EXPRESS MOBILE, INC.,
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`Plaintiff,
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`GODADDY.COM, LLC,
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`Defendant.
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`Civil Action No. 1:19-cv-01937-MFK
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`Case 1:19-cv-01937-MFK-JLH Document 261 Filed 08/08/22 Page 1 of 53 PageID #: 38401
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`MEMORANDUM OPINION AND ORDER
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`MATTHEW F. KENNELLY, District Judge:
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`Express Mobile, Inc. has sued GoDaddy.com, LLC for infringement of five
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`patents: U.S. Patent No. 6,546,397 (the '397 patent); U.S. Patent No. 7,594,168 (the
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`'168 patent); U.S. Patent No. 9,063,755 (the '755 patent); U.S. Patent No. 9,471,287
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`(the '287 patent); and U.S. Patent No. 9,928,044 (the '044 patent). The first two patents
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`(collectively, the "Web Design Patents") claim a browser-based tool for building
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`websites. The remaining patents (collectively, the "Web Component Patents") are
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`directed to tools for displaying content on mobile devices. Express Mobile contends
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`that two of GoDaddy’s products—the Website Builder (WSB) and Managed WordPress
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`(MWP)—infringe numerous claims of the asserted patents.1
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`GoDaddy has moved for summary judgment on all of Express Mobile’s claims
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`and additionally seeks the exclusion of certain testimony by two of Express Mobile’s
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`1 Express Mobile contends that GoDaddy infringes claims 1, 2, 3, 11, and 37 of the ‘397
`patent; claims 1, 2, and 3 of the ‘168 patent; claims 1, 3, 12, 16, and 22 of the ‘755
`patent; claims 1 and 13 of the ‘287 patent; and claims 1, 11, 13, 17, and 19 of the ‘044
`patent.
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`

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`expert witnesses—Dr. Kevin Almeroth and Walter Bratic. Express Mobile has moved
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`for partial summary judgment on certain issues and to exclude certain expert opinions of
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`David Perry. While these motions were being briefed, the parties each filed an
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`additional motion to strike regarding evidence submitted for the first time during
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`summary judgment. In this opinion, the Court rules on all four of these motions and sets
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`forth its construction of certain disputed claim terms.
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`Background
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`A.
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`The asserted patents
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`
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`There are two families of patents at issue in this case. The Web Design Patents
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`claim a browser-based tool for building websites. The two patents share the same
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`specification, which describes a method of website design where a web designer can
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`make selections on various menus, and the system can preview what the page will look
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`like. To do this, attributes of objects on a website (for example, fonts) are stored in an
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`external database. When an end user browses on the website, the user's browser
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`downloads a "run time engine" that reads the database and uses that data to generate
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`the website.
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`In contrast, the Web Component Patents are directed to displaying content on
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`mobile devices, such as smartphones. The Web Component Patents relate to two
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`concepts that allow web designers to integrate third-party web services into their
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`websites. First, the patent family discloses an authoring tool that generates two sets of
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`code, a device-independent Application and a device-specific Player. Second, the
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`patents disclose an authoring tool that allows for integration of web services into the
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`Application and Player.
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`2
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`B.
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`The accused products
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`Two GoDaddy products are at issue in this case. The WSB is a browser-based
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`website creator, designed to allow users with little to no website design experience to
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`quickly create and publish a website. The MWP, in contrast, targets more advanced
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`users. It comprises a set of custom functionalities that GoDaddy has added to
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`WordPress, an open-source (i.e. free) platform for creating websites. Both the WSB
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`and MWP allow for incorporation of features, such as YouTube videos or embedded
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`Twitter feeds, into a user's website. GoDaddy provides several free themes for use in
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`designing the website, but users can also buy third-party themes for use with the MWP
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`platform.
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`C.
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`The instant suit
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`Express Mobile filed this lawsuit against GoDaddy on October 11, 2019. The
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`case was assigned to Judge Richard Andrews. On April 8, 2021, the Court held a
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`Markman hearing to address several disputed terms of the asserted patents. At the
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`hearing, the Court directed the parties to submit supplemental briefing on claim
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`construction issues pertaining to the terms "virtual machine" and "Player." On June 1,
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`2021, the Court issued an order construing the other disputed claim terms. Express
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`Mobile, Inc. v. GoDaddy.com, LLC, No. 19-1937-RGA, 2021 WL 2209868 (D. Del. Jun.
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`1, 2021).
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`On November 17, 2021, both parties filed combined summary judgment and
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`Daubert motions. During briefing, each party filed an additional motion to strike
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`evidence that it contended was disclosed for the first time during summary judgment.
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`The case was subsequently reassigned to the undersigned District Judge.
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`3
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`Discussion
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`This opinion concerns four motions and two disputed claim terms. The Court
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`starts by construing the disputed claim terms. It then addresses the parties’ motions to
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`strike. Lastly, the Court rules on the parties’ combined summary judgment/Daubert
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`motions.
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`A.
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`Claim construction
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`"[T]he claims of a patent define the invention to which the patentee is entitled the
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`right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
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`1111, 1115 (Fed. Cir. 2004). During claim construction, a court is to construe the words
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`of a claim in accordance with their "ordinary and customary meaning," namely "the
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`meaning that the term would have to a person of ordinary skill in the art in question at
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`the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
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`2005). Sometimes, the meaning of a term is not immediately apparent, and a court will
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`need to look to other sources to determine "what a person of skill in the art would have
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`understood disputed claim language to mean." Innova, 381 F.3d at 1116. These
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`sources include "the words of the claims themselves, the remainder of the specification,
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`the prosecution history, and extrinsic evidence concerning relevant scientific principles,
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`the meaning of technical terms, and the state of the art." Id.
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`1.
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`"Virtual Machine"
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`a.
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`Express Mobile's proposed constructions:
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`i.
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`ii.
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`"software that emulates a physical machine"; or
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`"software that emulates computing functionality"
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`b.
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`GoDaddy's proposed construction:
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`4
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`c.
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`i.
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`"software that emulates a physical processor"
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`The Court's construction:
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`i.
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`"software that emulates computing functionality"
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`The parties dispute the meaning of the term "virtual machine" in the '397 patent.
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`The '397 patent claims "[a] method to allow users to produce Internet websites on and
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`for computers having a browser and a virtual machine capable of generating displays . .
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`. ." '397 patent at 65:44–46. The invention discloses a "run time file," "where said at
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`least one run time file utilizes information stored in said database to generate virtual
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`machine commands for the display of at least a portion of said one or more web pages."
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`Id. at 65:66–66:2.
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`The construction the Court adopts—"software that emulates computing
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`functionality"—is consistent with the patent's claim language and specification. The
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`patent is directed toward software that emulates computing functionality, specifically,
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`functionality related to the generation of website displays. See, e.g., id. at 65:44–46; id.
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`at 65:66–66:2. As Express Mobile's experts Bhuvan Urgaonkar and Glenn Weadock
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`explain, the claim language reflects the fact that the virtual machine is used to render
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`and display websites within a browser. Dkt. no. 66-1, ex. 2 ¶ 26; dkt. no. 66-13, ex. 2L
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`¶¶ 38.
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`GoDaddy's proposed construction is too narrow. The claims and shared
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`specification indicate that the term "virtual machine" was meant to be interpreted
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`broadly. For example, the specification confirms that virtual machines can support a
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`variety of different programming languages, not just Java, as GoDaddy contends. See
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`'397 patent at 11:5–8 (stating that the required functionality "wa[s] implemented entirely
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`5
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`in JAVA (or any other browser-based full featured programming language)") (emphasis
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`added). And although the Java Virtual Machine is the only virtual machine listed in the
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`specification, this merely provides an example of a virtual machine and does not limit
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`the claim scope to only such a virtual machine. It is generally inappropriate to use the
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`preferred embodiment outlined in the specification to limit the scope of a patent claim.
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`Acumed LLC v. Stryker Corp., 483 F.3d 800, 805 (Fed. Cir. 2007) (noting that it is
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`improper to "import a feature from a preferred embodiment into the claims").
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`GoDaddy contends that "virtual machine" is limited to processor functions
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`because the specification describes an interaction between the virtual machine, run time
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`engine, and database where the virtual machine executes processor-like commands
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`from the other two. But nothing in the claims indicates that this is the only function of a
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`virtual machine. Instead, the claim language repeatedly refers to the virtual machine as
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`being capable of generating displays. It would be inappropriate to use another term in
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`the patent, namely "run time engine," to narrow the ordinary meaning of virtual machine.
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`In addition to being supported by the language of the claims and specification,
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`the Court's adopted construction is consistent with the prosecution history. Dr.
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`Urgaonkar emphasizes that the term was meant to have a broad scope and that the
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`patentability of the invention was not dependent on it possessing a particular kind of
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`virtual machine. Dkt. no. 66-13, ex. 2L ¶ 43. GoDaddy disagrees, arguing that it was
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`the specific processor-like interactions between the virtual machine and the run time
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`engine that distinguished the patented invention from the prior art. The prosecution
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`history suggests otherwise, however. The prior art also disclosed use of a virtual
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`machine—specifically the Java Virtual Machine. As such, the addition of the term virtual
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`machine could not have distinguished the patents from the prior art.
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`
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`The Court's construction is also supported by extrinsic evidence of what a person
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`of ordinary skill in the field would have understood the term to mean. Express Mobile
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`provides a variety of evidence to establish that, as of the priority date, the term virtual
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`machine was understood to refer to several different kinds of software. See dkt. no. 120
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`at 8–13. Express Mobile cites dictionary definitions, lecture notes, and textbook
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`entries—all of which support a broad construction of the term that encompasses more
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`than processor-like virtual machines. Id.
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`
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`GoDaddy makes several objections to Express Mobile's evidence. Some of
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`these have merit. For example, the Court agrees that the lecture notes and any
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`evidence drafted after the priority date are irrelevant to the claim construction analysis.
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`It does not agree, however, that Express Mobile's evidence demonstrates that the
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`meaning of "virtual machine" was "all over the map" and had no well-known meaning in
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`1999. Id. at 28. Although the evidence does show that the definition was broad, it does
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`not show that the term was unclear. Considering all of the relevant extrinsic evidence,
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`the Court concludes that, in 1999, virtual machines were understood to come in many
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`different types but were all understood to emulate computing functionality.
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`GoDaddy makes three final arguments against Express Mobile's (and the
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`Court's) construction. First, GoDaddy argues that the construction assumes that a
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`virtual machine is the same as the separately claimed browser. Not so. As Express
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`Mobile explains, the patent discloses a virtual machine that works with the browser to
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`generate a display. Specifically, the virtual machine enhances browsers that do not
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`support certain kinds of programming languages. So, although the two are related, the
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`construction does not assume they are the same.
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`Next, GoDaddy argues that Express Mobile's construction inappropriately claims
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`innovations that were developed after the patents were issued. This argument,
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`however, misinterprets the adopted construction. Express Mobile's evidence shows
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`that, at the priority date, there were many different kinds of virtual machines. Any of
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`these virtual machines (and others developed after the priority date) could be used in
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`the patented invention. But compatibility with newer-developed virtual machines does
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`not amount to a patent of those virtual machines. As Express Mobile explains, if
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`anything it "underscore[s] that the virtual machine in the '397 patent is nothing more
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`than an off-the-shelf component that is used to properly display the claimed functionality
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`within the browser." Dkt. no. 120 at 48.
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`GoDaddy's final argument is also unpersuasive. It contends that the Court's
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`construction renders "virtual machine" a so-called nonce word, and as such, the Court
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`must limit the term to a specific kind of virtual machine, namely, the Java Virtual
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`Machine. Under patent law, claims involving nonce words are means-plus-function
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`claims that must meet the additional requirements in 35 U.S.C. § 112. See Williamson
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`v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). When considering a
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`means-plus-function claim, a court must identify both the claimed function and the
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`corresponding structure in the written description for performing that function. Id.
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`GoDaddy contends that there is no claimed structure in the construction "software that
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`emulates computing functionality" and thus the claim must be confined to the Java
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`Virtual Machine. The Court disagrees. Its adopted construction of "virtual machine"
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`does not render it a nonce word. First, as previously explained, the term had a well-
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`8
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`established meaning as of the priority date and would have been understood as such by
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`a person of ordinary skill in the field. Additionally, the adopted construction provides
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`sufficient structure through the use of the word "software" and also explains what the
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`software does, namely "emulates computing functionality." See, e.g., WhitServe LLC v.
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`GoDaddy.com, Inc., 65 F. Supp. 3d 317, 321 (D. Conn. 2014) (noting that "[software] is
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`a noun with a specific structural meaning, defining the set of coded instructions and
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`programs governing the operation of computer hardware").
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`2.
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`"Player"
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`a.
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`Express Mobile's proposed construction:
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`i.
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`"software code that facilitates the execution of an application
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`on a device"
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`b.
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`GoDaddy's proposed constructions:
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`i.
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`"device-specific code which contains instructions of a device
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`and which is separate and independent from the Application"
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`ii.
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`"device-specific code which contains instructions for a device
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`and which is separate and distinct from the Application"
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`c.
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`The Court's construction:
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`i.
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`"device-specific code which contains instructions of a device
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`and which is separate from the Application"
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`The parties dispute the meaning of the term "Player" as it appears in the '044
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`patent. There are two points of disagreement. First, the parties dispute whether
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`"Player" refers to device-specific code in the '044 patent. They agree that the term
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`when used in the '755 and '287 patents refers to device-specific code, but Express
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`9
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`Mobile contends that the term as used in the '044 patent is different and does not
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`require device-specific code. Second, the parties' constructions differ in that GoDaddy's
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`constructions state that the Player and Application are either "separate and
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`independent" or "separate and distinct," whereas Express Mobile's construction does
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`not require separation of the Player and Application.
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`On the first issue, the Court concludes that "Player" in the '044 patent refers to
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`device-specific code. The issue of whether "Player" necessarily refers to device-
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`specific code previously came up in a related case, Shopify Inc. v. Express Mobile, Inc.,
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`CA No. 19-439-RGA, 2020 WL 3432531 (D. Del. June 23, 2020). In adopting the same
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`construction as it does here, the Court (Judge Andrews) concluded that "a person of
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`ordinary skill in the art, looking at this intrinsic evidence as a whole, would understand
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`the Player to be 'device-specific.'" Id. at *6. The Court noted that the shared
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`specification of the Web Component Patents repeatedly recites a Player with device-
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`specific instructions. Id. at *5 (citing the '755 patent at 5:8-24; 23:43-46; 33:12-15;
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`33:26-28).
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`Additionally, the Court in Shopify found that "the applicant made 'repeated and
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`consistent remarks' indicating that the Player was device-specific" during patent
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`prosecution. Id. at *6 (quoting Personalized Media Commc'ns, LLC v. Apple Inc., 952
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`F.3d 1336, 1340 (Fed. Cir. 2020)). For example, the patentee stated:
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`One embodiment is an authoring tool that generates files which together
`provide content over a network. The files include a Player (sometimes
`referred to herein as a "first code") specific to each device (that is, the
`code is "device-dependent") and an Application (sometimes referred to
`herein as a "second code") that is device-independent.
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`Id. (citation omitted). The patentee's statement suggests that he believed the
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`10
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`device-specific nature of the Player to be a central component of the invention's
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`patentability. This further supports the Court's adopted construction. See
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`Personalized Media, 952 F.3d at 1340 ("[A] applicant's repeated and consistent
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`remarks during prosecution can define a claim term by demonstrating how the
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`inventor understood the invention.").
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`Express Mobile argues that the '044 patent specification supports its
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`construction, citing two passages. The first passage, in its entirety, reads: "In one
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`embodiment, one of the codes is a Player, which is a thin client architecture that
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`operates in a language that manages resources efficiently, is extensible, supports a
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`robust application model, and has no device specific dependencies." '044 patent at
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`1:55–67 (emphasis added). Express Mobile contends that the phrase "has no device
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`specific dependencies" refers to the Player, lending support to its contention that a
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`Player need not be device specific. GoDaddy disagrees. It contends that "has no
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`device specific dependencies" refers to "thin client architecture" and does not suggest
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`that a Player can be device-independent. Both interpretations are plausible
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`grammatically, and neither party provides the Court with a sufficiently persuasive reason
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`to choose one interpretation over the other. As such, the Court gives this language little
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`weight and looks instead to the other language in the claims and specification.
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`The second passage that Express Mobile cites is "The Player may include code
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`that is device-specific . . . ." '044 Patent at 6:14–16. The Court agrees with Express
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`Mobile that the patent's use of the term "may" instead of "must" lends some support to
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`Express Mobile's construction, but it is important not to overstate its significance. The
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`drafter's intention behind the word "may" is less than clear. It could be the result of
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`11
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`sloppy drafting; it could have no intended meaning at all. Either way, the Court finds
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`that this "single reference . . . is not enough to override the repeated references in the
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`prosecution history and the specification to the 'device-specific' or 'device-dependent'
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`Player." Shopify, 2020 WL 3432531, at *6. On balance, the claims, specification, and
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`prosecution history of the patents indicate that "Player" must be device specific.
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`Express Mobile also makes several arguments contending that the claims,
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`specifications, and prosecution history of the '755 and '287 patents should not be used
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`to interpret the '044 patent. It identifies three distinctions between the first two patents
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`and the third that it contends justify a different construction for the disputed term. First,
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`Express Mobile points to the fact that the claims of the '044 patent do not recite "Player"
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`as device-dependent code, whereas the claims of the '755 and '287 patents do. The
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`prosecution history, however, shows that this omission was not meant to change the
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`meaning of the patents. When the claims were amended to omit the "device-
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`dependent" language, the patentee claimed that this was "[n]o new matter." Dkt. no.
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`120, ex. 10D at XMO–GD00003351. Additionally, the ‘044 patent claims do not state
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`that the Application is "device-independent" code, yet both parties agree that the
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`Application is device-independent code. See '044 patent at 38:20–28. The Court thus
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`concludes that the omission of "device-dependent code" is not meant to suggest that
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`the Player can be device-independent.
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`Second, Express Mobile argues that the patents should be interpreted differently
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`because the '755 and '287 patents use the term "registry," whereas the '044 patent uses
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`the term "database." This is not a significant difference. The function of a database
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`and registry are the same, the information in each is the same, and Express Mobile
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`12
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`concedes that a registry can be a database.
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`Lastly, Express Mobile contends that the difference in capitalization use between
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`the '755 and '287 patents and the '044 patent suggests that the terms should not be
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`construed the same. Not so. As GoDaddy points out, the patentee used capital and
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`lower-case letters interchangeably in the shared specification when referring to the
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`Application and Player. There is no support for the proposition that the use of capital
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`versus lower-case letters was intended to be significant. For these reasons, the Court
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`concludes that Player must refer to device-specific code. 2
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`On the second issue—whether to include the "separate and independent" or
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`"separate and distinct" language—the Court finds that the construction should include
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`the term "separate" but not "independent" or "distinct." As previously explained in
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`Shopify, the patentee emphasized the separate nature of the Application and Player
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`codes during patent prosecution. Shopify, 2020 WL 3432531, at *4. For example, the
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`patentee stated: "[T]he claimed invention, in contrast, operates by partitioning the code
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`required for functionality into device-independent code and device-dependent code." Id.
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`(citation omitted). This partitioned code was described as an "advantage for
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`maintaining websites." Id. (citation omitted). Because the separate nature of the Player
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`and Application codes was critical to the novelty of the patent, it must be reflected in the
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`construction.
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`Express Mobile argues that incorporation of "separate" into the construction is
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`2 GoDaddy further contends that Express Mobile is estopped from arguing that the term
`"Player" in the '044 patent is not device specific given the patentee's representations
`during the '755 patent prosecution. The Court notes that the argument is plausible but
`declines to address it, as it is not necessary for the resolution of the issue.
`13
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`inconsistent with the specification, which states that the Application can be integrated
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`with the Player. The Court disagrees. Even if the Application is integrated with the
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`Player, it still constitutes separate code from the player. The Court thus agrees with
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`GoDaddy that the Application and Player codes must be "separate."
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`The Court declines to adopt GoDaddy's "independent" or "distinct" language,
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`however. As Express Mobile points out, the term "independent" is misleading because
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`it incorrectly suggests that the Player and Application do not work together. See '755
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`patent at 8:27–35, 13:46–49; id. at 5:32–41. Additionally, GoDaddy's proposed
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`constructions could be potentially confusing to a jury. "Independent" and "distinct" seem
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`to be synonyms of "separate," and GoDaddy does not explain what function adding
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`these terms would serve that the word "separate" does not already provide. The Court
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`thus declines to adopt this part of the proposed construction.
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`B.
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`Motions to strike
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`
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`Both parties have filed motions to strike evidence that they contend was
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`disclosed for the first time during summary judgment briefing. Express Mobile’s motion
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`concerns declarations by GoDaddy engineers Franklin Jarrett and Aaron Silvas that
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`were filed as exhibits to GoDaddy’s motion for summary judgment. GoDaddy’s motion
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`concerns a supplemental report by Express Mobile’s expert Kevin Almeroth that was
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`filed as an exhibit to Express Mobile’s response to GoDaddy’s summary judgment
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`motion.
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`Federal Rule of Civil Procedure 26 sets out the default guidelines for parties'
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`pretrial disclosures. Fed. R. Civ. P. 26. It requires certain pretrial disclosures to be
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`made at least 30 days before trial, "[u]nless the court orders otherwise." Fed. R. Civ. P.
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`26(a)(3). It also sets out the rules concerning expert discovery. Under Rule
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`26(a)(2)(B), the disclosure of an expert witness must be accompanied by a written
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`report containing a statement of all opinions the witness will express at trial, as well as
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`all of the facts and data underlying the witness's opinions. A party who fails to disclose
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`a witness as required by Rule 26 can be precluded from relying on that evidence on a
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`motion or at trial unless the failure to disclose was "substantially justified or harmless."
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`Fed. R. Civ. P. 37(c)(1). Rule 37(c)(1) also permits a court to decline to exclude the
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`evidence and instead impose "other appropriate sanctions." Id.
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`In the Third Circuit, courts look to the so-called Pennypack factors to determine
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`whether to exclude evidence as a sanction. Meyers v. Pennypack Woods Home
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`Ownership Ass'n, 559 F.2d 894, 904 (3d Cir. 1977). These factors are: (1) prejudice or
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`surprise to the other party; (2) the ability of the injured party to cure the prejudice; (3)
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`the likelihood of disruption to the trial schedule; (4) any bad faith or willfulness involved
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`in not complying with the disclosure rules; (5) the violating party’s explanation for
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`noncompliance; and (6) the importance of the evidence to the party offering it. Id.
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`Although the Third Circuit has stated that the last factor is the most important, it has
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`advised that courts must look to the "overall balance" of the factors. ZF Meritor, LCC v.
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`Eaton Corp., 696 F.3d 254, 299 (3d Cir. 2012); see also, e.g., Wyeth Holdings Corp. v.
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`Sandoz, Inc., No. 09-955-RGA-CJB, 2012 WL 1669555, at *4 (D. Del. May 10, 2012).
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`1.
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`Express Mobile’s motion to strike
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`In support of its summary judgment motion, GoDaddy filed declarations from
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`Silvas and Jarrett, two of its engineers who worked on the WSP and MWP, respectively.
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`Express Mobile argues that this disclosure ran afoul of Rule 26, for two reasons. First, it
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`Case 1:19-cv-01937-MFK-JLH Document 261 Filed 08/08/22 Page 16 of 53 PageID #: 38416
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`argues that GoDaddy failed to set forth the facts alleged in the declarations during fact
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`or expert discovery, thus failing to comply with the deadlines in Rule 26(a), Rule 26(e),
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`and the Court’s scheduling order. Second, Express Mobile contends that the
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`declarations contain expert testimony that was not properly or timely disclosed.
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`On the first point, the Court agrees with Express Mobile. The parties completed
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`fact discovery on June 16, 2021, and expert discovery on November 3, 2021. During
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`discovery, Express Mobile sought GoDaddy's bases for noninfringement. One of its
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`interrogatories stated:
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`For each claim of the patents in suit that you assert you do not infringe,
`describe in detail the factual and legal bases for your assertion, including
`providing a claim chart for each Accused Instrumentality showing on a
`limitation-by-limitation basis any limitations that you believe are not
`satisfied, and identifying all evidence upon which you rely and the persons
`with relevant knowledge.
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`Pl's Int. No. 8. In response to this request, GoDaddy stated that it would respond
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`through its expert disclosures and did not otherwise disclose any bases for
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`noninfringement. None of the expert disclosures, however, disclosed the facts included
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`in the disputed declarations. And it was not until November 17, 2021, long after the
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`close of fact and expert discovery, that GoDaddy disclosed the disputed declarations.
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`This violated the Court's scheduling order and GoDaddy's continuing disclosure
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`obligations set out in Rule 26(e).
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`GoDaddy’s attempts to justify this delay are unpersuasive. First, GoDaddy
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`argues that the declarations are timely because they rely on evidence previously
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`disclosed to Express Mobile. Although it is true that Silvas’s and Jarrett’s new
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`testimony relies on evidence, such as source code, that was previously disclosed, the
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`declarations still provide new facts and arguments derived from that evidence that
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`cannot fairly be said to be restatements of that previously disclosed evidence.
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`GoDaddy further argues that, even if the declarations were untimely, this delayed
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`disclosure was substantially justified because of Express Mobile's actions. Specifically,
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`GoDaddy contends that Express Mobile shifted infringement positions in its expert reply
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`report and second amended infringement contentions. It contends that this change in
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`positions was unforeseeable, so it could not have previously disclosed facts necessary
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`to address the new position.
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`The Court agrees that Express Mobile’s position in these later filings did differ
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`from its position in its earlier expert reports. It appears that this shift in position was in
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`response to the ruling in Shopify Inc. v. Express Mobile, Inc., No. 19-439-RGA, 2021
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`WL 4288113 (D. Del. Sept. 21, 2021). Although Express Mobile’s expert discussed the
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`instantiation theory in his opening report, his explanation was relatively cursory, and it
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`was not until the reply expert report that any actual evidence was cited in support of this
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`theory.
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`This explanation does not get GoDaddy off the hook, however. The need to
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`address Express Mobile’s new instantiation theory evidence is only a partial explanation
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`for why GoDaddy proceeded with the declarations as it did. It explains why GoDaddy
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`offered the new declarations but not why it waited until summary judgment to do so.
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`Express Mobile’s second amended infringement contentions and expert reply report
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`were disclosed on June 16, 2021 and October 1, 2021, respectively, well over one
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`month before the end of expert discovery. GoDaddy thus had plenty of time to disclose
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`these declarations or seek an extension of the discovery deadline. It did neither. For
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`this reason, the Cour