Soilworks LLC v Midwest Industrial Supply Inc

Filing 101

MOTION in Limine to Limit Soilworks, LLC's Evidence of Midwest's Alleged False Advertising to the Four Documents Produced by Soilworks during Discovery by Midwest Industrial Supply Inc, Midwest Industrial Supply Inc. (Attachments: # 1 Exhibit Soilworks' Responses to Midwest's Document Production Requests)(Bautista, Jill)

Soilworks LLC v Midwest Industrial Supply Inc

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Craig A. Marvinney, 0004951 (OH) John M. Skeriotis, 0069263 (OH) Jill A. Bautista, 0075560 (OH) BROUSE MCDOWELL 388 S. Main Street, Suite 500 Akron, Ohio 44311-4407 Telephone: [phone] Email: [e-mail], [e-mail], jbaut [e-mail] Admitted pro hac vice Donald L. Myles, Jr., 007464 (AZ) JONES, SKELTON & HOCHULI, P.L.C. 2901 N. Central Ave., Suite 800 Phoenix, Arizona 85012 Telephone: [phone] Email: [e-mail] Attorneys for Defendant/Counterclaimant Midwest Industrial Supply, Inc.

UNITED STATES DISTRICT COURT IN AND FOR THE DISTRICT OF ARIZONA SOILWORKS, LLC, an Arizona NO.: 2:06-CV-2141-DGC corporation, Plaintiff / Counterdefendant / Counterclaimant, v. MIDWEST INDUSTRIAL SUPPLY, INC., an Ohio corporation authorized to do business in Arizona, Defendant / Counterclaimant / Counterdefendant.
I.

MIDWEST INDUSTRIAL SUPPLY, INC.'S MOTION IN LIMINE TO LIMIT SOILWORKS, LLC'S EVIDENCE OF MIDWEST'S ALLEGED FALSE ADVERTISING TO THE FOUR DOCUMENTS IT PRODUCED DURING DISCOVERY

INTRODUCTION Defendant Midwest Industrial Supply, Inc. ("Midwest") moves this Court in limine to

limit the evidence upon which Plaintiff Soilworks, LLC ("Plaintiff") may rely to prove Midwest's alleged violations of the Lanham Act and Arizona's Common Law of Unfair Competition to the four documents it produced during discovery and on which the

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development of this case has focused.1
II.

ARGUMENT In its First Requests for Production of Documents and Things, Midwest asked

Plaintiff for documents that supported its claims: 27. [Produce] [a]ll documents, things, and electronically stored information concerning any and all factual bases for each and every claim set forth in Plaintiff's Complaint and/or Counterclaims. 28. [Produce] [a]ll documentary, physical, and electronically stored evidence that Plaintiff may or intends to rely upon in any pleading, at trial, and/or any hearing in this action. (Soilworks, LLC'S Responses to Midwest Industrial Supply, Inc.'s First Request for Production of Documents and Things ("Plaintiff's Response"), Request 27 and 28, relevant pages attached as Exhibit A). Plaintiff did not initially provide documents that were

responsive to either document request. Instead, it answered that it would provide responsive documents after the Court entered a protective order. Plaintiff also answered that it would provide a privilege log in response to the requests. Plaintiff, however, failed to provide a privilege log. Furthermore, Plaintiff only

provided four documents which allegedly supported its Lanham Act claims and its Arizona Common Law claim of unfair competition (the "False Advertising Claims"). Those four documents were: (i) Two letters, dated July 27, 2006, from Midwest to Polar Supply, in which Midwest informs Polar Supply that Soilworks may be violating Midwest's patent; (ii) A press release from Midwest, announcing its new patent; and (iii) A chart from Midwest's former website that compared Midwest's and Plaintiff's products. This motion is limited to the allegedly false statements on which Soilworks' false advertising claim is based. Midwest has filed another motion in limine regarding the remaining elements of the claim.
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At no time did Plaintiff later supplement its responses to the document requests to add new information. Thus, Plaintiff is limited pursuant to Fed. Civ. R. 37(c) to these four documents on which to prove its False Advertising Claims. Rule 26(e) of the Federal Rules of Civil Procedure requires that "[a] party who has ... responded to ... [a] request for production ... must supplement or correct its disclosure or response." Rule 37(c) of the Federal Rules of Civil Procedure provides that a party which fails to supplement its answers with new information ­ if its failure is not substantially justified or harmless ­ is "not allowed to use that information." See Zhang v. American Gem Seafoods, Inc., 339 F.3d 1020, 1028 (9th Cir. 2003); see also International Flora Technologies, Ltd. v. Clarins U.S.A., Inc., Case No. 06-1372, 2008 WL 4174894 (D.Ariz. 2008) (holding that a non-disclosed patent claim was excluded pursuant to Fed. Civ. 37(c)). If Plaintiff has other documents supporting its False Advertising Claims, it should have supplemented its responses to provide those documents. Plaintiff's failure to do so would result in sanction, pursuant to Rule 37(c), excluding the evidence. Thus, Plaintiff's proof in support of its False Advertising Claims should be limited to the four documents discussed above and testimony it may elicit regarding those documents.
III.

CONCLUSION For the foregoing reasons, Midwest respectfully submits that the Court should enter

an order limiting the evidence upon which Plaintiff may rely to prove Midwest's alleged violations of the Lanham Act and Arizona's Common Law of Unfair Competition to the four documents it produced during discovery.

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Respectfully Submitted By: /s/ Jill A. Bautista Craig A. Marvinney, 0004951 (OH) John M. Skeriotis, 0069263 (OH) Jill A. Bautista, 0075560 (OH) BROUSE MCDOWELL 388 S. Main Street, Suite 500 Akron, Ohio 44311-4407 Telephone: [phone] Facsimile: 330-253-8601 Email: [e-mail], [e-mail], [e-mail] Admitted pro hac vice Donald L. Myles, Jr., 007464 (AZ) JONES, SKELTON & HOCHULI, P.L.C. 2901 N. Central Ave., Suite 800 Phoenix, Arizona 85012 Telephone: [phone] Facsimile: 602-263-1784 Email: [e-mail] Attorneys for Defendant/Counterclaimant Midwest Industrial Supply, Inc.

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CERTIFICATE OF SERVICE The undersigned hereby certifies that a copy of the foregoing MIDWEST INDUSTRIAL SUPPLY, INC.'S MOTION IN LIMINE TO LIMIT SOILWORKS, LLC'S EVIDENCE OF MIDWEST'S ALLEGED FALSE ADVERTISING TO THE FOUR DOCUMENTS IT PRODUCED DURING DISCOVERY has been electronically filed on this 17th day of September, 2008. Notice of this filing will be sent to all parties by operation of the Court's electronic filing system. Parties may access this filing through the Court's system.

/s/ Jill A. Bautista Jill A. Bautista