Speedfit LLC et al v. Woodway USA, Inc. et al

Filing 239

DECISION AND ORDER granting in part 203 Motion to Strike. SEE ATTACHED ORDER. Ordered by Magistrate Judge A. Kathleen Tomlinson on 3/28/2019. (Tomlinson, A.)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
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SPEEDFIT LLC and AUREL A. ASTILEAN,
Plaintiffs,

DECISION
AND ORDER

- against CV 13-1276 (KAM) (AKT)
WOODWAY USA, INC.,
Defendant.
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A. KATHLEEN TOMLINSON, Magistrate Judge:
I.

PRELIMINARY STATEMENT
Defendant Woodway has filed a motion seeking to preclude the supplemental report of

Plaintiffs’ damages expert, David Wanetick, on the grounds, inter alia, that the report is untimely
and offers “new damages opinions and theories for Plaintiffs’ state law claims not previously
disclosed.” DE 203 [*SEALED*]. Further, Defendant’s counsel asserts that the most egregious
aspect of Plaintiffs’ service of the supplemental report is that the report was provided after
Defendant Woodway served the Plaintiffs with its Daubert motion challenging Mr. Wanetick’s
original report of July 27, 2015. Id. Plaintiffs oppose the motion, claiming that Wanetick’s
Supplemental Report was prepared as soon as he was able to do so once he had received
Defendant Woodway’s sales numbers. See DE 205 [*SEALED*] at 3. According to Plaintiffs,
“Mr. Wanetick’s Supplemental Report provides not only damages analysis now available for
Plaintiffs’ common law claims, but updated damages for Plaintiffs’ patent claim.” Id. For the
reasons which follow, Defendant’s motion is GRANTED, in part, and DENIED, in part.In a

II.

BACKGROUND
A.

The Pertinent Facts

This case has had a long and tortured history through the discovery process. Familiarity
with the facts and history of this action is assumed and can be found in the many Orders issued
both by this Court and by District Judge Matsumoto. See, e.g., Speedfit LLC v. Woodway USA,
Inc., 226 F. Supp. 3d 149 (E.D.N.Y. 2016); Speedfit LLC v. Woodway USA, Inc., 53 F.Supp. 3d
561 (E.D.N.Y. 2014); Speedfit LLC v. Woodway USA, Inc., No. 13-CV-1276, 2015 WL 6143697 (E.D.N.Y. Oct. 19, 2015). Those facts will not be repeated here except to the extent they
impact the motion. Since the issues involved in this motion deal primarily with procedural
matters, the Court will address only those facts which are pertinent to the arguments of counsel.
This patent infringement action concerns the inventorship and development of a
manually-powered treadmill, currently marketed by Defendant Woodway (“Woodway”) and
known as the “Curve” treadmill. Speedfit LLC (“Speedfit”) and Aurel Astilean (“Astilean”)
(collectively, “Plaintiffs”) brought this action against Woodway USA, Inc. (“Defendant” or
“Woodway”) seeking (1) a declaratory judgment invalidating the Defendant Patent App. because
it misrepresented who the inventor of the Curve treadmill was and declaring Plaintiff Astilean the
sole inventor of the Curve; (2) in the alternative, a declaratory judgment, adding Plaintiff
Astilean as co-inventor of the pending Defendant Patent App.; (3) breach of contract; (4) unjust
enrichment; (5) constructive trust; and (6) breach of fiduciary duty and conversion. See generally
Original Complaint [DE 1]. According to the Plaintiffs, Woodway misappropriated “the unique
concept, design and know-how for constructing a non-motorized treadmill invented by Astilean

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and a non-party, Dan Bostan.” Third Amended Complaint (“TAC”) [DE 125] ¶ 2. Further,
Woodway acted as if the patent rights were its own and “marketed and wrongfully sold the
product embodying the inventive non-motorized treadmill . . . as if it were its own.” Id. The
TAC asserts that Astilean is a former world-class athlete who founded Speedfit. He teaches a
“low-impact, injury-free, high-energy approach to fitness. . .” Id. ¶ 4. The pleading further
asserts that Astilean and Speedfit “developed the leg-powered, non-motorized treadmill, which is
the subject of this action, and which was converted by Defendant.” Id.

Plaintiffs allege that

Woodway wrongfully infringed the ‘619 Patent and ‘016 Patent, both of which are directed to a
non-motorized treadmill design. TAC ¶¶ 6-9. Plaintiffs further allege that Woodway wrongfully
infringed the ‘627 and ‘169 Patents (together with the ‘619 and ‘016 patents, the “Woodway
Patents”) which also relate to manually-powered treadmills. Id. ¶¶ 9-13. They seek multiple
forms of relief. See TAC, “WHEREFORE CLAUSE” at page 29.
B.

Procedural Posture

On October 19, 2015, Judge Matsumoto granted Plaintiffs’ motion to amend their Second
Amended Complaint to: (1) add claims to correct the inventorship of three Woodway patents to
include Plaintiff Aurel Astilean and Dan Bostan as inventors or co-inventors; (2) add a claim of
conversion of the Woodway patents from Plaintiff Speedfit; and (3) seek a declaratory judgment
that Astilean and/or Bostan are the sole or joint inventors of the Woodway Patents. See DE 124.1
Plaintiffs filed their Third Amended Complaint on October 23, 2015. As part of her October 19,

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On July 14, 2015, Judge Matsumoto had thegranted Plaintiffs’ motion to correct the
inventorship of Astilean’s patents to include Bostan as a co-inventor. DE 121.
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2015 Order, Judge Matsumoto referred the parties to this Court “to schedule a conference and set
new deadlines for discovery.” See Elec. Order October 19, 2015.
Woodway moved for a pre-motion conference to dismiss the TAC on October 30, 2015.
See DE 126. Woodway’s counsel argued that the Plaintiffs lacked standing as to their
infringement claims because non-party Dan Bostan who is a named co-inventor of the Astilean
Patents was not voluntarily joined as a co-plaintiff nor could he be so joined because he was in
Canada, outside the Court’s jurisdiction. Id. Counsel for the plaintiffs responded that this was
the third attempt by the Defendant to dismiss the Plaintiffs’ claims on the “flimsiest of
technicalities.” DE 129. Plaintiffs insisted that they had standing with respect to the
infringement claims, and that Woodway’s desire for motion practice should be deferred to
summary judgment. Id. During a pre-motion conference on November 10, 2015, Judge
Matsumoto pointed out that based on the Federal Circuit’s 2010 decision in Abraxis Bioscience,
Inc. v. Navinta, LLC, it appeared that Speefit lacked standingto sue for patent infringement at the
time Plaintiffs filed their infringement claims. See Electronic Order of November 10, 2015.
Based on that circumstance, Judge Matsumoto proposed treating the Defendant’s pre-motion
conference letter and Plaintiffs’ response letter as briefing on the subject matter jurisdiction
issue. Counsel were directed to confer with their clients concerning a proposal and to respond at
a conference, which was then scheduled for November 12, 2015. Id. Counsel and their clients
agreed to the proposal; however, plaintiffs requested leave to submit supplemental briefing and
Judge Matsumoto set a schedule for that purpose. Id. The motion was fully briefed on
November 25, 2015.

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On December 28, 2016, Judge Matsumoto issued a Memorandum & Order granting in
part and denying in part Defendant’s motion to dismiss the TAC. See DE 143. Plaintiffs’ claims
for infringement of the ‘016 and ‘619 Patents as well as the claim for conversion were
dismissed. Id. The motion was denied with respect to Plaintiffs’ claims for correction of
inventorship. Id. The parties were instructed to confer and to advise Judge Matsumoto by
January 9, 2017 how they intended to proceed. Counsel filed separate letters outlining their
proposals on January 9, 2017. See DE 145, 146.
Defendant’s motion for summary judgment on invalidity was fully briefed on June 6,
2017. Judge Matsumoto issued her decision on the Markman issues on August 15, 2017. See
DE 189. On June 17, 2018, Judge Matsumoto set a briefing schedule for the parties’ Daubert
motions.
III.

THE PARTIES’ CONTENTIONS
At the outset, Defendant’s counsel points out that the July 13, 2018 supplemental report

by Plaintiffs’ damages expert David Wanetick (“Wanetick”) “was served nearly three years past
the deadline for expert disclosures and offers new damages opinions and theories for Plaintiffs’
state law claims not previously disclosed.” DE 203 [emphasis in original]. Defendant
particularly objects to the fact that the report was served after Woodway served Plaintiffs with its
Daubert motion which purportedly challenges Wanetick’s original report of July 27, 2015. Id.
at 2. According to Defendant’s counsel, Woodway’s Daubert motion “provided a roadmap to
the problems with [Wanetick’s] opinions.” Id. Defendant asks the Court to issue an order

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precluding Plaintiffs’ use of and reliance on any opinions from the supplemental report with
respect to the state law claims. Id.
Once Plaintiffs served Wanetick’s expert report, Defendant served its rebuttal report on
August 26, 2015. Defendant’s counsel points out that Wanetick was then deposed on August 28,
2015. In addition to the new theories of damages which Plaintiffs’ expert has expounded,
Defendant’s counsel draws the Court’s attention to the fact that (1) the cost information
Wanetick is relying on to support his new theories was never produced in either fact or expert
discovery (including the underlying invoices and/or summary information), and (2) the factual
predicate for Wanetick’s new theories directly contradicts Plaintiffs’ sworn deposition testimony.
Id.

According to Defendant’s counsel, Wanetick made clear at his deposition that his expert

report did not compute damages for any of Plaintiffs’ state law claims and that he was not
offering any lost profits opinions, which is exactly what Defendant says he is attempting to offer
now. Id. Moreover, counsel argues that Defendant’s expert had no opportunity to refute or
address these points at all. Id. On July 23, 2018, Woodway’s counsel met and conferred with
Speedfit’s counsel and requested that Speedfit withdraw Wanetick’s supplemental opinion
relating to the common law claims from his July 13, 2018 report, but Speedfit declined to do so.
Id. at 4.
Plaintiffs, on the other hand, assert that Wanetick’s Supplemental Report was not
provided in response to Defendant’s motion to preclude his testimony under Daubert. DE 205 at
1. Plaintiffs’ counsel acknowledges, in fact, that the Supplemental Report provides Wanetick’s
analysis for Speedfit’s common law claims. Counsel states that

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Mr. Wanetick’s Supplemental Report provides his damages analysis for
Plaintiffs’ common law claims. At the time Mr. Wanetick prepared his
initial report, he did not have the requisite data to perform such an
analysis to wit: sales or cost summaries from Speedfit, because there was
no accounting of sales at the time of his report.

DE 205 at 1. Plaintiffs blame Defendant for the delay here. According to Plaintiffs, they “long
ago requested Defendant’s sales figures for Woodway’s sale of the Speedboard” although they do
not cite when the request was made or in what manner. Id. at 2. Plaintiffs take the position that
their “request was ongoing and Defendant has a continuing obligation to supplement its
responses.” Id. After three years had passed and they did not get the information, Speedfit’s
counsel states that Plaintiffs “demanded Woodway supplement and produce its sales figures.” Id
In the end, Plaintiffs contend that Wanetick’s testimony concerning damages will assist
the trier of fact in assessing Plaintiffs’ losses. Id. at and 3. Counsel argues that the
“Supplemental Report does not change or contradict anything in Mr. Wanetick’s original report”
and that Defendant’s motion should be denied. Id.
IV.

DISCUSSION
A.

The Standard of Review

Both sides have relied on the factors set forth in Sofitel, Inc. v. Dragon Med. & Scientific
Commc’ns, Inc., 118 F. 3d 955 (2d Cir. 1997) and Outley v. City of New York, 837 F.2d 587 (2d
Cir. 1988) to support their respective arguments. Rule 26 of the Federal Rules of Civil Procedure
states that “a party must make these [expert] disclosures at the times and in the sequence that the

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Court orders.” Fed. R. Civ. P. 2(a)(2)(D). The deadlines for sequencing expert discovery in this
case were discussed multiple times with counsel and were set forth in Court orders.
To determine whether preclusion is an appropriate remedy, “the Court must consider the
following factors: ‘(1) the party’s explanation for the failure to comply with the discovery order;
(2) the importance of the testimony of the precluded witness; (3) the prejudice suffered by the
opposing party as a result of having to prepare to meet the new testimony; and (4) the possibility
of a continuance.’” Softel, 118 F.3d at 961 (quoting Outley, 837 F.2d at 590-91).
This case is not the typical scenario where a court is asked to determine whether a
supplemental expert report should be permitted when it is filed a few days or a few weeks late or
is filed to correct information that was incorrect in an original expert report. “[Rule] 26(e) does
not grant a license to supplement a previously filed expert report because a party wants to, but
instead imposes an obligation to supplement the report when a party discovers the information it
has disclosed is incomplete or incorrect. . .” Levinson v. Westport Nat’l Bank, Nos. 3:09cv269,
3:09-cv-1955, 3:10cv261, 2013 WL 3280013, at *4-5 (D. Conn. June 27, 2013) (internal
citations and quotation marks omitted); Cedar Petrochem., Inc. v. Dongbu Hannong Chem. Co.
Ltd., 769 F. Supp. 2d 269, 278 (S.D.N.Y. 2011) (noting that “experts are not free to continually
bolster, strengthen, or improve their reports by endlessly researching the issues they already
opined upon, or to continually supplement their opinions”) (internal quotation marks omitted).
“If an expert’s report ‘does not rely [on] any information that was previously unknown or
unavailable to him,’ it is not an appropriate supplemental report under Rule 26.” Id. at 278

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(quoting Lidle v. Cirrus Design Corp., No. 08 Civ. 1253, 2009 WL 4907201, at *5-6 (S.D.N.Y.
Dec. 18, 2009) (“Lidle I”).
B.

Application to the Facts

In the circumstances of this case, the Court finds that Plaintiffs are conflating the ability
of a party’s expert to update a previous damages calculation – based, for example, on additional
sales of an infringing product in the period between the issuance of the expert report and the time
of trial – with a party’s expert asserting new theories of damages which were never conveyed to
the adversary in the first instance during either the fact or expert discovery periods. As such, the
instant motion does not dovetail perfectly with Softel and Outley. However, these two oft-cited
decisions provide guidance for the Court in make an assessment of whether the Wanetick
Supplemental Report should be precluded.
Rule 37 of the Federal Rules of Civil Procedure provides in pertinent part that “[I] a party
fails to provide information . . . as required by Rule 26(a) or (e), the party is not allowed to use
that information . . . to supply evidence on a motion, at a hearing, or at trial, unless the failure
was substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1); see Allen v. Dairy Farmers
of America, Inc., No. 5:09-cv-230, 2014 WL 2040133, at *6 (D. Vt. May 16, 2014) (finding that
the Outley factors justified granting defendant’s motion to strike plaintiff’s supplemental expert
report). Defendant here argues that Wanetick’s Supplemental Report proffers new damages
opinions and theories for plaintiffs’ state law claims, which were not previously disclosed.
DE 203 at 2. According to the Defendant, the new opinions relate to Plaintiffs’ breach of

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contract, unjust enrichment, conversion, and constructive trust claims.2 Plaintiffs never provided
the Defendant with the underlying invoices and/or summary information on which Plaintiffs’
expert Wanetick relies. Id. n.5 In fact, Defendant’s counsel contends that Plaintiffs’ expert
appears “to be relying on ‘historical sales summaries’ of ‘Speedfit’s Sales of the Speedfit Curve
(2015 – April 30, 2018)’ and cost information that Plaintiffs never produced either in fact or
expert discovery” (emphasis in original). Id. at 2.
Plaintiffs’ opposition does not directly rebut these arguments. However, in a cursory
fashion, Plaintiffs’ counsel offers the following rationale for a purported lack of sales data vis-avis the fact and expert discovery deadlines:
Clearly, any sales of the Speed fit Speed board were in the very beginning
stages as of the date of Mr. Astilean’s deposition and, therefore, no sales
data was available until months after sales began. Nonetheless, based
upon Mr. Astilean’s deposition testimony, Defendant was well aware that
sales by Speedfit were forthcoming and would be a component of
damages. Nor can Defendant claim prejudice, since the Supplemental
Report merely memorializes the age old definition of “profits” which is
“The excess of revenues over expenditures in a business transaction.”
(Black’s Law Dictionary, 7th ed.).

DE 205 at 2. Again, the issue here is not an update with respect to sales. That was a given.
Rather, it is the assertion by Plaintiffs’ expert of new damages theories relating to the Plaintiffs’
state law claims being introduced at the eleventh hour.
Although the docket history of this case is lengthy, the Court finds that certain entries in
the docket belie the position and somewhat spartan arguments which Plaintiffs have asserted here

2

The conversion claim was dismissed on December 28, 2016 (see DE 143).
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to avoid preclusion of Mr. Wanetick’s Supplemental Report. Aside from the lengthy history of
extensions (and warnings about no further extensions),3 new pleadings, discovery motions, etc.,
the Court is compelled to take into account Plaintiffs’ own representations in the record
concerning deadlines for expert discovery as well as what was and was not part of the expert
reports as agreed upon by counsel. Fact discovery deadlines were set and continuously extended.
On February 19, 2015, this Court “reluctantly” granted a final extension for all fact depositions to
April 24, 2015 [DE 89]. In a May 7, 2015 letter to Judge Matsumoto, Plaintiffs’ counsel advised
that the parties could not agree on a proposed expert witness schedule. Defendant’s counsel
proposed an expert discovery schedule which set August 28, 2015 as the deadline for exchange
of expert reports and expert discovery, as well as expert depositions. See DE 104. For a variety
of reasons, Plaintiffs’ counsel objected to this proposed expert discovery schedule -- some
involving other motion practice which was contemplated. Although plaintiffs objected to the
proposed schedule, they did not provide any alternative proposal, but left it to the Court to make
a determination. See DE 103. On May 15, 2015, Judge Matsumoto issued an electronic order
and extended the deadline for expert discovery to September 28, 2015.
Of significance to the Court’s consideration here are the parties’ status reports filed to
Judge Matsumoto on January 9, 2017 at her direction. Although Judge Matsumoto had directed
counsel to provide a joint letter, the parties were unable to agree on the contents of a joint letter.
In Woodway’s letter, counsel made the following statement on page 2 under the heading “Status

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The record discloses that from the filing of the Complaint in March 2013 until one of many
conferences - this one being held on October 24, 2014, some 19 months later – Plaintiffs
purportedly had produced only five documents in discovery (although Plaintiffs dispute that
number).
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of Discovery and Dispositive Motions.” DE 145 at 2. Directly thereafter, counsel stated: “All
discovery– fact and expert discovery – is complete with respect to Plaintiffs’ state law
claims.” Id. (emphasis supplied). The letter went on to note that no discovery had been taken
with respect to the allegations concerning correction of inventorship as to the Woodway patents.
Woodway’s counsel proposed a schedule for expert reports and depositions on that topic – all to
be completed by May 12, 2017 – and further proposed that discovery should be reopened solely
for that purpose. Counsel added that “no additional expert reports regarding any other issues
should be permitted without leave of Court.” Id. On the same day, Speedfit’s counsel filed his
letter advising Judge Matsumoto that Plaintiffs were looking to amend the TAC to add Dan
Bostan as a plaintiff, along with the new claims for infringement of the ‘619 and ‘016 patents.
See DE 146. The following statement of Plaintiffs’ counsel is particularly noteworthy: “All
discovery – fact and expert discovery – is complete with respect to Plaintiffs’ state law
claims.” Id. However, Plaintiffs’ counsel went on to note that “limited discovery will be
necessary to fully investigate Plaintiffs’ claims to correct inventorship for the patents that issued
after the close of fact discovery.” Id. at 3. These statements make it clear that as far as counsel
for both sides were concerned, all discovery with respect to the state law claims was completed at
that point. The only thing left for discovery purposes was the limited discovery needed on the
issue of Plaintiffs’ pursuit to correct the inventorship of the patents. The Court finds that the
parties are and should be bound by these representations.
A month after these submissions were made, on February 17, 2017, the parties filed a
joint letter to Judge Matsumoto and this Court. That document notes that the parties were
writing to present their “proposed briefing schedule for additional discovery as well as claim
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construction and any dispositive motions, as required by the Order entered pursuant to the Status
Conference of January 19, 2017.” DE 152. Plaintiffs’ counsel stated in his portion of the letter
that Plaintiffs required information “relating to any sales by the Defendant of non-motorized
treadmills with a curved running surface since the time that fact and expert discovery closed in
April 2015.” Id. Also included was plaintiffs’ proposed schedule for the completion of the
limited discovery approved, as well as claim constructions briefs, Daubert motions and summary
judgment motions. Id. In Woodway’s portion of the letter, counsel stated that the parties were in
partial agreement about additional fact discovery. Specifically, Defendant’s counsel stated that
Woodway “does not oppose providing supplemental sales and cost information for its suite of
curved, manual treadmills.” Id. Counsel went on to note that Woodway “also does not oppose
providing a bill of materials and related product design drawings for those curved, manual
treadmill products that Woodway USA has introduced since the April 24, 2015 close of fact
discovery, notwithstanding these products’ public availability.” Id. Defendant’s counsel then
proceeded to Woodway’s proposed scheduled to complete the pre-trial phase of the case. Id.
This Court then saw the parties for a Status Conference on March 6, 2017. This
conference was particularly important with respect to the issues raised in the present motion.
The Court first noted that the Conference had been scheduled to address the limited discovery
remaining in light of the Supplemental Complaint having been filed. See DE 154. The Court
draws attention to the pertinent parts of the Civil Conference Minute Order from the March 6,
2017 Conference:
UNITED STATES DISTRICT COURT

CIVIL CONFERENCE

EASTERN DISTRICT OF NEW YORK

MINUTE ORDER

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BEFORE:

A. KATHLEEN TOMLINSON

DATE: 3-6-2017

U.S. MAGISTRATE JUDGE

TIME: 10:30 a.m. (55 minutes)

Sp e e d fit LLC, e t al. v . Wo o d w ay USA, In c ., e t al., CV 13-1276 (KAM) (AKT)
TYPE OF CONFERENCE:

DISCOVERY STATUS CONFERENCE

APPEARANCES:

Plaintiffs:

John Vodopia

Defendants:

Kadie M. Jelenchick

FTR:

10:30-11:25

SCHEDULING:
This case is set down for a Telephone Status Conference on June 13, 2017 at 11 a.m. Plaintiff’s counsel is
requested to initiate the call to Chambers with all parties on the line.
THE FOLLOWING RULINGS WERE MADE:
1.

Today’s conference was scheduled in response to the parties’ joint letter to Judge Matsumoto and the
undersigned setting forth each sides position with regard to discovery which still needs to be conducted in this
action, particularly in light of the Supplemental Complaint filed by the plaintiffs. The parties differ as to the
scope of that discovery.
*

4.

*

Plaintiffs’ counsel stated that the plaintiffs are not seeking to re-open discovery on the state law
claims. However, counsel does want limited discovery for the new products.
*

9.

*

*

*

Counsel brought up the issue of the existing expert reports which were served back in 2015. Certainly the
parties are entitled to supplement/update those reports on the issue of damages as to the products sold
since the original expert reports were served. This is not an opportunity to amend any theory of
damages based on updated sales information.

DE 154 (emphasis supplied). This Order reflects the fact that as far into this case as March 6,
2017, Plaintiffs still maintained the position that they were not looking to re-open discovery with
respect to the state law claims. Moreover, it was clear to both counsel and the Court that any
update to the expert reports on the issue of damages was solely for the purpose of reflecting sales
of products sold since the original expert reports were served. Likewise, it was made plain to
Plaintiffs by the Court as the language demonstrates that this was not an opportunity to amend or
add any new theory of damages with respect to the state law claims.

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The first Softel factor (explanation for failure to comply with the Scheduling Orders)
weighs in favor of preclusion. Plaintiffs’ opposition does little to address this issue. From the
Court’s perspective, it appears that plaintiffs are not distinguishing between, as noted earlier,
between and expert’s entitlement to update a previous damages calculation based on additional
sales made while the litigation proceeded and up to the time of trial. There is a sharp distinction
between that right to update and the assertion of entirely new theories of damages which were
never conveyed to the adversary in the first instance during either the fact or expert discovery
periods. Plaintiffs’ position is further belied by the representations/acknowledgments in the
record that fact and expert discovery were complete in 2015 with respect to Plaintiffs’ state law
claims. Moreover, the assertion by Wanetick and Plaintiffs that the sales information was not
available at the time of his original report is undermined by the Schedules accompanying the
Supplemental Report which show sales and costs which predate the July 27, 2015 opening report.
Plaintiffs have no viable explanation why this issue was not addressed by them until three years
after the fact, other than to place the blame on Woodway. Plaintiffs had every opportunity to
come back to the Court in 2015, or shortly thereafter, to request that discovery be re-opened in
order to deal with this issue. They did not do so and they have presented no good cause
explanation for their failure to act.
As to the second factor (importance of the expert testimony), the Court has no doubt that
the Plaintiffs would like to bolster the earlier expert opinion so as to increase the damages claim.
Significantly, the Plaintiffs do not explain any likely impact on their case if the Supplemental
Report is excluded. See Allen, 2014 WL 2040133, at *7. In light of the fact that the Plaintiffs
are not going to be precluded from using any portion of the Supplemental Report which deals
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with an update of their previous damages calculation based on additional sales made while the
litigation has proceeded, is not as if the Plaintiffs are being deprived of an opportunity to present
expert testimony as to their damages and the manner in which such damages were calculated.
The weight of the second factor is therefore evenly split between the parties.
With respect to the third factor (prejudice to the defendant). This litigation has gone on
for nearly six years. Tremendous time and resources have been expended by both sides,
particularly with respect to extensive and ongoing motion practice. The Markman hearing has
been completed and a decision rendered by the Court; summary judgment has been completed
and a decision rendered; fact discovery was long ago completed with respect to the areas
impacted by this motion; multiple settlement conferences were conducted; Daubert motions have
been filed. It is time for this case to move forward to completion within a reasonable time. The
Court finds that the Defendant would be significantly prejudiced by opening this matter up to
further discovery, depositions and motion practice. The Plaintiffs were in a position to deal with
the current issues several years ago and were certainly able to move for relief before the Court at
that time, as they had done in so many instances. They took no action and should not be
rewarded at this juncture for the lack of diligence.
As to a continuance, the Court finds that a continuance is not reasonable in the
circumstances. Given the numerous extensions of the discovery deadlines, the further delay of
this nearly six-year-old case is neither deserved not warranted and the additional costs such delay
would impose are not reasonable. In summary, balancing the Softel factors weighs in favor of
granting the Defendant’s motion to preclude.

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V.

CONCLUSION
For the foregoing reasons, the Court GRANTS, in part, Defendant’s motion to preclude

Plaintiffs’ use of and reliance on opinions from the Wanetick Supplemental Report to the extent
those opinions relate to new theories of damages concerning the Plaintiffs’ state law claims.
However, to the extent the Supplemental Report deals with an update of Plaintiffs’ previous
damages calculation based on additional sales made while the litigation has proceeded, plaintiffs
are free to utilize that information going forward.
SO ORDERED.

Dated: Central Islip, New York
March 28, 2019
/s/ A. Kathleen Tomlinson
A. KATHLEEN TOMLINSON
U.S. Magistrate Judge

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