SYNGENTA CROP PROTECTION, LLC v. WILLOWOOD, LLC et al

Filing 278

MEMORANDUM OPINION AND ORDER. Signed by JUDGE CATHERINE C. EAGLES on 8/2/2017, that 1. Syngentas Motions in Limine Numbers 8 and 11, (Doc. 213 ), and its Motion in Limine Number 13, (Doc. 242 ), are GRANTED in part and Willowood is preclude d from (a) Offering the testimony of Matt Heinze, Rajesh Jain, Sophia Wang, Ann Tillman, Cathy Zhu, Fei Wang, Felix Chen, Vince Miata, Chen Ming, Chiu Zhenghong, or Mr. Li. (b) Offering new documents from third-parties or from Tai He. 2. Because Syngenta withdrew its motion in limine as to Andy King, as to him the motion is DENIED and Willowood may offer his evidence at trial. (Daniel, J)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
SYNGENTA CROP PROTECTION,
LLC,
Plaintiff,
v.
WILLOWOOD, LLC; WILLOWOOD
USA, LLC; WILLOWOOD
AZOXYSTROBIN, LLC; and
WILLOWOOD LIMITED,
Defendants.

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1:15-CV-274

MEMORANDUM OPINION AND ORDER
Catherine C. Eagles, District Judge.
Through three motions in limine, Syngenta seeks to preclude Willowood from
using recently disclosed witnesses and documents at the upcoming trial. This evidence
concerns whether the process for manufacturing Willowood’s azoxystrobin technical
infringes the ‘138 and ‘761 patents and whether there are non-infringing alternatives to
the patented processes.1 Because Willowood’s late disclosure was not substantially
justified and is not harmless, the Court will grant the motions in limine and exclude
Willowood’s late-disclosed witnesses and documents.
The trial of this case will begin on September 5, 2017. Doc. 136 at ¶ 1. Pursuant
to the Court’s orders, Willowood and Syngenta exchanged pretrial disclosures on May

1

Details on the facts and procedural history of this case are set forth in several previous
decisions and orders and are not repeated here. See, e.g., Doc. 141; Doc. 265 at 1-4.

25, 2017 and then filed them on June 1, 2017. See Docs. 188, 189. In its pretrial
disclosures, Willowood identified several witnesses it intended to call to testify at trial
who had not been listed as potential witnesses in its Rule 26 initial or supplemental
disclosures. Compare Doc. 188-1 at 2 with Doc. 120-5 at 2 and Doc. 118-2 at 2-6.2 On
the 3rd and 5th of July 2017, Willowood identified and provided copies of several
documents as trial exhibits which it had not previously disclosed during discovery. Doc.
256-1 at ¶¶ 9-10. Syngenta moves to preclude these witnesses from testifying and to
exclude the documents from evidence under Federal Rule of Civil Procedure 37(c). Doc.
213; Doc. 214 at 24-25, 28-29; Doc. 242.3
Early in the litigation, a litigant must disclose the information and witnesses that it
“may use to support its claims or defenses.” Fed. R. Civ. P. 26(a)(1)(A)(i). “The purpose
of Rule 26(a) is to allow the parties to adequately prepare their cases for trial and to avoid
unfair surprise.” Russell v. Absolute Collection Servs., Inc., 763 F.3d 385, 396 (4th Cir.
2014). A party must also supplement its disclosures if it obtains new information, “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. P. 26(e)(1)(A).
Federal Rule of Civil Procedure 37(c) provides “strong inducement” for following
the disclosure requirements of Rule 26(a) and (e). Fed. R. Civ. P. 37(c) Advisory Comm.

2

Willowood did list Tai He, the employer of two of the newly disclosed witnesses, as a
company “likely to have information relating to the process(es) by which Defendants’
Azoxystrobin Technical is manufactured.” Doc. 118-2 at 4-5.
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Syngenta later withdrew its objection to the testimony of Andy King. Doc. 257 at 13.
2

Notes (1993). “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 . . . at trial,
unless the failure was substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1).
The Fourth Circuit considers the following factors to be “helpful in determining
whether a party’s nondisclosure of evidence was substantially justified or harmless:”
(1) the surprise to the party against whom the evidence would be offered;
(2) the ability of the party to cure the surprise; (3) the extent to which
allowing the evidence would disrupt the trial; (4) the importance of the
evidence; and (5) the nondisclosing party’s explanation for its failure to
disclose the evidence.
S. States Rack & Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592, 596-97 (4th Cir.
2003). The first four factors “relate primarily to the harmlessness exception, while the
last factor, addressing the party's explanation for its nondisclosure, relates mainly to the
substantial justification exception.” Bresler v. Wilmington Tr. Co., 855 F.3d 178, 190
(4th Cir. 2017).
Whether the late-disclosed evidence is harmful to the opposing party often
depends on whether any resulting surprise, or prejudice, to the opposing party can be
cured. See S. States, 318 F.3d at 596. For instance, in Bresler, the Fourth Circuit upheld
the admission of a new damages calculation as harmless because surprise was minimal
when the new calculation decreased damages and the opposing party had notice of the
damages theory and did not take steps to cure potential harm despite having the exhibit
for two months before trial. 855 F.3d at 193-94. In contrast, the Fourth Circuit upheld
the exclusion of a new witness and new evidence disclosed two months before trial to
prevent unfair surprise when the defendant did not identify its own employee as a
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potential witness and when the new evidence presented “an entirely new factual basis”
for its defense. Russell, 763 F.3d at 397-98.
Disruption to trial also weighs against admission of late disclosed evidence.
Additional rounds of depositions and supplemental reports and briefing would
completely disrupt the trial schedule, and ongoing objections to an undisclosed witness’
testimony and evidence offered in rebuttal disrupt the trial itself. See BorgWarner, Inc. v.
Honeywell Int’l, Inc., 750 F. Supp. 2d 596, 605-06 (W.D.N.C. 2010) (excluding
testimony by a late-disclosed expert).
1. The Evidence at Issue
Willowood proposes to call five witnesses and to offer into evidence two new
groups of documents, none of which were previously disclosed as witnesses and
information that it might use “to support its claims or defenses.” Fed. R. Civ. P.
26(a)(1)(A); see Doc. 188-1 (listing witnesses); Doc. 220 (adding Exhibits 167-69).
Willowood proposes to call three of its own employees as witnesses. Matt Heinze
would be asked questions about various emails that he wrote or received on Willowood’s
pricing, sales, and marketing of azoxystrobin and that Syngenta plans to place in
evidence. Rajesh Jain and Sophia Wang would be asked questions about various emails
that they wrote or received concerning the etherification and condensation steps of the
manufacturing process.
The first group of documents consists of process descriptions from third-party
manufacturers, particularly CAC Chemical and an Indian manufacturer, on how they
manufacture azoxystrobin. See Doc. 256-1 at ¶ 10; Doc. 220 at 15 (describing Exhibits
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167-68). Willowood has also identified two employees of CAC, stating that it intends to
call one of them to authenticate the CAC documents and explain the process that the
documents describe. See Doc. 226 at 20.
The second group of documents consists of inventory and warehouse records from
Tai He, Willowood’s supplier of azoxystrobin. See Doc. 256-1 at ¶ 9; Doc. 220 at 15
(describing Exhibit 169). Willowood asserts that these documents tend to prove that
Willowood does not infringe the ‘138 Patent because they show that Tai He purchases an
intermediate product from another Chinese manufacturer, rather than performing the
etherification step itself. Willowood also asserts that these documents tend to prove that
Willowood does not infringe the ‘761 Patent because they do not show any purchases of
DABCO. Finally, it has identified two employees of Tai He as potential witnesses,
stating that it would call one of them to authenticate and explain the recently disclosed
documents. See Doc. 226 at 19-20 & n.8.
2. Willowood did not timely disclose the witnesses and documents.
Willowood did not identify these witnesses or documents in its initial disclosures,
or in any supplement, as witnesses or documents it would use to support its defenses. See
Doc. 120-5 at 2; Doc. 118-2 at 2-6. Willowood did not identify the witnesses and
provide the documents until some ten months after the close of discovery. See Doc. 48 at
¶ 4 (ending fact discovery, apart from limited extensions, on July 29, 2016); Doc. 188-1
(listing new witnesses in pretrial disclosure on June 1, 2017); Doc. 256-1 at ¶¶ 9-10
(explaining new documents were disclosed in early July). At that point, Syngenta could
not depose the witnesses or conduct additional discovery on the newly disclosed
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documents without the Court’s permission. Moreover, trial was fast approaching and
pretrial hearings and deadlines for motions, proposed instructions, and other trial-related
documents required by the Court filled the time leading up to trial. See Doc. 136.
Willowood contends that it had otherwise made known to Syngenta that Matt
Heinze, Rajesh Jain, and Sophia Wang were likely to be called as witnesses. See Fed. R.
Civ. P. 26(e)(1)(A). Rule 26(e) provides that a litigant must supplement its initial
disclosures under Rule 26(a) when “the additional or corrective information has not
otherwise been made known” to the opposing party. Id. Willowood contends that
because these three employees were mentioned in emails disclosed by Willowood and
came up during depositions of other witnesses, Syngenta was on notice that they might be
called as witnesses.
Mentioning a potential witness during discovery or producing documents
disclosing their names does not ordinarily satisfy the disclosure requirements of Rule 26.
E.g., Ollier 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).4 Reference to a witness in discovery documents,

4

Nat'l Union Fire Ins. Co. v. Tyco Integrated Sec., LLC, No. 13-CIV-80371, 2015 WL
11251736, at *1 (S.D. Fla. July 29, 2015) (“[T]he mere identification of a witness is insufficient
to negate a plaintiff's need to supplement.”); Coene 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.”); Lujan v.
Cabana Mgmt., Inc., 284 F.R.D. 50, 72 (E.D.N.Y. 2012) (“[T]he mere mention of a name in a
deposition or interrogatory response is insufficient to satisfy Rule 26(a)(1)(A)(i).”).
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interrogatories, or depositions or even knowledge that someone has relevant information
is insufficient to provide notice that the person might be called as a witness by the
opposing party. E.g., World Wide Ass’n of Spec. Programs v. Pure, Inc., , No. 2:02-CV00010, 2004 WL 5620058 at *5 (D. Utah July 20, 2004) (“There is a significant
difference between knowing that someone may have relevant testimony and that someone
will be called to testify as a witness” (quotation omitted)).5 To find otherwise would
place an undue burden on the other party. See Ollier, 768 F.3d at 863 (“An adverse party
should not have to guess which undisclosed witnesses may be called to testify.”); Taylor
v. N.Y. State Office for People With Dev’l Disabilities, No. 1:13-CV-740, 2016 WL
2858856, at *6 (N.D.N.Y. May 13, 2016) (“Defendants were not required to cull the
document production and assume that plaintiff would call at trial any number of the
individuals mentioned therein.”).
Indeed, the Fourth Circuit upheld a district court’s decision to exclude a newly
disclosed witness, despite references to the witness in deposition testimony and discovery
responses, when the new witness had not been identified in response to discovery
requests that expressly sought identification of potential witnesses. Hoyle v.
Freightliner, LLC, 650 F.3d 321, 329-330 (4th Cir. 2011). The Fourth Circuit found that
the district court did not abuse its discretion in excluding the witness’ declaration. Id.

5

Accord Krakauer v. Dish Network L.L.C., No. 14-cv-333, Doc. 222 at 3 (M.D.N.C. Aug.
15, 2016) (discussing difference between knowing that someone has relevant information and
knowing that the other party intends to offer that person as a witness); Poitra v. Sch. Dist. No. 1,
311 F.R.D. 659, 666 (D. Colo. 2015) (“[K]nowledge of the existence of a person is distinctly
different from knowledge that the person will be relied upon as a fact witness.”).
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The cases on which Willowood relies are factually quite different. In Mostofi v.
Experian Info. Sols., Inc., 2014 U.S. Dist. LEXIS 194744, at *20-27 (D. Md. Mar. 5,
2014), the plaintiff knew from a deposition that a particular witness was the only source
of certain information, and the Court found that the witness was timely disclosed. In
Grant Thornton, LLP v. FDIC, 2004 U.S. Dist. LEXIS 30746, at *4 (S.D.W. Va. May 6,
2004), the objecting party itself had actually relied on the witness. Neither is the
situation here.
Syngenta was entitled to rely on Willowood’s disclosures as to who its witnesses
were likely to be. See McCollum v. UPS Ground Freight Inc., No. CV11-0961 PHX
DGC, 2013 WL 105225, at *3 (D. Ariz. Jan. 9, 2013) (“[P]laintiffs were entitled to rely
on the ‘critical’ purpose of Rule 26(a)(1)(A)—to inform [them] which witnesses and
documents the disclosing party may use to support its claim or defenses.” (quotation
omitted)). Absent that disclosure, Syngenta did not have the “opportunity to conduct
relevant discovery and formulate their case strategy to account for this evidence.” Id.
3. The failure to disclose was not substantially justified.
a. Willowood Employees
Willowood asserts that it believed “formal supplementation of its discovery
responses and initial disclosures was not necessary” to disclose to Syngenta that Matt
Heinze, Rajesh Jain, or Sophia Wang were likely to be witnesses. Doc. 226 at 24. For
the reasons discussed supra, this inaccurate belief does not justify Willowood’s late
disclosure and Willowood has not met its burden to show a substantial justification. See
Hoyle, 650 F.3d at 330.
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b. CAC Witnesses and Documents
Willowood contends that it only recently received the new third-party documents
in the ordinary course of business and that these documents could not have been
disclosed early. See Doc. 256 at 4. Whether there are suppliers of non-infringing
azoxystrobin has been an issue since the beginning of this case, and during this case CAC
has repeatedly offered to supply Willowood with non-infringing azoxystrobin technical.
See Doc. 99-2 at ¶¶ 14-20; Doc. 99-10 at 9. Despite this, Willowood never listed any
CAC employees as potential witnesses or sought to investigate whether CAC might have
additional helpful evidence to support Willowood’s claims. If Willowood intended to
rely on evidence from CAC, it should have investigated CAC’s claims and disclosed that
evidence earlier, so that Syngenta would not have been unfairly surprised.
c. Tai He Employees and Documents
Tai He’s manufacturing process for azoxystrobin technical has been front and
center in the dispute over the process patents since early in the case. See Doc. 96-5 at 12
(seeking information on the manufacturing process); Doc. 96-6 at 13 (seeking
information on any suppliers); Doc. 56-1 (redacted at Doc. 58-2 at 14-15) (disclosing Tai
He as a source for azoxystrobin technical). Indeed, in its initial disclosures, Willowood
disclosed Tai He as an entity which might have relevant information on how its
azoxystrobin technical is manufactured. Doc. 118-2 at 4-5. However, as noted supra, it
did not disclose any Tai He employees as potential witnesses to support its defenses, nor
did it timely disclose the documents at issue.

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Willowood contends it was justified in updating its late disclosures after the Court
shifted the burden to Willowood to prove non-infringement of the ‘761 Patent under 35
U.S.C. § 295. See Doc. 256-1 at ¶ 7 (describing Willowood’s “redoubled” efforts to
obtain documents from Tai He after learning of the Court’s intention to shift the burden).
To the extent Willowood seeks to use this evidence to prove non-infringement of the ‘138
patent, this change in circumstances provides no justification; the ‘138 patent was not
implicated by the burden shift.
As to the ‘761 patent, however, the Court recognizes that the evidence necessary
to overcome a presumption of infringement may be more extensive than the evidence
necessary to merely defend against an allegation of infringement. However, Willowood
has known that Syngenta sought to shift the burden to prove non-infringement to
Willowood since October 31, 2016. See Doc. 98 at 37. It did not update or seek leave to
update its disclosures to indicate that it might rely on documents and witnesses from Tai
He if the burden were shifted. Only after the Court informed the parties of its likely
decision, some seven months after the close of fact discovery and four months after
Willowood had learned of Syngenta’s intentions, did Willowood begin to get serious
about its efforts to obtain this information from Tai He. See Doc. 256-1 at ¶¶ 6-9. Even
then Willowood did not seek to amend its disclosures. Willowood’s late disclosure of
documentary evidence and witnesses is not substantially justified because it delayed
obtaining the relevant evidence for months after the risk of this burden-shift was clear.

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4. The late disclosure is not harmless.
While exclusion is the presumed sanction, the Court has discretion to determine
what sanction is appropriate. See Fed. R. Civ. P. 37(c) (authorizing other sanctions
instead of exclusion, including “payment of the reasonable expenses . . . caused by the
failure,” “inform[ing] the jury of the party’s failure,” or “other appropriate sanctions”).
Here, the Court has considered whether other sanctions besides exclusion would
minimize or prevent any unfair prejudice to Syngenta while still allowing Willowood to
present the evidence. Among the possibilities the Court has considered are requiring
Syngenta to produce affidavits from the new witnesses, to produce the new witnesses for
deposition at a place selected by Syngenta and at Willowood’s expense, to reopen
discovery, to inform the jury of Willowood’s failure to timely disclose the witnesses and
documents, and a combination of these things.
All of these alternatives have serious negative consequences. Affidavits are of
limited value and do not allow Syngenta to evaluate a witness’s demeanor, an important
aspect of credibility, or to probe weaknesses or gaps in the affidavit. The trial is just a
few weeks away, and it would be a serious distraction to all parties’ trial preparations to
have to prepare for, take, and defend any depositions. The documents and witness
testimony are likely to result in new testimony from Syngenta’s experts, whose reports
would have to be supplemented. An instruction to the jury is likely to interject additional
confusing issues related to discovery into the trial. None of these alternatives cure the
harm to Syngenta arising from its reliance on Willowood’s pretrial disclosures in
formulating its trial and discovery strategy.
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The Court concludes none of these alternatives, singly or taken together,
adequately protect Syngenta from unfair prejudice caused by the last-minute surprise
disclosures of these witnesses and documents.
It is ORDERED that:
1. Syngenta’s Motions in Limine Numbers 8 and 11, Doc. 213, and its Motion in
Limine Number 13, Doc. 242, are GRANTED in part and Willowood is
precluded from:
a. Offering the testimony of Matt Heinze, Rajesh Jain, Sophia Wang, Ann
Tillman, Cathy Zhu, Fei Wang, Felix Chen, Vince Miata, Chen Ming, Chiu
Zhenghong, or Mr. Li.
b. Offering new documents from third-parties or from Tai He.
2. Because Syngenta withdrew its motion in limine as to Andy King, as to him
the motion is DENIED and Willowood may offer his evidence at trial.
This the 2nd day of August, 2017.

__________________________________
UNITED STATES DISTRICT JUDGE

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