.S.C. § 102(b) because the invention was in public use or on sale in the United States more than one year prior to the date of the application for patent in the United States. Specifically, each of the claims of the '284 patent was ready for patenting on or before May 4, 1998, because Accenture had both (1) reduced the invention to practice or had drafted an enabling disclosure as of that date and (2) sold or offered the invention for sale to the St. Paul Companies and/or to Reliance. (D.1. 383, ex. 2 at 10) This response was not further supplemented. On October 16, 2009, defendant served a 238-page 15 amended expert report of William Kuebler ("Kuebler") relating to defendant's invalidity defenses. Under the heading titled "Lack of Enablement by Specific Portions in Specification Identified by Accenture in Reponse to Interrogatory No. 16," Kuebler stated: 59. I have also been informed that Guidewire contends that Accenture fully reduced the invention claimed in the '284 patent to practice more than a year before Accenture filed its patent application. I have been asked, however. to assume that Guidewire is shown to be incorrect in this assertion and to offer an opinion on [obviousness]. (D.1. 366, ex. 162 at 6717-18) Kuebler provided a supplemental expert report on November 30,2009 providing 15Excluding appendices of exhibits and cited prior art. 14 details regarding the on-sale bar defense, including the identification of many (but not all) documents cited in defendant's summary judgment motion. (D.1. 369, ex. 182) The majority of the documents cited in Kuebler's November 30 report were produced on April 24, 2009; six were produced in November 2008, and three in June and July 2009. (D.I. 383, ex. 4) Plaintiffs assert, and defendant does not challenge, that an additional 41 documents were cited in defendant's summary judgment motion. (D.1. 382 at 5) Twenty-six of these were produced in November 2008; the remainder were produced between January and June 2009. (D.1. 383, ex. 5) Plaintiffs were granted until December 29,2009 to serve their rebuttal report. (D.1. 380) c. Discussion It is plaintiffs' position that defendant breached its duty to amend its interrogatory response imposed by Fed. R. Civ. P. 26(e), reproduced below. Supplementing Disclosures and Responses. (1) In General. A party who has made a disclosure under Rule 26(a)-or who has responded to an interrogatory, request for production, or request for admissionmust 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; or (8) as ordered by the court. (emphasis added) Courts consider four factors in determining whether a party has breached its duty to amend a discovery response under Rule 26(e)(1): (1) whether there was a prior response; (2) whether the response became materially incorrect or incomplete; (3) whether the party knew that the response was incomplete; and (4) 15 whether the corrective information was otherwise made known to the other party through the discovery process or in writing. Tritek Tech., Inc. v. United States, 63 Fed. CI. 740, 746-47 (Ct. CI. 2005). A focus in past disputes has been whether a party has provided adequate notice of its legal contentions and their corresponding evidentiary bases. 16 See Boehringer Ingelheim Int'l GMBH v. Barr Labs. Inc., Civ. No. 05-700-SLR, 2008 WL 2756127, at *2 (D. Del. July 15, 2008). In this case, the court does not find defendant's interrogatory response incomplete. Defendant identified its on-sale bar theory and specified the two customer sales that formed the basis for its theory. Defendant also stated that plaintiffs had "drafted an enabling disclosure" as of the on-sale bar date. These assertions form the core of defendant's motion. Plaintiffs generally requested all "facts and evidence" supporting defendant's theories; it is not clear that defendant was required to identify 16Violations of Rule 26(e) are addressed by Rule 37(c)(1) which provides, in pertinent part: If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless. In determining whether a failure to disclose is harmless, courts consider such factors as: (1) the importance of the information withheld; (2) the prejudice or surprise to the party against whom the evidence is offered; (3) the likelihood of disruption of the trial; (4) the possibility of curing the prejudice; (5) the explanation for the failure to disclose; and (6) the presence of bad faith or willfulness in not disclosing the evidence (the "Pennypack factors"). See Konstantopoulous v. Westvaco Corp., 112 F.3d 710, 719 (3d Cir. 1997) (citing Meyers V. Pennypack Woods Home Ownership Ass'n, 559 F.2d 894, 904-05 (3d Cir. 1977». 16 every production document supporting its case (as it would do in pre-trial disclosures).17 Even if this level of detail is fairly within the scope of plaintiffs' contention interrogatory, Rule 26(e)(1) excludes parties from supplementing requests with information that has already been communicated to an adversary during the course of discovery. There is sufficient evidence of record that defendant identified the majority of the documents it now relies upon during the discovery process. For example, as plaintiffs acknowledge, nearly all of the documents cited in defendant's summary judgment brief were identified during depositions of plaintiffs' witnesses. (0.1. 383, ex. 5) This includes the Component Description presentation and the UI design paper. 18 The June 16, 1997 letter amendment to the St. Paul CSA and Reliance presentation were also marked as evidence. 19 Additionally, defendant provides numerous email exchanges between counsel indicating that the documents relating to St. Paul and Reliance were the subject of discovery disputes; defendant did not conceal its intention to utilize those documents 17Although it is not relevant to whether defendant's responses were adequate in the first instance, the court notes that there is no indication that, by letter or otherwise, plaintiffs sought to compel more detailed responses from defendant between September 24, 2009 and the close of discovery. 18Admitted during the depositions of Jackowski (exhs. 11 & 20). The "Leadership in Claims Workers Compensation Simulation Script" does not appear to have been admitted in deposition, however, this relates only to one portion of dependant claim 17. 19Admitted during the depositions of Hoeschen (ex. 7) and Guyan (ex. 45). respectively. There is no indication that the actual St. Paul CSA or September 1997 letter were marked. 17 for its on-sale bar defense. 2o Further, at the November 4, 2009 discovery conference, defendant reiterated that it was still seeking "some specific ... contract documents entered into between Accenture and Reliance ... that also form the basis of our onsale bar defense." (Id., ex. P at 35:1-8) In view of the foregoing, the court is persuaded that plaintiffs had notice of the specific documents upon which defendant now relies. 21 The parties, having elected to extend the discovery schedule nearly to the dispositive motions deadlines, encountered difficulties in deposing each other's experts. During a telephone conference with the parties on January 12, 2010, the court determined that no deposition testimony would be considered in connection with summary judgment briefing. (D.I. 425, ex. U at 9:22-25) Plaintiffs were afforded additional time to prepare a rebuttal to Kuebler's report, and were not otherwise prejudiced in discovery.22 Therefore, plaintiffs' motion to strike is denied and the court 20See, e.g., D.L 425, ex. G (custodian was "the QA partner for both Reliance and St. Paul and is therefore likely to have discoverable information about the on-sale bar issues") (3/2/09); id., ex. H (requesting information regarding offers for sale of "Salsa, Claim Works and Claim Components" prior to the critical date) (4/6/09); id. , ex. I at 4 (requesting the "Requirements Engagement Letter" with Reliance "given its centrality to our on-sale bar defense") (5/27/09) 21Defendant asserts that it was not obligated to limit its summary judgment arguments to those documents cited in Kuebler's November 30th report, insofar as it does not plan to introduce all of its on-sale bar evidence through Kuebler at trial. (D.L 425 at 14-15) Defendant's ability to introduce evidence through Kuebler is, of course, limited to information contained in his reports. 22Plaintiffs argue that defendant engaged in undue delay insofar as it had all the relevant documents by July 2009. (D.L 382 at 11) Defendant supplemented its interrogatory response in September 2009. Absent additional information, for example, the dates and the sizes of plaintiffs' document productions, the court has no basis upon which to find unreasonable delay. Having pushed the discovery deadlines nearly to the dispositive motion dates, both parties should have anticipated short periods in which to prepare rebuttal cases. Neither party had any advantage in this regard. 18 turns now to the merits of defendant's motion for summary judgment. 4. Merits of defendant's motion As indicated previously, defendant relies on different evidence with respect to the offer-for-sale and ready-for-patenting prongs of the on-sale bar inquiry. In its exhibits in support of its motion, defendant compares the text of the Component Description paper (a Reliance document) to that of the '284 specification to show that what was allegedly offered for sale was the invention (and ready for patenting at that time). With respect to the offer to Reliance itself, defendant relies on the Reliance presentation. This presentation does not contain the same detailed description as the '284 patent specification; rather, it is a typical business document summarizing the "Millennium Claims" technology, costs, savings, and the like. It is defendant's position with respect to St. Paul that plaintiffs developed the claimed software (described in the Component Description presentation) while under contract with St. Paul. (0.1. 377 at 8 & ex. 8) Defendant's focus is primarily on the Accenture-St. Paul relationship; less information is provided with respect to the "Salsa" and "Claim Works" projects. Defendant asserts that Claim Components was sold under the "Claim Works" name to St. Paul, but provides no significant comparison of "Claim Works" to the asserted claims. For this reason, defendant has not provided clear and convincing evidence that "Claim Works" met all of the limitations of an asserted claim. The court need not evaluate defendant's evidence with respect to whether an offer or a sale occurred. Plaintiffs argue the following in opposition to defendant's motion: (1) the I i f contracts with both clients were for consulting services only, not sales of software; (2) 19 I ~ t , I > the Reliance presentation was "mere marketing"; and (3) there are factual disputes regarding when the presentation was provided to Reliance. The first two of these arguments are far from convincing. Plaintiffs' counsel have (on multiple occasions) conceded that an embodiment of the '284 patent was sold to both companies. (D.1. 427, exs. A & B) Plaintiffs' own declarant characterized the presentation to Reliance as a "sales pitch."23 (D.1. 423 at ~ 18) The critical date is May 4, 1998. Both parties debate the creation date for the critical Reliance documents based on available metadata. As noted previously, defendant provides documentation indicating that the Components Description paper was created on April 30, 1998, despite displaying a footer date of July 30, 1998 in some sections. (D.1. 364, ex. 142 at 5535) The Reliance presentation is dated February 19, 1998 on its face; plaintiffs assert that the metadata proves that the presentation was last modified on September 16, 1998. (D.1. 421, ex. 11) The same summary of metadata, however, shows a "created ate" of January 13, 1998 - before the critical date. (Id.) It is not clear what changes were made to either document, if any, from their creation dates onwards and on what date(s) any such changes were made. All that the 23The purpose of plaintiffs' consulting agreements were to co-develop software for each insurance company. Plaintiffs were paid for their efforts. A June 16, 1997 letter agreement between plaintiffs and St. Paul addressed the fruits of this collaboration: intellectual property rights belonged to plaintiffs, while "Claim Works" would belong to St. Paul. (D.1. 362, ex. 74) "Claim Works" development and integration were generally considered "deliverables" under this contract. It is plaintiffs' position that it did not intend to be bound by the pitch to Reliance. (D.I. 423 at ~ 18) Plaintiffs' intent is irrelevant under the contract laws; if a contract could have resulted from plaintiffs' offer, it may be the subject of the on-sale bar defense. See Lacks Industries, Inc., 2008 WL 4962687 at *2. The court need not issue a finding in this regard in view of other factual disputes of record. 20
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