Order Striking Witnesses from Supplemental Initial Disclosures, Finjan, Inc. v. Proofpoint, Inc. et al., Case No. 3:13-cv-05808-HSG (HRL) (Magistrate Judge Howard Lloyd)

How much disclosure is sufficient when you want the author of a prior art reference to testify at trial? Magistrate Judge Lloyd offers one possible answer: invalidity contentions and prior art disclosures alone only identifyreferences that defendants find important, but do not put plaintiff on notice that all the prior art authors and inventors are potential trial witnesses. Therefore, relying on contentions alone may place a defendant at risk that it will not be permitted to call the relevant prior art witnesses. While this order comes with a cautionary tale, will it lead to more meaningful disclosures?

Here are the facts: just days before the close of the extended fact discovery deadline, defendants Proofpoint, Inc. and Armorize Technologies, Inc. served supplemental initial disclosures identifying two authors of prior art (Ross and Kennedy) as potential trial witnesses. Defendants also offered deposition dates after the discovery deadline. Plaintiff Finjan moved to strike the disclosures as untimely. Defendants argued that, through the course of discovery, these individuals had become known to plaintiff as potential witnesses with relevant information—after all, the duty to supplement initial disclosures under FRCP 26(e) triggers only if the additional information “has not otherwise been made known to the other parties.” The order summarizes how the Ross and Kennedy references were listed in various contentions and disclosures, sometimes hundreds of pages long, but sometimes identifying only a few anticipatory references per asserted patent. Ultimately, Magistrate Judge Lloyd found that “[t]he Ross and Kennedy references were only two of hundreds of references disclosed, and defendants do not convincingly explain how Finjan was to deduce from those disclosures that defendants would call Ross and Kennedy at trial.” He also found that defendants had not justified the late disclosure, and it was not harmless because plaintiff could not reasonably be expected to depose Ross and Kennedy given the progress of the case.

Going forward, will defendants be more careful to disclose witnesses separately from prior art references, or will they simply port the entire inventor and author list into their initial disclosures? Judges might view the latter approach as simply another way of hiding the ball. Indeed, some litigants already include catch-all language like “all authors, named inventors, or inventors of any prior art” in their initial disclosures, though it is debatable whether judges would view such statements as fair disclosure. Here, defendants’ supplemental initial disclosures didn’t have such language and listed 14 pages of specific witnesses, including Kennedy, Ross, and companies who might have prior art. The order notes the “hundreds of references” defendants included in their invalidity contentions as a basis for precluding the prior art witnesses at trial. Would initial disclosures that list “hundreds of [individuals]” better allow plaintiffs “to deduce from those disclosures” who defendants will actually call at trial?