Initial Disclosures

Inadequate Disclosures Preclude Monetary Damages Recovery in Trademark Infringement Suit

Order Granting in Part and Denying in Part Defendant’s Motion for Summary Judgment, Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc., Case No. 3:15-cv-04618-WHO (Judge William H. Orrick)

As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted.  But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE

Don’t Bury the Lede: Failure to Explicitly List Prior Art Witnesses Can Preclude Them from Testifying

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 identify references 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? READ MORE

Reveal Your Hurt

Corning Optical Communications Wireless Ltd. v. Solid, Inc. et al., 5:14-cv-03750 (Magistrate Paul Grewal) (April 14, 2015)

The days of “wait until we serve our expert report” to reveal damages figures might be over, at least if your case is in front of Judge Grewal.  Patent damages present an especially difficult situation for the parties to calculate damages without discovery, since damages theories will turn, in part, on information known only to the opposing party, such as revenues, sales and licensing practices.  Moreover, though the Patent Local Rules contain extensive disclosure requirements on patent liability issues, they do not contain any similar requirements for the disclosure of damages contentions prior to expert discovery. READ MORE