Doctrine of Equivalents Opinion Excluded Where Plaintiff Failed to Comply with Disclosures Required by Scheduling Order

TransUnion Intelligence LLC ("TransUnion") filed a patent infringement action against SearchAmerica. After expert reports were served, SearchAmerica moved to exclude all references to the doctrine of equivalents and sought confirmation from TransUnion that they will not attempt to rely on a doctrine of equivalents theory for the remainder of the case.

In support of its motion, SearchAmerica argued that TransUnion should be prohibited from relying on the doctrine of equivalents infringement theory because the Scheduling Order required TransUnion to specify the details of such a theory in its claims charts.

In response, TransUnion maintained that because it pled the doctrine of equivalents in its Amended Complaint, it should be allowed to update its theory of the case after the Markman hearing, if necessary. The district court disagreed.

The district court explained that "[i][n light of the facts before it, the Court construes SearchAmerica's motion as one to exclude evidence as a sanction for failure to comply with the Scheduling Order. Fed. R. Civ. Pro. 16(f)(1)(C) ("On a motion or on its own, the court may issue any just orders, including those authorized by Rule 37(b)(2)(A)(ii)-(vii), if a party or its attorney [ ] fails to obey a scheduling order [ ]."); Fed R. Civ. Pro. 37(b)(2)(A)(ii) ("If a party [ ] fails to obey an order [ ] the court where the action is pending may issue further just orders [including] prohibiting the disobedient party from supporting or opposing designated claims or defenses, or from introducing designated matters in evidence.").

The district court then found that "TransUnion clearly did not abide by the Scheduling Order in this case because it made no mention of the doctrine of equivalents in its Claims Chart. TransUnion is thus prohibited from relying on the doctrine of equivalents for the remainder of this suit.

Transunion Intelligence LLC and Trans Union LLC v. SearchAmerica, Case No. 11-1075 (PJS/FLN) (D. Minn. Jan. 8, 2014)