Thorne Research et al v. Atlantic Pro-Nutrients

Filing 324

MEMORANDUM DECISION and Order Granting Plaintiffs' 271 Motion in Limine to Exclude Differences Between ME Products and CF Products; granting in part and denying in part 281 Redacted MOTION in Limine and Memorandum in Support of Defendant's Motion in Limine No. 4 to Exclude Contentions Not Disclosed in Plaintiff's Final Infringement Contentions. Signed by Judge Ted Stewart on 2/9/2018. (jwt)

IN THE UNITED STATES DISTRICT COURT FOR
THE DISTRICT OF UTAH

THORNE RESEARCH, INC. and SOFTGEL
FORMULATORS, INC.,

MEMORANDUM DECISION AND
ORDER GRANTING PLAINTIFFS’
MOTION IN LIMINE TO EXCLUDE
DIFFERENCES BETWEEN ME
PRODUCTS AND CF PRODUCTS AND
GRANTING IN PART AND DENYING IN
PART DEFENDANT’S MOTION IN
LIMINE NO. 4 TO EXCLUDE
CONTENTIONS NOT DISCLOSED IN
PLAINTIFFS’FINAL INFRINGMENT
CONTENTIONS

Plaintiffs,
vs.
XYMOGEN,
Defendant.

CASE NO. 2:13-CV-784 TS
Judge Ted Stewart
This matter is before the Court on Plaintiffs’ Motion In Limine to Exclude Differences
Between ME Products and CF Products and Defendant’s Motion In Limine No. 4 to Exclude
Contentions Not Disclosed in Plaintiffs’ Final Infringement Contentions. For the following
reasons, the Court grants Plaintiffs’ Motion and grants in part and denies in part Defendant’s
Motion.
I.

BACKGROUND

In May 2014, Plaintiffs Thorne and Softgel Formulators (collectively, “Thorne”) served
Initial Infringement Contentions which listed Xymogen’s CoQMax-100CF and CoQmax CF (the
“CF products”) as accused products. Later that year, Xymogen discontinued its CF products and
began selling CoQmax-100 ME and CoQmax ME (the “ME products”) instead. Around the same
time, in October 2016, Thorne served its Final Infringement Contentions, listing only the CF
products as the accused products.

1

In April 2017, while obtaining samples of Xymogen’s products for expert testing, Thorne
learned of Xymogen’s discontinuance of all CF products. Nine months later, on January 16,
2018, Thorne confirmed that Xymogen considers the CF and ME products to be different.
Thorne now seeks to exclude any testimony or argument from Xymogen regarding any purported
differences in formulation between the CF and the ME products, and Xymogen seeks to exclude
Thorne from presenting evidence or argument regarding the ME products and any evidence or
argument that Xymogen’s products contain Clarinol A-80, Clarinol G-80, or Capmul.
I.

STANDARD OF REVIEW

“A party who has . . . responded to an interrogatory . . . must supplement or correct its
disclosure or response: in a timely manner if the party learns that in some material respect the
disclosure or response is incomplete . . . .” 1 If a party fails to provide information in compliance
with Rule 26(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.” 2 “A district court need not make explicit findings concerning the existence of a
substantial justification or the harmlessness of a failure to disclose.” 3 However, in exercising its
discretion, the court should consider: “(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.” 4

1

Fed. R. Civ. P. 26(e)(1)(A).

2

Fed. R. Civ. P. 37(c)(1).

3

Woodworker’s Supply, Inc. v. Principal Mut. Life Ins. Co., 170 F.3d 985, 993 (10th Cir.

1999).
4

Id.; see also HCG Platinum, LLC v. Preferred Prod. Placement Corp., 873 F.3d 1191,
1203 (10th Cir. 2017) (“In making a discretionary decision, a court must present an explanation
2

II.

DISCUSSION

The Court’s Order denying Thorne’s motion to amend its final infringements to include
ME barred Thorne from arguing that the ME products are accused products. The Court must now
determine whether Xymogen violated Rule 26 in failing to disclose the existence of the ME
products.
A. Excluding Argument that the CF and ME Products are Different
Thorne’s Interrogatory No. 20 requested that Xymogen “[i]dentify the name and product
or catalog number of all products that You have made, had manufactured, sold, or marked in the
United States that include coenzyme Q10 other than (a) Your CoQmax-100CF product and (b)
Your CoQmax CF product.” 5 Xymogen’s response directed Thorne to documents being
produced during discovery and was never supplemented to include the existence of the ME
products.
Thorne had no knowledge of this switch until April 2017, and only learned of it when
Thorne purchased products for expert testing. While the Court already found that Thorne had
reason to inquire further into whether Xymogen considered the CF and ME products to be
different products, this does not excuse Xymogen’s failure to disclose this information.
Thorne alleges that Xymogen produced materials considering both products side-by-side
and produced experts who tested both products. Without disclosing its view of the products as

for its choice sufficient to enable a reviewing court to determine that it did not act thoughtlessly,
but instead considered the factors relevant to its decision and in fact exercised its discretion.”)
(quotation marks omitted); Gale v. Uintah Cty., --- F. App’x---, 2017 WL 6397733, *5 (10th
Cir. Dec. 15, 2017) (“Where a district court does not consider the Woodworker’s Supply factors,
the ‘failure to consider this criteria amounts to legal error, and we must conclude that the district
court abused its discretion on that ground alone.”) (quotation marks omitted).
5

Docket No. 253 Ex. B, at 17.
3

different, Xymogen’s actions may have been misleading. Further, Xymogen stated that it “does
not contend that the CF and ME products contain different ingredients . . . .” 6
The Court must, therefore, consider these facts in light of the Woodworker’s Supply
factors. First, the discovery just weeks before trial that Xymogen did not consider the CF and
ME products to be the same results in prejudice to Thorne as Thorne prepared its case with the
belief that the products were the same. Second, there is no time to cure the failure since the trial
starts next week. Third, the disruption to trial could be great as Thorne has had little time to
prepare for the argument that these products are different. Finally, whether Xymogen’s actions
were a result of bad faith or a failure in judgment, these factors weigh heavily against a finding
that Xymogen’s Rule 26 violation was harmless or justified in any way.
The Court, therefore, precludes the parties from arguing that there is a difference between
the CF and ME products. Further, in light of the Court’s previous order denying amendment of
Thorne’s final infringments, neither party should address the ME products at all as the ME
products are not accused products and are no longer at issue in this case. Xymogen should
immediately provide Thorne with updated sales information on the CF products that does not
include ME sales. To the extent it cannot, Xymogen will be precluded from arguing that
Thorne’s damages, if any, cannot include ME product sales.
B. Arguments Regarding Products Containing Clarinol A-80, Clarinol G-80, or Capmul
Next, “Xymogen requests that the Court prohibit Plaintiffs from presenting evidence or
argument that Xymogen’s products contain Clarinol A-80, Clarinol G-80, or Capmul because
these contentions were not timely disclosed and were already struck by the Court.” 7

6

Docket No. 266, at 3.

7

Docket No. 283, at 1.
4

Thorne responds that these three products “are merely sources for the ingredients
undisputedly described in Thorne’s infringement contentions” 8 and that because they disclosed
the generic ingredients they were not required to disclose the branded products those ingredients
were sourced from.
While the specific product names were not included in Thorne’s contentions, the generic
ingredients that are sourced from the branded Clarinol A-80, Clarinol G-80, and Capmul
(products Xymogen was aware of) were properly disclosed. The listing of these ingredients is
sufficient notice to Xymogen that the products may be discussed resulting in the use of the
names being harmless and non-prejudicial to Xymogen. And while the Court did strike the
contentions, this was a result of Thorne failing to seek leave from the Court to add them rather
than a finding that the products could not be discussed. 9
For these reasons, the Court finds that Xymogen was sufficiently put on notice and
Thorne may use the branded names of the products in trial so long as Thorne clearly explains
that the products are the source of the ingredients.
III.

CONCLUSION

It is therefore
ORDERED that Plaintiffs’ Motion In Limine to Exclude Differences Between ME
Products and CF Products (Docket No. 271) is GRANTED. Defendant’s Motion In Limine No. 4
to Exclude Contentions Not Disclosed in Plaintiffs’ Final Infringement Contentions (Docket No.
281) is GRANTED IN PART AND DENIED IN PART. Defendant is also ordered to

8

Docket No. 318, at 2.

9

“The Court will grant Xymogen’s Motion in part by striking the contentions recently
added by Thorne without leave from the Court.” Docket No. 195, at 2.
5

immediately produce updated sales information on the CF products that does not include
information on the ME products.
DATED this 9th day of February, 2018.
BY THE COURT:

Judge Ted Stewart

6