Respectfully submitted,

This matter is before the Court on Plaintiff Arconic, Inc.'s Notice Of Objection And Motion To Exclude Defendant Universal Alloy Corporation's Defenses And Evidence Relating To Reverse Engineering And Statute Of Limitations brought pursuant to Fed. R. Civ. P. 37(b) and 37(c).

Fed. R. Civ. P. 26(e)(1) requires that “[a] party who has ... responded to an interrogatory, request for production, or request for admission – must 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.” Fed. R. Civ. Proc. 26(e)(1)(A). Under Rule 26(e)(1)(A), the obligation to supplement is continuing throughout the case. F.T.C. v. Nat'l Urological Grp., Inc., 645 F. Supp. 2d 1167, 1179 (N.D. Ga. 2008). The rule prohibits parties who are aware of their deficient response from “hold[ing] back material items and disclos[ing] them at the last moment.” 8A Charles Alan Wright & Arthur R. Miller. Federal Practice and Procedure § 2049.1 (3d ed. 2011); see also, Fed. R. Civ. P. 26 advisory committee's note (1993 Amendment, Subdivision (e)) (“The obligation to supplement disclosures and discovery responses applies whenever a party learns that its prior disclosures or responses are in some material respect incomplete or incorrect.”)

The disclosure rule is enforced through Rule 37(c)(1), which provides that “[i]f 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 addition to or instead of this sanction, the court ... may impose other appropriate sanctions ....” Fed. R. Civ. Proc. 37(c)(1). See McKesson Information Solutions, LLC v. Epic Systems Corp., 2009 WL 10636314 (N.D. Ga. 2009). The nondisclosing party bears the burden of showing that the failure to comply with Rule 26 was substantially justified or harmless. Mitchell v. Ford Motor Co., 318 Fed.Appx. 821, 824 (11th Cir. 2009) (citing Leathers v. Pfizer, Inc., 233 F.R.D. 687, 697 (N.D. Ga. 2006)); Cooper v. Southern Co., 390 F.3d 694, 726 (11th Cir. 2004); Frierson v. Atlanta Indep. Sch. Sys., 22 F.Supp. 3d 1264, 1284-1284 (N.D. Ga. 2014).

In determining whether the failure to disclose was justified or harmless, the court must consider the non-disclosing party's reasons for its failure to disclose, the importance of the information, and any prejudice to the opposing party. Romero v. Drummond, 552 F.3d 1303, 1321 (11th Cir. 2008); Bearint v. rel. Bearint, Dorell Juvenile Group, Inc., 389 F.3d 1339, 1353 (11th Cir. 2004).

*2 Whether to exclude a witness or a defense not properly and timely disclosed is discretionary with the court and its decision is reviewable only for an abuse of discretion. Fabrica Italiana Lavorazione Materie Organiche, S.A.S. v. Kaiser Aluminum & Chemical Corp., 684 F.2d 776 (11th Cir. 1982); Nance v. Ricoh Electronics, Inc., 381 F.App'x 919 (11th Cir. 2010). See also, Cooper v. Southern Co., 390 F.3d 695 (11th Cir. 2004); Hall v. United Ins. Co. of America, 367 F.3d 1255, 1259 (11th Cir. 2004); Young v. City of Palm Bay, Fla., F.2d 859, 863 (11th Cir. 2004).

The United States Supreme Court has recognized a court's inherent power to impose sanctions, including dismissal, in response to abusive litigation practices. Link v. Wabash Railroad Co., 370 U.S. 626, 632-33, 82 S.Ct. 1386, 8 L.Ed 2d 734 (1962); see also, Malautea v. Suzuki Motor Co., Ltd., 987 F.2d 1536, 1544 (11th Cir. 1993). Incident to this power, a court may impose formal sanctions upon dilatory litigants. Mingo v. Sugar Cane Growers Co-op of Florida, 864 F.2d 101, 102 (11th Cir. 1989). As will be discussed below, the critical issue under Rule 37(c)(i) is whether UAC's failure to timely supplement its interrogatory responses and its drastic change in course in its defenses was substantially justified or somehow harmless to Alcoa.

The Courts have looked unfavorably on a party's attempts to shift the burden of disclosure and recognize that “mere identification of a witness is insufficient to negate a [party's] need to supplement.” Nat'l Union Fire Ins. Co. of Pittsburgh v. Tyco Integrated Sec. LLC, 2015 WL 11251736, at *1-3 (S.D. Fla. 2015) (quoting Coette v. 3M Co., 303 F.R.D. 32, 47 (W.D.N.Y. 2014) (“A party's mere knowledge of the existence of a witness is insufficient to alert the party that the opposing party might call the witness in support of their claims or defenses.”); see also, Dugas v. 3M Co., 2015 WL 3938777, at *2-4 (M.D. Fla. 2015) (rejecting the plaintiffs argument that a late disclosure of a witness was harmless because while the identity and contact information of such witness were provided, the defendant was not properly informed of the subject matter of the witness's potential testimony); Oilier v. Sweetwater Union High Sch. Dist., 768 F.3d 843, 863 (9th Cir. 2014) (“That another witness has made a passing reference in a deposition to a person with knowledge or responsibilities who could conceivably be a witness does not satisfy a party's disclosure obligations. An adverse party should not have to guess which undisclosed witnesses may be called to testify.”) Thus, the issue of whether information required under Rule 26 was otherwise made known during discovery must be examined on a case-by-case basis in light of the underlying facts.

As noted above, this matter is before the Court on Plaintiff Arconic, Inc.'s (f/k/a Alcoa, Inc.) (hereinafter “Alcoa”) Notice Of Objection And Motion To Exclude Defendant Universal Alloy Corporation's (hereinafter “UAC”) Defenses And Evidence Relating To Reverse Engineering And Statute Of Limitations brought pursuant to Fed. R. Civ. P. 37(b)and 37(c). Alcoa asserts that UAC is in violation of Fed. R. Civ. P. 26(b)(1), which provides in pertinent part as follows:

And further clarifies per Fed. R. Civ. P. 26(a)(1)(A)(i):

Emphasis added.

Additionally, Fed. R. Civ. P. 26(a)(1)(A)(i) requires the disclosure of documents “a party may use in support of its claims or defenses.” See, Thompson v. Norfolk Southern R.R. Co., 2015 WL 1509483 (N.D. Ga. 2015). (Emphasis added.)

The Eleventh Circuit is not unfamiliar with motions to exclude putatively untimely discovery. The purpose of discovery in litigation is to permit inquiry into the information, be it in the form of documents or the testimony of witnesses, to be used by one's opponent in support of its positions. Key to such a motion is the timing of the disclosure of such information.[1] Late disclosure of information, witnesses, and theories -- particularly after the deposition phase of discovery -- undermines the purpose of discovery and warrants exclusion at summary judgment or trial.[2]

Witnesses have been excluded when first disclosed on summary judgment because the plaintiffs “failed to offer a reason why they could not have discovered earlier and timely disclosed the identities of the affiants and the subjects of the information they possessed.”[3] There the court excluded these witnesses even though the defendants knew them as figures in their industry, because “defendants did not know that Plaintiffs intended to use information [the witnesses] possessed.”[4]

For the same reasons, a party cannot assert a new theory or defense after the close of discovery: when a defendant “drastically change[s] its position late in the game,” it “puts the Plaintiffs at a serious disadvantage because they are unable to investigate the credibility of this new theory.”[5]

*4 In this trade secrets misappropriation action the Plaintiff, Alcoa, has asserted that Defendant, UAC, misappropriated “Alcoa's trade secret stretch form extrusion process and all of its component parts (the ‘Stretch Form Process’) in order to siphon away hundreds of millions of dollars of Alcoa's sales of aluminum aerospace extrusion parts (the ‘Stretch Extrusion Parts’) to The Boeing Company (“Boeing”).”[6] Specifically, Alcoa alleges that UAC hired several former and current Alcoa employees and consultants who had been entrusted with Alcoa's trade secret information regarding the Stretch Form Process, and at “UAC's urging, these former Alcoa employees and consultants betrayed that trust and improperly disclosed Alcoa's trade secrets to UAC, who used them for the express purpose of replicating the Stretch Form Process at UAC's manufacturing facility.”[7] Alcoa asserts that UAC used Alcoa's misappropriated trade secret Stretch Form Process to obtain business from Boeing, “reducing Alcoa's share of the Stretch Form Extrusion Parts business by $200 million over the life of the upcoming 2016 to 2025 contract term.”[8]

According to the amended complaint, “[t]he Stretch Form Process, used to produce Stretch Form Extrusion Parts, is a multi-staged manufacturing process during which a proprietary aluminum alloy composition in the form of a billet is processed through three different pieces of equipment: a large extrusion press, a horizontal heat treat furnace and quench, and a large stretch former.”[9] “The aluminum billet made with this proprietary alloy composition is created using a proprietary alloying process that is specific to the particular alloy composition Alcoa uses.”[10] “The aluminum billet is then processed through each of the Stretch Form Process stages pursuant to very precise parameters developed and optimized by Alcoa covering an extensive array of variables that can be and are carefully manipulated and controlled to produce the desired end product.”[11]

To enhance its Stretch Form Process, Alcoa began working on an iterative improvement project in the late 1990s, and this process took place over the course of many years, consisting of “making thousands of adjustments to each piece of equipment to control for and calibrate the variables specific to each part.”[12] “Alcoa recorded all of the proprietary data that was accumulated, which reflected the inputs made and the outputs achieved, on ‘Process Target Pages’ applicable to each part number and ‘Practices and Program Materials’ applicable to each piece of equipment used in the Stretch Form Process.”[13] Alcoa alleges, upon information and belief, that “at the direction of UAC, the former Alcoa employees and contractors improperly disclosed to UAC Alcoa's proprietary knowledge and information relating to the Stretch Form Process, including, but not limited to, information regarding Alcoa's proprietary aluminum alloy compositions, the information captured in the Process Target Pages and the Practices Materials, and the cumulative body of knowledge and information amassed as a consequence of the multi-year iterative improvement project[.]”[14]

Pending before the Court is UAC's motion for summary judgment[15] in which it presents, inter alia, two defenses. First, that UAC reversed-engineered Alcoa's alloy composition used in its Stretch Form Process and, second, that Alcoa's claims are barred by the applicable Georgia statute of limitations for initiation of a trade secrets misappropriation action. Alcoa contends that UAC failed to timely disclose these defenses during fact discovery in its initial disclosures, in response to written discovery requests, and in depositions and that each nondisclosure has unfairly prejudiced it. Alcoa asserts that it has been put in the position of responding to these defenses without the benefit of meaningful discovery on them. Alcoa, in submitting its instant motion, requests that the Court exclude from consideration in deciding UAC's summary judgment motion: (1) UAC's defense of reverse engineering, and the two declarations (of Messrs. Dangerfield and Reichlinger) filed in support of that defense; and (2) UAC's statute of limitations defense, including the associated testimony and information, based on the theory that Alcoa knew what work Messrs. Sigler and Scaglione were performing at UAC.

*5 The Court notes that in the early stages of this litigation UAC took the position that it had not misappropriated any trade secrets from Alcoa and conducted its discovery responsibilities accordingly. However, after Alcoa filed its motion to compel[16], an order was entered whereby UAC was compelled to participate in discovery as to: (1) the details of UAC's process for manufacturing the parts at issue; (2) how UAC developed that process; (3) the extent to which Alcoa's information was used to develop that process; and (4) UAC's defenses.[17] The September 9, 2016 order observed that “[w]hile UAC denies and vigorously disputes the merits of Alcoa's claims, the allegations of the amended complaint clearly encompass all of the component parts of the stretch-form process....”[18] Alcoa's list of trade secrets submitted on December 2, 2015 states: “The first stage of Alcoa's trade secret Stretch Form Process is the casting of aluminum ingots. ... using Alcoa's proprietary C545 alloy composition....”[19]

Alcoa served Interrogatory 19 on UAC on January 28, 2016, which reads:[20]

In response, UAC did not assert “reverse engineering” but instead[21]:

Moreover, UAC did not assert “reverse engineering” nor did it identify the witnesses[22] most recently used to support its reverse engineering defenses.[23]

Other interrogatories served on UAC also sought information on alloy composition; Interrogatory 10 (served in June 2015) reads:[24]

and Interrogatory 12 reads (in pertinent part)[25]:

A review of the record discloses that UAC responded to these interrogatories four times (the latest being on June 12, 2017) without making any reference to “reverse engineering” or putatively obtaining and using an Alcoa alloy sample from Boeing to accomplish such reverse engineering, as ultimately was alleged by UAC. To the contrary, UAC reiterated its position that it “independently developed” its process.[26] In its submission to the Court on May 31, 20106, UAC stated “UAC does not create alloys.”[27]

*6 UAC was required by L.R. 26(B)(1) to state in its Initial Disclosures form to “(3) Provide a detailed factual basis for the defense or defenses ... asserted by defendant in the responsive pleading.” and “(5) Provide the name ... of each individual likely to have discoverable information that you may use to support your claims or defenses ... (Attachment A).”[28]

As part of its L.R. 26(B)(1) disclosures UAC affirmatively stated: “UAC has not used or does not need any trade-secret information of Alcoa” and “UAC developed its stretch-forming capability legitimately, without using anything that belongs to Alcoa.[29] UAC has never amended those disclosures as it is required to do.[30] While the interrogatory and document production phase of this case was proceeding (several million documents changed hands), the parties undertook the recording of over thirty depositions.

During the deposition of Michael T. Colt, the President of UAC (and one of its Rule 30(b)(6) witnesses) on October 18, 2017, he was questioned about alloy composition. He made no mention of the fact, which UAC later revealed and relied upon in advancing its reverse engineering defense, that UAC had received an Alcoa alloy sample from Boeing and reverse engineered its composition.[31] Colt was also asked about a UAC document showing Alcoa's trade secret alloy composition listed under the heading “competitor,” he testified that he did not know who the “competitor” was or how UAC got the information.[32] Colt then responded to a question, thusly:

Colt continued by testifying that he had talked with Dangerfield and that Dangerfield had made these same statements.[33]

The foregoing testimony by UAC's president directly contradicts UAC's current position, which is that UAC secured the alloy information, claimed by Alcoa as a trade secret, from reverse engineering an Alcoa sample from Boeing, that the “competitor” in the document was Alcoa, and that the numbers in the document reflected Alcoa's alloy composition.[34] At his October 10, 2017 deposition, UAC witness Victor Dangerfield also failed to disclose or address the current reverse engineering position of UAC. At that deposition Dangerfield testified as follows:

The record reflects that these same UAC witnesses have changed their testimony to support UAC's current reverse engineering claim: Colt (the Rule 30(b)(6) witness) verified the amended interrogatory responses asserting reverse engineering as a defense for the first time[36] and Dangerfield signed a declaration in support of summary judgment claiming that UAC did in fact use Alcoa composition numbers from an alloy sample provided to UAC by Boeing.[37]

This new defense was not disclosed until more than four months after the close of fact discovery. Fact discovery first closed on October 31, 2017, and expert discovery on January 16, 2018.[38] The record reflects that on that day, UC filed an “emergency” motion to extend fact discovery[39] which the Court granted on November 20, 2017 extending fact discovery through December 20, 2017.[40] In that Order the Court ruled that: “Given that there have been several extensions of time for discovery in this case, no further extension of time for discovery will be permitted.”[41]

On May 7, 2018, UAC amended its response to Alcoa's interrogatory 19 wherein for the first time did UAC identify reverse engineering[42] as a defense and identified Dangerfield as a witness on this issue, some seven months after he had been deposed (October 10, 2017).[43] This was approximately five months after the December 20, 2017 close of all discovery. It approached seven months since the last deposition had been taken (October 26, 2017) and the original fact discovery period had closed (October 31, 2017). It was six months after Alcoa submitted its expert's report (November 14, 2017); Thomas W. Eagar, SC.D., N.A.E., P.E.) (Dkt. 527-4). Moreover, even this untimely disclosure was incomplete, failing as it did to identify Burke Reichlinger, a witness integral to the reverse engineering defense. His identity did not surface until UAC's motion for summary judgment was filed.

*8 The gravamen of the reverse engineering defense, inserted for the first time in this case was that Boeing provided to UAC an Alcoa alloy sample for testing, UAC used that sample to “reverse engineer” Alcoa's alloy composition (an identified trade secret denominated “C545”) to develop UAC's Stretch Form Process alloy (denominated “U724”).[44]

UAC, in response to Arconic's motion to exclude, argues that “even if” UAC had failed to make timely disclosure, exclusion is not permitted because UAC's conduct was substantially justified and harmless, citing O'Donnell v. Ga. Osteopathic Hosp., Inc., 748 F.2d 1543, 1549 (11th Cir. 1984) overruled on other grounds ... (exclusion warranted only for “prejudicial surprise”). For the reasons that follow, the Court is unpersuaded by UAC's arguments as to why its eleventh hour reverse engineering defense should not be excluded.

UAC initially attempted to justify its protracted failure to disclose its reverse engineering defense only after robust and lengthy discovery produced a substantial body of evidence from which a reasonable juror could find that there may well have been a misappropriation of information from Alcoa by UAC involving the Stretch Form Process. That justification consists of an “independent-development-through-reverse-engineering” theory. However, UAC conflates these two defense theories. These two defensive theories are distinct. Reverse engineering[45] assumes that a party properly and legally obtained and dissected/analyzed a competitor's product while, by contrast, independent development is predicated on the party's own development.[46] Up until the very end of the discovery period UAC persistently maintained that it took no information (trade secret or not) from Alcoa. However, the current reverse engineering defense admits, as it must, that it used an Alcoa alloy sample putatively provided to it by Boeing. Manifestly the Georgia trade secret statute clearly distinguishes these defenses: “Reverse engineering of a trade secret not acquired by misappropriation or independent development shall not be considered improper means.” O.C.G.A. § 10-1-761(1) (emphasis added). Thus, the statute makes clear that reverse engineering is not a type of independent development as UAC contends; were that so, the statute would not list reverse engineering at all, much less define it as not including independent development. UAC also suggests that it disclosed its reverse engineering defense when it argued that Alcoa's trade secrets may be readily ascertainable by others in the industry. However, “readily ascertainable” is a threshold element of proving a trade secret, while reverse engineering is a defense to misappropriation of a trade secret. Compare § 10-1-761(4)(A) with 10-1-761(1). “Readily ascertainable” is theoretical. “Reverse engineering” deals with actual undertakings.

UAC's additional argument for its failure to disclose reverse engineering or the supporting facts and witnesses in interrogatory response, is that Alcoa should have been aware of them from UAC's document production of over two million documents. As noted above, “merely pointing to places in the discovery where the information was mentioned in passing is not sufficient.”[47] Such an approach is the antithesis of the purpose of discovery.[48]

*9 Finally, UAC points to a small collection of documents among the over two million produced by UAC as disclosing the second reverse engineering witness -- a Boeing employee who provided a sample of Alcoa's alloy (metal) used in the production process, the Stretch Form Process, for Boeing's aircraft wings -- Burke Reichlinger. However, those documents do not state or suggest reverse engineering.[49] UAC points to deposition testimony showing Alcoa knew that Reichlinger was a liaison between Alcoa and Boeing, but such knowledge did not put Alcoa on notice that he was a key witness for UAC regarding an undisclosed reverse engineering defense.[50]

In sum, the Court finds that UAC failed to timely disclose in discovery the facts that it now argues to support its reverse engineering defense. UAC has failed to persuade the Court that its conduct was substantially justified or harmless. Accordingly, the Court hereby ORDERS that, pursuant to Fed. R. Civ. P. 37(b) and (c), UAC shall not introduce or rely upon at summary judgment, and the Court hereby excludes and will not consider:

Alcoa's position is that UAC's only disclosed information relative to its statute of limitations defense was based upon Alcoa's general knowledge that UAC could manufacture products on a “heavy press.” Alcoa contends that UAC's interrogatory responses stated that its limitations defense was predicated only on Alcoa's knowledge of UAC's production of straight-stretched parts. Moreover, UAC failed in its answer to Interrogatory 19 to identify relevant information, documents or witnesses to support that defense.[51] Alcoa argues that UAC revealed for the first time a new theory for its limitations defense in its motion for summary judgment: that Alcoa was aware about the misappropriation because it had knowledge of Messrs. Sigler and Scaglione's work at UAC and for the first time relied upon Messrs. Pahl and Fultz as witnesses for this defense. But Alcoa contends that this evidence does not in fact show that Alcoa knew how UAC was developing its heavy-press process, only that UAC was developing it. Alcoa asserts that although it knew of Pahl and Fultz it did not know that UAC was planning to rely on information they had for a limitations defense.[52] Alcoa contends that it was unable to pursue written discovery, document production, or depositions on the nature of Sigler and Scaglione's work at UAC, or why Fultz and Pahl (as Alcoa employees) would not have alerted Alcoa if they, as suggested by UAC, understood that Sigler and Scaglione were stealing Alcoa information.[53]

*10 A review of the extensive record in this case reflects three times where UAC used the term “statute of limitations.” First, in UAC's Answer to Amended Complaint, at page 22 under the heading “Affirmative Defenses” at numbered paragraph “3” it asserts: “Alcoa's claims fail, in whole or in part, because they are barred by the statute of limitations.” Closely following that assertion were the litany of defenses that typically are set out in an Answer: “Alcoa's claims fail, in whole or in part due to... : ¶4 – “waiver”; ¶5 – “estoppel”; ¶6 – “laches”; ¶7 – “release.” Accordingly, Alcoa was tasked with, through the discovery process that followed, discovering which of those many defenses would actually be relied upon by UAC. The date of that Answer was June 19, 2015. Second, thereafter, on June 22, 2015, in UAC's submission of its “Defendant's Initial Disclosures” at paragraphs 9 through 12, the same disclosure was made as in the above noted paragraphs 3 through 7 in the Answer. Third, on May 7, 2018, the following response was provided by UAC in its “Second Amended And Supplemental Answer To Plaintiff's Interrogatory 19. ....”:

UAC's Motion For Summary Judgment was filed on July 16, 2018.

It is noteworthy that not in or about the three mentions of those “statute of limitations” noted above were there provided any references whatsoever to witnesses or documents to inform that defense. Most particularly the names of UAC's key limitations witnesses, Sigler, Scaglione, Fultz and Roegner were absent.

UAC counters that any work that Sigler and Scaglione did at UAC must assuredly have involved trade secrets, relying on the testimony of Eric V. Roegner at his deposition taken on October 27, 2017.[54] While UAC's position through the bulk of this litigation, as clearly reflected in this record, has been that it never used any Alcoa information or trade secrets, it now argues that any work Sigler and Scaglione did at UAC must have involved trade secrets associated with large press stretch-formed spar cord extrusions. To support that theory UAC advances a snippet from the deposition testimony of Roegner. That testimony, in pertinent part, went as follows:

But Roegner did not testify as UAC has characterized it -- that is, whether Sigler or Scaglione could work for UAC without disclosing Alcoa's trade secrets. Instead, he referred to a former employee working at Nanshan, not UAC. If UAC's counsel had desired to clarify Roegner's response he could have -- but did not.

As noted above, it is not enough to have access to an opponent's witnesses and documents without knowing they relate to particular defenses. As a past pundit once said: “If you don't know where you're going, when you get there you will be lost.” Here Alcoa deposed Sigler, Scaglione and Fultz, but without knowing UAC's limitations theory of defense, it could not prepare itself to meet it at summary judgment or at trial.

*11 UAC's statute of limitations defense, simply stated, is that Alcoa knew or had reason to know before 2009 that UAC had misappropriated Alcoa's trade secrets. UAC bears the burden of proving its limitations defense?[55] Alcoa's position is that while it knew former employees were working for UAC, it was not until 2014 when it was made aware that UAC had struck a deal with Boeing based upon representations that it could produce stretch-formed spar cords in such a short time frame that Alcoa realized UAC must be using Alcoa's trade secrets.[56] A review of the record discloses that UAC's limitations claim rests on the single theory that Sigler and Scaglione, former Alcoa employees, worked on UAC's heavy press. Alcoa presented evidence, and the record reflects generally, that many different types of aeronautical parts are produced on a “heavy press.” Alcoa also presented evidence that there were many ways to produce such parts using the heavy press that did not require the use of Alcoa's trade secrets?[57]

The most thorough and definitive discussion of the Georgia law on the issue of the statute of limitations defense asserted in a trade secrets misappropriation case is found in Porex Corp. v. Haldopoulus.[58] Noting that Georgia's five year limitations statute is a version of the limitation period of the Uniform Trade Secrets Act, yet two years longer, the court cited opinions from other states to inform its decision. The Porex court observed:

Emphasis added.

After a thorough review of the voluminous record in this case and carefully reviewing and considering the arguments of the parties, it is manifest to the Court that UAC failed to afford Alcoa sufficient and timely discovery to prepare it to meet UAC's statute of limitations defense. Moreover, it is equally clear that UAC has failed to satisfy its burden that its failure to make complete and timely discovery was justified or harmless.

Accordingly, the Court hereby ORDERS that, pursuant to Fed. R. Civ. P. 37(b) and (c), UAC may not introduce or rely upon at summary judgment, and the Court hereby excludes and will not consider:

Under Rule 37, the Court hereby ORDERS UAC to file a briefing showing why it should not be required to pay Alcoa's reasonable expenses, including attorneys' fees, incurred in having to file a Notice Of Objection And Motion To Exclude caused by UAC's misconduct. UAC shall file its motion no later than 20 days from the date of this Order. Alcoa shall have 20 days thereafter to file a response, if any.

SO ORDERED this ___ day of ____, 2019.

*12 ELEANOR L. ROSS, JUDGE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA

See, e.g., Perfect Web Techs., Inc. v. Infousa, Inc., 2008 WL 725726, at *2 (S.D. Fla. Mar. 17, 2008); SEC v. Art Intellect, Inc., 2013 WL 840048, at *11 (D. Utah 2013) (stating that important discovery “should be obtained at the outset” because “it is likely that [the other party] will pursue different avenues of discovery” based on those early revelations).

See, e.g., Rigby v. Philip Morris USA Inc., 717 F. App'x 834, 835-36 (11th Cir. 2017); Romero v. Drummond Co., 552 F.3d 1303, 1321 (11th Cir. 2008); McKesson Info. Sols. LLC v. Epic Sys. Corp., 2009 WL 10636314, at *3 (N.D. Ga. 2009); Cooley v. Grant S. Wood Preserving, 138 F. App'x 149, 161 (11th Cir. 2005).

See Rigby, supra at 835-36.

Id., see also Nance v. Ricoh Elecs., Inc., 381 F. App'x 919, 922 (11th Cir. 2010) (affirming exclusion of fact witnesses familiar to the other party); Thompson v. Norfolk S. Ry. Co., 2015 WL 1509483, at *5 (N.D. Ga. 2015) (excluding testimony in spite of offer for a deposition, and awarding attorney's fees).

Travelers Indem. Co. of Conn. v. Philips Med. Sys., 2009 WL 10669549, at *1 (S.D. Fla. 2009); see also Parrish v. Freightliner, LLC, 471 F.Supp.2d 1262, 1269 (M.D. Fla. 2006) (excluding expert testimony about a “new theory” of liability because the theory was not disclosed in response to an interrogatory); INVISTA N. Am. S.a.r.l. v. M & G USA Corp., 2013 WL 3216109, at *5 (D. Del. 2013) (excluding a declaration attached to a motion for summary judgment asserting a new defense not disclosed in interrogatories); ELCA Enters., Inc. v. Sisco Equip. Rental & Sales, Inc., 53 F.3d 186, 190 (8th Cir. 1995) (affirming exclusion of new damages theory when it had not been disclosed in interrogatory responses). In Jones, the court refused to consider a new theory of liability in the plaintiff's opposition to summary judgment where it was not disclosed in response to an interrogatory. Jones v. E.R. Snell Contractor, Inc., 333 F.Supp.2d 1344, 1349 (N.D. Ga. 2004). Similarly, courts routinely exclude documents and information disclosed too late for meaningful discovery. E.g., McKesson, 2009 WL 10636314, at *3 (N.D. Ga. 2009) (excluding documents and evidence produced a week before the close of discovery).

Plaintiff's Amended Complaint, Dkt. 27 at 1, ¶1.

Id. at 2 ¶5.

Id. at 3 ¶7.

Id. at 5 ¶19.

Id. at 6 ¶21.

Id.

Id. at 8 ¶¶26-27.

Id. at 8 ¶27.

Id. at 10 ¶35.

Dkt. 446.

Dkt. 97-1.

Dkt. 160 at 13-14.

Dkt. 27 (Amended Complaint) at ¶¶9-21.

UAC's MSJ Ex. QQ at ¶¶5-7 (Dkt. 448-43).

Estremera Decl., Ex. B at 9 (Dkt. 527-8).

Estremera Decl., Ex. C at 8-14 (Dkt. 527-8.

Messrs. Dangerfield and Reichiinger.

The Eleventh Circuit observed that “[T]he Supreme Court has noted that state trade secret laws cannot be used to prohibit reverse engineering, whereby a party starts with a known product and works backward to discern the process by which it was manufactured. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 160, 109 S.Ct. 971, 982, 1, 489 U.S. 141, 160, 109 S.Ct. 971, 982, 103 L.Ed.2d 118 (1989).” Roboserve, Ltd. v. Tom's Foods, Inc., 940 F.2d 1441, 1455 (1991).

Estremera Decl., Ex. D at 10-11 (Dkt. 527-9).

Estremera Decl., Ex. D at 12 (Dkt. 527-9).

Estremera Decl., Ex. E at 24, 29 (Dkt. 527-10); F at 27, 38 (Dtk. 527-11); G at 30, 41 (Dkt. 527-12); and, H at 33, 44 (Dkt. 527-13).

UAC's Opposition To Alcoa's “Emergency” Motion To Extend Discovery Deadlines Again, at 8 (Dkt. 141).

Estremera Decl., Ex. I at 1 and 6 (Dkt. 527-24).

Estremera Decl., Ex. I at 2 (Dkt. 527-14).

While Rule 26(e)(1)(A) relieves a party from supplementation if information has “otherwise been made known,” the information must be clear and specific enough “to be the functional equivalent of a supplemental discovery response; merely pointing to places in the discovery where the information was mentioned in passing is not sufficient.” Wright and Miller, 8A Fed. Prac. & Proc. Civ. § 2049.1 n.7 (3d ed.) (emphasis added) (quoting L-3 Commc'ns Corp. v. Jaxon Eng'g & Maint., Inc., 125 F.Supp.3d 1155 (D. Colo. 2015)); see also Precision Fabrics Grp., Inc. v. Tietex Int'l, Ltd., 297 F.Supp.3d 547, 556 (D.S.C. 2018); Bayer Healthcare Pharm., Inc. v. River's Edge Pharm., LLC, 2015 WL 11142425, at *9 (N.D. Ga. 2015).

Estremera Decl., Ex. J (Colt Dep.) at 76:25-78:4 (Dkt. 527-15); Colt Dep. at 79:21-80:2; 82:15-24; 463:12–464-15 (Dkt. 402).

Estremera Decl., Ex. J (Colt Dep.) at 374:19 – 379:7 (Dkt. 527-5).

Estremera Decl., Ex. J (Colt Dep.) at 377:22 – 378:2 (Dkt. 527-5).

UAC's Statement of Material Facts To Which There Is No Genuine Issue To Be Tried (Dkt. 455-3) (citing Eagar Rpt. T 52, ¶527-33).

Estremera Decl., Ex. BB (Dangerfield Dep.) at 136:16-25 (Dkt. 527-33).

Estremera Decl., Ex. X at 16 (Dkt. 527-29) (May 7, 2018).

Decl. of Victor Dangerfield (Dkt. 448-13) (July 16, 2018).

Scheduling Order (Dkt. 288) (August 29, 2017).

Emergency Motion (Dkt. 308-1) (October 31, 2017).

Order (Dkt. 324).

Order (Dkt. 324 at 2).

“A trade secret law, however, does not offer protection against discovery by fair and honest means, such as by ... reverse engineering.” Kewanee Oil, Co. v. Bicron Corp., 416 U.S. 470, 476 (1974); accord Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.. 141, 155-58 (1989).

Estremera Decl., Ex. X (Amended Response to Alcoa's Interrogatory 19) (Dkt. 527-29).

Eagar Decl. at 2, 8-17 (Dkt. 527-3).

Generally, legally acquiring a competitor's product and taking it apart (by decompiling, dissecting, analyzing, etc.) and determining how it functions or is composition. See, e.g., Roboserve, Ltd. v. Tom's Foods, Inc., 940 F.2d 1441, 1455 (11th Cir. 1991).

See, e.g., Essex v. Southwire, 269 Ga. 553, 556-58 (Ga. 1998); Candy Craft Creations, LLC v. Gartner, 2015 WL 1541507 at *23 (S.D. Ga. 2015).

See Eagar Decl. at 29 (Dkt. 527-3); see footnote 25 supra.

See, e.g., Jones v. E.R. Snell Contractor, Inc., 333 F.Supp.2d 1344, 1349 (N.D. Ga. 2004) (excluding new theory of liability not disclosed in interrogatory response); Travelers Indem. Co. of Conn. v. Philips Med. Sys., 2009 WL 10669549, at *1 (S.D. Fla. 2009) (allowing a party to “drastically change its position late in the game” would “serious[ly] disadvantage” its opponent). Indeed, “documents themselves rarely, if ever, reveal contentions of fact or law.” EEOC v. Jack Marshall Foods, 2009 WL 10704883, at 2* (S.D. Ala. 2009).

If UAC knew Reichlinger was an important witness for its reverse engineering defense, its failure to disclose him was egregious.

See Rigby v. Philip Morris USA Inc., 717 F. App'x 834, 835-36 (11th Cir. 2017) (despite knowing “witnesses from prior dealings ..., Defendants did not know that Plaintiffs intended to use information they possessed.”); Superior Consulting Servs., Inc. v. Shaklee Corp., 2018 WL 1474184, at *2 (M.D. Fla. 2018) (party must supplement its 26(a) disclosures in order to use witness identified in deposition to support claims).

Estremera Deel. Ex. X at 10 (Dkt. 527-29).

See Rigby, supra at 835-36; Nance, supra at 922.

Scaglione was an Alcoa employee from 1998 to 2003 working as an engineering and maintenance manager and thereafter from 1991 to 1997 and 2003 to present a UAC employee; most recently, Vice President of Engineering. Dkt. 455-3 at 12-13. Henry Sigler was an Alcoa employee from 1973 to 1994 working as a metal distributor (1973-75), heat treat operator (1975-78), stretcher operator (1978-80), supervisor of stretching (1980-87), and supervisor of Alcoa's heavy press unit at its Lafayette facility (1981-94). He later worked as an independent contractor working on horizontal heat treatment and quench at UAC's Canton, Georgia facility from 1996 to 2008. Dkt. 455-3 at 13.

UAC's Statement of Material Facts, Ex. BB, Roegner Dep. at 179:23 - 180:8 (Dkt. 446-2); (Dkt. 528-1 at ¶101). Roegner was Alcoa's Chief Operating Officer of Global Engineered Products, 2006-2007, and President of Global Hard Alloy Extrusions, 2007-2018.

Int'l Stamp Art, Inc. v. U.S. Postal Serv., 456 F.3d 1270, 1274 (11th Cir. 2006).

Colvin Decl. Ex. 3 at ¶23 (Dkt. 529-3).

Colvin Decl. Ex. 3 at ¶20 (Dkt. 529-3); Perrin Decl. Ex. 5 at 997-9 (Dkt. 529-5).

284 Ga. App. 510 (Ga. App. 2007). The parallels in the fact pattern in that case and this case are informative.