## Facts

- C. Van Der Lely N.V. (Lely) sued F. Lli Maschio, S.n.c. (Maschio) in federal district court for patent infringement.
- In its initial answer, Maschio asserted patent invalidity and included anticipation as a ground.
- In later interrogatory responses, Maschio stated it would not pursue an anticipation defense.
- Before trial, the parties submitted and agreed to a comprehensive final pretrial order that omitted anticipation and stated Maschio would pursue invalidity based on obviousness.
- Maschio’s first and second amended answers did not include anticipation.
- Maschio never moved before trial to amend or modify the final pretrial order to add anticipation.
- At trial, Maschio stated in its opening statement that at least one asserted claim was invalid for anticipation.
- Lely objected to Maschio raising anticipation at that point in the trial.
- Maschio offered no explanation for waiting until opening statement to assert anticipation after dropping it from discovery positions, pleadings, and the final pretrial order.
- The district court directed the parties to brief whether the final pretrial order should be modified to permit Maschio to raise anticipation.

## Issues

1. Should the court modify the final pretrial order under Federal Rule of Civil Procedure 16(e) to allow Maschio to assert an anticipation defense first raised in opening statement after the defense was omitted from the final pretrial order and later pleadings?

## Decision

- The court declined to modify the final pretrial order to add anticipation.
- The court enforced the final pretrial order’s limitation of Maschio’s invalidity case to obviousness and treated anticipation as excluded from trial.
- The court relied on Maschio’s earlier abandonment of anticipation (including its interrogatory response), the omission of anticipation from the final pretrial order, and the lack of a timely request to amend that order before trial.
- The court found no adequate justification for introducing anticipation at the opening statement stage.

## Legal Principles

- A final pretrial order controls the course of trial; it is not a tentative outline and may be changed only under the strict standard of Rule 16(e).
- Modification of a final pretrial order requires a showing that the change is needed to prevent manifest injustice.
- When a party omits an issue from a final pretrial order—especially after signaling during discovery that it will not pursue that issue—the omission supports treating the issue as waived for trial.
- Courts consider the timing of the request, the moving party’s explanation (or lack of one), and the risk of unfair surprise or prejudice to the opposing party when deciding whether to allow a late-added theory.
- In patent invalidity litigation, adding a new ground at trial can disrupt trial preparation and proof, particularly where the opposing party prepared around the narrower set of issues listed in the final pretrial order.

## Conclusion

In this patent infringement action, Maschio attempted to reintroduce anticipation as an invalidity defense during opening statements even though anticipation had been disclaimed in discovery and left out of the final pretrial order and amended answers. Applying Rule 16(e), the court refused to change the final pretrial order at trial and barred the late-raised anticipation defense.


C. Van Der Lely N.V. v. F. Lli Maschio, S.n.c., 36 Fed. R. Serv. 2d 1489, 221 U.S.P.Q. 34 (1983)