*1 Plaintiff and Counter-Defendant Puff Corp. (“Puffco” or “Plaintiff”) filed an ex parte application to exclude testimony from certain late-disclosed witnesses, Helena Stone and Judie Stanford. Docket No. 209. Defendants and Counterclaimants SHO Products, LLC and MasterMinded, Inc. (“SHO” or “MasterMinded” individually, and “Defendants” collectively) filed an opposition. Docket No. 211. Defendants also filed certain additional declarations. Docket No. 216 (“Beck Decl.”); Docket No. 217 (“Jurist Decl.”). Plaintiff filed a reply in support of its ex parte application. Docket No. 219.

“If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1). Here, Defendants did not disclose Stone or Stanford during fact discovery. Indeed, Defendants disclosed Stone and Stanford's testimony less than one month before trial. See Docket No. 209-1 ¶¶ 3-6. Defendants were required to disclose the individuals “likely to have discoverable information—along with the subjects of that information—that [Defendants] may use to support [their] claims or defenses.” Fed. R. Civ. P. 26(a)(1)(A)(i). Defendants also had a duty to supplement this disclosure. See Fed. R. Civ. P. 26(e)(1)(A). Defendants do not contend that they disclosed these witnesses on time or that their delay was harmless; instead, they argue that their non-compliance with Rule 26 was substantially justified. See Docket No. 211 at 5.

Ultimately, the Court agrees with Defendants that they have made a sufficient showing of substantial justification. A “[f]ailure to disclose is ‘substantially justified’ if it is ‘justified to a degree that could satisfy a reasonable person.’ ” Washington v. Matheson Flight Extenders, Inc., 440 F. Supp. 3d 1201, 1218 (W.D. Wash. 2020) (quoting Pierce v. Underwood, 487 U.S. 552, 565 (1988)). “The party facing sanctions bears the burden of proving that its failure to disclose the required information was substantially justified or is harmless.” R & R Sails, Inc. v. Ins. Co. of Pennsylvania, 673 F.3d 1240, 1246 (9th Cir. 2012).

“The factors a district court must consider where a party seeks to call a witness who does not appear on the witness list are: (1) the prejudice or surprise of the party against whom the excluded witness testifies; (2) the ability of that party to cure the prejudice; (3) the extent to which calling the witness would disrupt the orderly and efficient trial; and (4) bad faith or [willfulness] in failing to comply with the court's order.” Amarel v. Connell, 102 F.3d 1494, 1515–16 (9th Cir. 1996), as amended (Jan. 15, 1997). At other times, courts have expressed the list of factors slightly differently. See Stevenson v. Holland, 504 F. Supp. 3d 1107, 1122 (E.D. Cal. 2020) (“Courts consider the following factors to determine whether to preclude the introduction of evidence pursuant to Rule 37: ‘(1) the surprise to the party against whom the evidence would be offered; (2) the ability of that party to cure the surprise; (3) the extent to which allowing the evidence would disrupt trial; (4) the importance of the evidence; and (5) the nondisclosing party's explanation for it[s] failure to disclose the evidence.’ ”) (quoting S.F. Baykeeper v. West Bay Sanitary Dist., 791 F. Supp. 2d 719, 733 (N.D. Cal. 2011)).

*2 Beginning with the first two factors, Plaintiff was prejudiced by the late disclosure of the testimony. Plaintiff argues that their ability to cross-examine the late-disclosed witnesses would be handicapped by their inability to depose them. This position is persuasive, and Defendants do not make a harmlessness argument. On the other hand, because trial has not begun, this form of prejudice can be mollified by continuing the trial and allowing appropriate discovery to take place. The combination of these two factors weighs in favor of allowing the testimony but continuing briefly the trial date to allow Plaintiff to take appropriate depositions and written discovery.

The third factor, the disruption to the trial schedule, weighs slightly against permitting the testimony. This case is not going to proceed to trial on June 18 even if Stone and Stanford's testimony is excluded, because the parties have agreed to continue this matter to June 25. Thus, that disruption to the trial schedule cannot be attributed to the admission of Stone and Stanford's testimony. Depending on the availability of the witnesses, Plaintiff may need some amount of additional time to conduct appropriate discovery, but that risk is not sufficiently severe to outweigh the other factors discussed here.

The importance of the evidence weighs in favor of continuing the trial date. The success of Defendants' obviousness defense depends on whether the Pepcom prototype is prior art at all, that is, whether it was in public use at Pepcom and whether it was functional. There is conflicting evidence on these issues and very little fact witness testimony. Stone and Stanford's testimony would have substantial value in resolving these disputes.

Defendants' explanation for its failure to discover these witnesses earlier is sufficient under all the facts and circumstances. The post Defendants found was made around January 2018, and there is no evidence that it was unavailable when Defendant looked for it during discovery. Thus, if Defendants had searched “#Pepcom” on Instagram during fact discovery, the post Defendants eventually found would likely have been among the results. It is not clear whether this particular hashtag was searched. Defendant's prior counsel declared that they searched a number of hash tags during discovery but cannot remember which ones they used, given the amount of time that has passed; however, Defendant's prior counsel identified Pepcom as one of the terms they used in determining which hashtags to search. In addition, Jurist declared that “#Pepcom” returned more than 2,000 results. It is understandable that, assuming Defendant made the appropriate search during fact discovery, they simply missed the one post out of 2,000 that it needed to find. Even if Defendant searched other hashtags but not this one, it does appear that a reasonable person could be satisfied with the searches conducted by Defendants.

Although Defendants could have been more diligent, there has been no suggestion that Defendants knew about these witnesses during fact discovery. This is a case of excusable neglect rather than bad faith or willfulness. This factor supports allowing the witnesses to testify.

Plaintiff's ex parte application is DENIED. Defendants may offer testimony from Helena Stone and/or Judie Stanford at trial. However, to cure any prejudice, Plaintiff will have the opportunity to take discovery about this matter. The parties shall meet and confer about whether Plaintiff intends to take depose Stone and/or Stanford and the date by which that deposition could occur, and any other discovery issues related to this matter. As noted at today's continued Pretrial Conference, the trial is continued until June 25, 2024, and there will be a further Pretrial Conference on June 20, 2024. On or before June 18, 2024, the parties shall file a joint status report stating their collective and/or respective positions as to whether an additional continuance of the trial date is necessary because of this matter.

*3 To assist in settlement, the parties have requested exemplary rulings on certain evidentiary objections. Within 24 hours of the issuance of this Order, the parties shall lodge electronic copies of the exhibits for which they have requested rulings, Exhibits 369-71, 504, and 508.]

To assist in settlement, the parties have requested exemplary rulings on certain evidentiary objections. Defendants object to Exhibits 369-71, three newspaper articles accusing Doc Morrow of homicide. See Docket No. 204 at 22. The bases for the objection are Fed. R. Evid. 402 and 403. See id. Plaintiff responds that the articles are relevant to willfulness and to enhanced damages. It appears Doc Morrow attempted to engage in witness tampering in another case involving the same parties but a different patent. SHO Products, LLC v. Puff Corp., Case No. 2:22-cv-06709-GW-(KSx), Docket No. 65 at 2-5 (C.D. Cal. July 11, 2023). The Court agrees with Defendants that this evidence is not relevant. “To prevail on its claim for willful infringement, [a plaintiff is] required to prove, by a preponderance of the evidence, that [the defendant] knew of the [asserted] patent and then engaged in ‘deliberate or intentional infringement.’ ” Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 1296 (Fed. Cir. 2023) (quoting SRI Int'l, Inc. v. Cisco Sys., Inc. (“SRI III”), 14 F.4th 1323, 1330 (Fed. Cir. 2021)). Evidence that a party engaged in witness tampering may show the party knew its position lacked merit, because it would not have as strong of an incentive to engage in witness tampering if it believed the evidence supported its position. However, although Morrow's conduct in the other case is evidence that SHO knew its position in that case lacked merit, this case involves a different patent and different issues. Thus, evidence of Morrow's witness tampering does not make it more likely than it would be otherwise that Defendants' infringement here was deliberate or intentional. The outcome is the same as to enhanced damages. The enhanced damages analysis includes, among other things, “whether the infringer deliberately copied the ideas or design of another; whether the infringer, when he knew of the other's patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed; the infringer's behavior as a party to the litigation; the defendant's size and financial condition; the closeness of the case; the duration of the defendant's misconduct; any remedial action by the defendant; the defendant's motivation for harm; and whether defendant attempted to conceal its misconduct.” Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992) (cleaned up). Evidence of witness tampering is relevant to the infringer's behavior as a party to the litigation and the defendant's efforts to conceal its misconduct; but witness tampering in another case does not tend to show that the infringer has behaved improperly in this case or that it has attempted to conceal the misconduct at issue here. Even if Morrow's witness tampering has some relevance, its probative value is severely attenuated because it occurred in a different case. And that value would be substantially outweighed by the risk of unfair prejudice. These exhibits concern witness tampering, which is criminal behavior, by a non-party to this litigation. It risks inflaming the jury against Defendants. That risk is particularly acute in the context of these three exhibits, which concern an unrelated homicide allegedly perpetrated by Morrow. The lurid details of that alleged homicide are highly inflammatory and are too far removed from the alleged witness tampering. The objection to these exhibits is SUSTAINED.

*4 Plaintiff objects to Exhibits 504 and 508. Docket No. 204 at 36. Exhibit 504 is Nicholas Hatton's expert report addressing the invalidity of the '334 Patent. Id. Plaintiff objects that this report is hearsay, and Defendants respond that Hatton will be present at trial and will testify to the opinions and images in his report. As a preliminary matter, the fact that Hatton will testify does not remove his prior statements from the ambit of the rule against hearsay. See Fed. R. Evid. 801(c)(1) (statements “the declarant does not make while testifying at the current trial or hearing” may be hearsay). Nor does the exception for a declarant-witness' prior statement assist Defendants. Defendants indicate that Hatton “will testify to the images in his report,” so his testimony will be consistent with that report. Docket No. 204 at 36. However, a prior statement that “is consistent with the declarant's testimony” only falls within this exception when it “is offered: (i) to rebut an express or implied charge that the declarant recently fabricated it or acted from a recent improper motive in so testifying; or (ii) to rehabilitate the declarant's credibility as a witness when attacked on another ground ....” Fed. R. Evid. 801(d)(1)(B). There is no reason to believe that Plaintiff will make such a charge. Plaintiff also objects to Exhibit 504 under Fed. R. Evid. 403, but this position is not persuasive. They have not adequately identified what portion of Hatton's report would be confusing, misleading, or prejudicial. However, because the rule against hearsay provides a sufficient basis for excluding this statement, the objection to Exhibit 504 is SUSTAINED; provided, however, if Plaintiff accuses Hatton of engaging in a recent fabrication or similar misconduct, Defendants' attempt to offer this exhibit may be renewed.

Exhibit 508 is Defendants' invalidity contentions, to which Plaintiff objects under the rule against hearsay, Fed. R. Evid. 402, and Fed. R. Evid. 403. Docket No. 204 at 36. The contentions are hearsay because they are, or contain, statements made outside the current trial. It does not appear that they are offered for any purpose other than the truth of the matters asserted in the contentions; indeed, Defendants offer no response to the hearsay objection. See id. Invalidity contentions, like interrogatory responses, are often admissible under Fed. R. Evid. 801(d)(2) when they are offered as an opposing party's statement. Here, however, it is Defendants who wish to offer their own contentions as evidence, which is outside this exception. As to relevance, the parties agree that certain appendices are irrelevant to the claims and defenses at trial; however, Defendants will only offer the invalidity contentions regarding the remaining triable issues, so this is not a basis for excluding the entire contentions. See id. As to the Rule 403 objection, Plaintiff has not identified which portion of the invalidity contentions would be confusing, misleading, or prejudicial. Nevertheless, because this exhibit is inadmissible hearsay, the objection to it is SUSTAINED. However, during their trial presentation, Defendants may use demonstratives that describe their position, and those demonstratives may be similar to, or the same as Defendants' invalidity contentions. Even so, those demonstratives would not be admitted as evidence.

In summary, the objections to Exhibits 369-71, 504, and 508 are SUSTAINED.

IT IS SO ORDERED.