Asher v. Colgate-Palmolive Company

Filing 105

ORDER granting in part and denying in part 75 ( 76 ) Plaintiff's Motion for Sanctions Pursuant to Federal Rule of Civil Procedure 37. Defendant shall pay all attorneys fees and costs incurred by Plaintiff in investigating and bringing forth the issue of Defendant's incorrect response to Interrogatory No. 8, including the drafting of court pleadings and review of discovery as well as appearing in Court to argue the motion and prepare the supplemental response. Defendant shall bear the costs of Plaintiff's filing of an itemized accounting of the attorney's fees and other costs as awarded herein. The motion is denied in all other respects. Plaintiff shall file his attorney's fees and costs accounting on or before 01/12/2012, by Magistrate Judge Kathleen M. Tafoya on 12/30/2011.(wjc, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Magistrate Judge Kathleen M. Tafoya
Civil Action No. 10–cv–01468–MSK–KMT

RANDALL S. ASHER, D.D.S, M.S.,
Plaintiff,
v.
COLGATE-PALMOLIVE COMPANY, a Delaware corporation,
Defendant.
ORDER

This matter is before the court on “Plaintiff’s Motion for Sanctions Pursuant to Federal
Rule of Civil Procedure 37.” [Doc. No. 75, filed October 26, 2011] (“Mot.”). Defendant
responded on November 16, 2011 [Doc. No. 84] and Plaintiff filed a Reply on December 1, 2011
[Doc. No. 92]. The court heard oral argument on this and one other motion on December 14,
2011. (See Minutes [Doc. No. 97].) As a result of certain factual assertions made at the hearing,
the court allowed Defendant an opportunity to rebut Plaintiff’s allegations that Interrogatory No.
8, the response to which is the genesis of Plaintiff’s request for sanctions, had not been formally
amended. Defendant filed its “Supplemental Response to Asher’s Motion for Sanctions [Filed
under Seal],” attaching four exhibits and limited further argument, on December 15, 2011 [Doc.
No. 95] (“Supp.Resp.”). Because Defendant’s filing contained more information than was
initially contemplated by the court, the court afforded Plaintiff the opportunity to file a rebuttal
to Defendant’s Supplemental Response. Plaintiff filed his “Supplemental Reply in Support of

Plaintiff’s Motion for Sanctions Pursuant to Federal Rule Of Civil Procedure 37 (Filed under
Seal)” on December 19, 2011. [Doc. No. 99.]
This case involves Plaintiff Dr. Asher’s contention that a “polishing pad” on Colgate’s
Max White toothbrush violates his patent by inclusion of abrasive materials in the added
member(s). (Mot. at 2.) Therefore, the abrasiveness, or non-abrasiveness, of that certain
member of the accused toothbrush is critical to the case for both parties.
On January 26, 2011, Plaintiff served his First Set of Interrogatories, including
Interrogatory No. 8, requesting
Identify all tests you have conducted, or tests conducted on your behalf, on the
Max White toothbrush and/or its polishing members, including but not limited to,
hardness tests, tests on the chemical properties, abrasivity and weight loss,
identifying the name of the individual(s) and/or businesses conducting the tests
and the results of each such test.
(Mot. at 3, Ex. B, Defendant’s Responses to Plaintiff’s First Set of Interrogatories (Nos. 1-18).)
Plaintiff also included concurrent requests for production of documents concerning testing of the
accused product and its component parts. (Id.). Defendant responded on March 25, 2011 as
follows
Colgate specifically objects to this interrogatory as overly broad, unduly
burdensome, and not reasonably calculated to lead to the discovery of admissible
evidence because it seeks information that is not relevant to any claim or defense
in this matter. Colgate further specifically objects to this interrogatory as overly
broad, unduly burdensome, and not reasonably calculated to lead to the discovery
of admissible evidence as it calls for identification of “all” tests.
Subject to Colgate’s General and Specific Objections, Colgate states that
it is not currently aware of any tests that it conducted or conducted on its behalf
related to the Max White toothbrush’s abrasivity. Colgate further states that it
conducted or caused to be conducted two tests on the MaxWhite toothbrush:
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MaxWhite vs Oral-B Indicator In-vitro IAE and MaxWhite vs Oral-B Indicator
In-vitro Stain Removal.
(Mot. at 4, Ex. B) (emphasis added). At the hearing it was revealed that Plaintiff had been
provided with data from the two prior tests listed in the response above, which were conducted
pre-litigation. Plaintiff asserts that, almost five months after Defendant’s response to
Interrogatory No. 8, he learned that certain abrasivity tests were conducted by Dr. Mark Putt, an
individual specially retained by Defendant in or about September 2010.1 (Id.) Plaintiff
contends, without contest, that Dr. Putt’s testing and his final report regarding the testing
together with his opinions derived from the testing were put in final form and provided to
Defendant Colgate on or about March 15, 2011. (Id.)
Again it is not seriously contested that the italicized portion of Defendant’s above
response to Interrogatory No. 8 was incorrect in light of Dr. Putt’s testing and report which had
been completed 10 days prior. The question before the court is whether this portion of
Defendant’s response constitutes a deliberate lie - including whether there was any nefarious
purpose for the lie - or whether the inaccurate answer constitutes slipshod drafting by
Defendant’s attorney and a failure to specifically raise a legitimate privilege objection.
ANALYSIS
Plaintiff requests that the court consider Defendant’s failure to produce Dr. Putt’s report
in March 2011, or at least to indicate its existence on a privilege log, to be evidence of a willful
intent to deceive and mislead Plaintiff prior to and during the deposition phase of discovery. As
1

There is appears to be no disagreement that Dr. Putt was retained subsequent to the
filing of this case on July 22, 2010.
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a sanction, Plaintiff requests that Defendant’s affirmative defense of non-infringement be
dismissed.
Pursuant to Fed. R. Civ. P. 26(a)(2), “a party shall disclose to other parties the identity of
any person who may be used at trial to present . . . [expert testimony, and the disclosure must] be
accompanied by a written report prepared and signed by the witness[,] . . . contain[ing] a
complete statement of all opinions to be expressed and the basis and reasons therefor.” Fed. R.
Civ. P. 26(a)(2). Supplemental disclosures may be required if the disclosing party “learns that in
some material respect the disclosure or response is incomplete or incorrect.” Id.
Fed. R. Civ. P.37(c) provides
(c) Failure to Disclose, to Supplement an Earlier Response, or to Admit.
1) Failure to Disclose or Supplement. 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. In addition to or
instead of this sanction, the court, on motion and after giving an
opportunity to be heard:
(A) may order payment of the reasonable expenses,
including attorney’s fees, caused by the failure;
(B) may inform the jury of the party’s failure; and
(C) may impose other appropriate sanctions,
including any of the orders listed in Rule
37(b)(2)(A)(i)-(vi).
“The determination of whether a Rule 26(a) violation is justified or harmless is entrusted
to the broad discretion of the district court.” Woodworker’s Supply, Inc. v. Principal Mut. Life
Ins. Co., 170 F.3d 985, 993 (10th Cir. 1999) (quoting Mid-America Tablewares, Inc. v. Mogi

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Trading Co., 100 F.3d 1353, 1363 (7th Cir.1996).) A district court need not make explicit
findings concerning the existence of a substantial justification or the harmlessness of a failure to
disclose. Id.; United States v. $9,041,598.68, 163 F.3d 238, 252 (5th Cir.1998). Nevertheless,
the following factors should guide its discretion: (1) the prejudice or surprise to the party against
whom the testimony is offered; (2) the ability of the party to cure the prejudice; (3) the extent to
which introducing such testimony would disrupt the trial; and (4) the moving party’s bad faith or
willfulness. Id. “The non-moving party has the burden of showing that they were substantially
justified in failing to comply with Rule 26(a)(1) .” E.E.O.C. v. Outback Steak House of Florida,
Inc., 2008 WL 3992172, *6 (D. Colo. 2008); Sender v. Mann, 225 F.R.D. 645, 655-56 (D. Colo.
2004) (citing Nguyen v. IBP, Inc., 162 F.R.D. 675, 680 (D. Kan.1995).)
Defendant maintains that the Dr. Putt’s report was, in March 2011, a report prepared in
anticipation of litigation by a then non-testifying expert and was therefore protected from
disclosure by work product privilege. (Resp. at 3.) Therefore, Defendant maintains that its
incorrect response to Interrogatory No. 8 was harmless and, at worst, “sloppy” drafting.2
The Court finds, as it must, that the response to Interrogatory No. 8 was neither truthful
nor accurate. The correct manner of response under the circumstances as they existed in March
2011 would have been to acknowledge an unidentified person’s participation in testing and then
to object to production of the report on the basis of work product privilege and/or that the time
for disclosure of Rule 26 expert witnesses had not yet arrived. Such a response would have
2

A transcript of the December 14, 2011 hearing has not been filed; however, defense
counsel used this term in his argument to justify the incorrect answer provided to Interrogatory
No. 8.
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alerted Plaintiff to fact that Defendant had employed an expert who had performed testing on the
accused toothbrush. Again, though, the key is whether the withholding of that information
unfairly prejudiced or harmed Plaintiff.
At the outset, the court notes that in the Scheduling Order [Doc. No. 18], filed September
21, 2010, Defendant disclosed that it intended to retain the following experts: “(a) Technical
expert to rebut Plaintiff’s infringement contentions, (b) Damages expert to rebut Plaintiff’s claim
for damages, (c) Other experts as needed.” Id. at ¶ 8(e)(1). In March 2011, then, Plaintiff was
already on notice that Defendant intended to retain a technical expert who might well perform
testing in the attempt to rebut Plaintiff’s infringement contentions. Therefore, the information
that Defendant had indeed retained such an expert for the purpose of rebutting the infringement
contentions could have little, if any, impact on Plaintiff’s plan to prosecute his case.
In support of his argument that Defendant’s untruthful answer should be met with
significant penalties, in spite of the fact that little prejudice has come to Plaintiff as a result, Dr.
Asher argues that Defendant’s willful and deceitful behavior must be severely punished
nonetheless to thwart discovery misconduct by litigants in federal court. In support of this
argument at the hearing, Plaintiff presented the court with a one-page document that Plaintiff
characterized as the same table, albeit with certain changes, as a table attached to Dr. Putt’s
expert report that was eventually provided to Plaintiff in compliance with Fed. R. Civ. P.
26(a)(2).3 Plaintiff stated that the Independent Table had been faxed to him shortly before

3

For ease of reference, this Table will be referred to as the “Independent Table.” The
Table which was actually attached to Dr. Putt’s Report will be referenced as the “Report Table.”
6

Plaintiff was to take Defendant’s Fed. R. Civ. P. 30(b)(6) deposition as part of a multi-page
production of discovery. The Independent Table is entitled “Table” followed by the heading
“Percentage Stain Reduction After Treatment.” (See, Minutes of December 14, 2011 hearing
[Doc. No. 97], Ex. 97-1, dated March 15, 2011.) Plaintiff alleges that the Independent Table
arrived buried in a group of unrelated discovery without attribution to the author of the
document. During the hearing, the court noted that the Independent Table was not an exact
duplicate of the Report Table. (See Mot., Ex. E at 9, Dr. Putt’s Expert Report.) The Report
Table is entitled “Table 4” followed by the heading “Percentage Reduction in Total Available
Extrinsic Stain After Treatment.” The data contained in both Tables is identical, however the
Report Table does not contain the Independent Table’s notation in the lower right following the
footnotes, “11CPC-L25, 3/15/2011.” This court agrees with Plaintiff that evidence of willful
redaction of a report received by Defendant from Dr. Putt in March 2011 prior to production to
Plaintiff could indicate bad faith.
Defendant, however, offers evidence that the Independent Table provided as part of
Defendant’s supplemental disclosures was not simply copied from Dr. Putt’s final report and
thereafter altered prior to production to Plaintiff. (Supp.Resp., Ex. D.) Instead, it appears from
Exhibit D that Dr. Putt himself sent the Independent Table as a stand-alone document to
Defendant’s in-house counsel on March 15, 2011 via an email transmission. Id. Dr. Putt sought
in the email, through reference to the Independent Table contained as an email attachment, to
justify his conclusion that “the data indicate that the two products [one toothbrush without the
accused member and one toothbrush containing the accused infringing item] removed similar
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amounts of extrinsic stain, and the differences between the products were not statistically
significant.” (Id.) Thereafter, defense counsel states they simply produced the Independent
Table which Dr. Putt had originally emailed to in-house counsel, to Plaintiff. In other words,
Defendants allege they have been in possession of two separate tables, both provided to them by
Dr. Putt, and that they faithfully reproduced each of the Tables, one independently in July 2011
and one as attached to Dr. Putt’s full report provided under Fed. R. Civ. P. 26(a)(2). The
difference in the implied mens rea of Defendant and its counsel between production of a willful
alteration of part of an expert’s report versus production of an isolated data collection sent to inhouse counsel independent of any report is manifest in this context—one shows willful intent to
mislead while the other shows good faith attempts to comply with discovery obligations.
Notwithstanding Defendant’s benign explanation for existence of the Independent Table
and its production to Plaintiff, Plaintiff continues to argue for sanctions, alleging that the failure
to produce the whole Putt report in March of 2011 and to acknowledge that additional expert
testing had been accomplished prejudiced him because
during the five (5) months [between the untruthful response regarding testing and
the disclosure of the full Putt report] the parties deposed several witnesses during
which the testing would have played an integral part of the examination. One of
these witnesses, Joseph Hohlbein, was the designated Rule 30(b)(6) witness
regarding testing.
Reply at 3.4
4

To the extent Defendant argues that production of the Independent Table put Plaintiff
on notice of testing done on the Max White toothbrush in March 2011 (the date included on the
Independent Table), the court disagrees. To so hold would reward a litigant for burying an
unidentified document amid other discovery and then later feign surprise that the other party did
not recognize the proverbial needle in the discovery haystack. However, given the lack of
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Plaintiff asserts that if Interrogatory No. 8 had been truthfully answered, he could have
petitioned the court for release of the report, and, if granted, that production would have
significantly influenced his conduct of certain depositions. (Reply at 3.) There is no cogent
reason, however, for Plaintiff to legitimately believe that, had Defendant properly asserted the
work product privilege after disclosing that testing been undertaken by an independent, nontestifying expert, Plaintiff would have been entitled to Dr. Putt’s report before Defendant
designated Dr. Putt as a testifying expert. Further, expert disclosure by the parties was not
required until September 19, 2011. (See Minute Order [Doc. No. 41].) In this case, as in most
other civil litigation, litigants usually go through the majority of fact discovery and depositions
long before the experts are disclosed on either side. The court finds, therefore, that no prejudice
befell Plaintiff as a result of not receiving information that Defendant had hired an expert whose
report was in final form approximately five months before the court-ordered deadline for such
disclosures.
Further, it is not refuted that the actual conclusions reached by Dr. Putt are largely
favorable to Defendant, not to Plaintiff.5 (Resp. at 4-5.) All told, the court can find no apparent
prejudice to Plaintiff from Defendant’s failure to correctly answer Interrogatory No. 8; in fact,
Defendant’s mistake has actually been detrimental to Defendant, due to the additional attorney’s

obligation on the part of Defendant in this case to actually produce the expert report in March,
2011, this point is ancillary to the analysis herein.
5

Plaintiff maintained at the hearing that Dr. Putt’s report is susceptible to challenge,
however this happenstance is not abnormal in a patent case; to the contrary, it would be rare if
opposing sides did not challenge the findings and opinions of an opponent’s expert witnesses.
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fees necessary to respond to the allegations of bad faith failure to disclose and the risk of having
its expert barred from rendering favorable testimony.
“While Rule 37(c)(1) is written in mandatory terms with respect to findings supporting
the exclusionary aspects concerning withheld discovery, it also vests the court with discretion to
impose ‘other appropriate sanctions’ in addition to, or in lieu of, an order striking witnesses for
evidence not properly disclosed.” Sender v. Mann, 225 F.R.D. 645, 655 (D. Colo. 2004) (citing
Woodworker’s, 170 F.3d at 993 [recognizing that Rule 37(c) vests broad discretion with the trial
court]); Outback Steak House of Florida, Inc., 2008 WL 3992172 at *6.
Pursuant to Rule 37, then, the court finds that Defendant provided Plaintiff with a false
answer to a relevant and appropriate question about testing which had been done or was in the
process of being done on the Max White toothbrush. Defendant failed at all times to
affirmatively correct the false answer, even when it filed its supplemental responses.6 The
failure to properly use the available discovery tools, such as a privilege log, to answer the
interrogatory truthfully and still maintain and protect the privilege, was not substantially
justified.
On the whole, however, the court must conclude that the blunder was harmless in this context.
Therefore, the court finds that the mandatory provisions of Rule 37 are inapplicable and the court
will not strike Dr. Putt’s testimony or his report on this basis.

6

The supplemental response added an objection based on privilege but unfortunately did
not correct the false representation concerning the lack of testing of the accused product.
10

The court is acutely aware, however, that Defendant is not the only party who has been
forced to incur additional attorneys fees as a result of the incorrect discovery response. Plaintiff
has been put to considerable expense to bring the matter to the court’s attention. Given the way
the Independent Table was produced, it is understandable that Plaintiff would infer an pernicious
intent when confronted with the inaccurate discovery response and the apparently altered portion
of Dr. Putt’s report, discovered only after the report was produced in connection with
identification of Dr. Putt as a testifying expert. Although the court accepts Defendant’s
explanation concerning the two Dr. Putt tables, Plaintiff should not be obligated to bear the
burden of litigation concerning an error which was caused and created by Defendant’s initial
error. Pursuant to Fed. R. Civ. P. 37(c)(1)(A), “[i]n addition to or instead of [striking the
testimony of the witness], the court, on motion and after giving an opportunity to be heard: “(A)
may order payment of the reasonable expenses, including attorney’s fees, caused by the failure . .
. .”
It is therefore ORDERED
1.

“Plaintiff’s Motion for Sanctions Pursuant to Federal Rule of Civil Procedure 37”

[Doc. No. 75] is GRANTED in part and DENIED in part as follows:
a.

Defendant shall pay all attorneys fees and costs incurred by Plaintiff in

investigating and bringing forth the issue of Defendant’s incorrect response to Interrogatory No.
8, including the drafting of court pleadings and review of discovery as well as appearing in Court
to argue the motion and prepare the supplemental response. Further Defendant shall bear the

11

costs of Plaintiff’s filing of an itemized accounting of the attorney’s fees and other costs as
awarded herein;
b.
2.

The motion is denied in all other respects.

Plaintiff shall file his attorney’s fees and costs accounting on or before January

12, 2012.
Dated this 30th day of December, 2011.

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