IEP Technologies, LLC v. KPM Analytics, Incorporated et al. (D. Mass. 21-cv-10417).

This case involves allegations of trademark infringement. Earlier this month, Judge Kobik precluded IEP’s expert from testifying as to evidence of actual confusion and KPM’s intent in adopting its accused mark, finding that the expert’s report provided no basis for testifying on these topics.  Turnabout being fair play, IEP then moved to strike a supplemental expert report from KPM’s expert, which Judge Kobick granted.  She noted that the expert admitted at deposition that the initial expert report did not opine on whether IEP’s declaration of use and incontestability under Sections 8 and 15 of the Lanham Act was properly executed, which the supplemental report sought to do.  The supplemental report, which was filed more than two months after the deadline for expert reports had passed, did not rely on any few facts or information that were not known or available to KPM prior to the expert report deadline.  Accordingly, the proposed supplement was untimely.

Having determined that the supplement was late, Judge Kobick looked to the five-factor test for whether preclusion should be the remedy – the history of the litigation, the sanctioned party’s need for the evidence, the justification for the late disclosure, the ability of the opponent to overcome the adverse effects of the lateness of the disclosure, and the impact on the court’s docket.  She found that only the second element (the sanctioned party’s need for the evidence) favored KPM, but that under First Circuit case law, this factor alone is insufficient to avoid preclusion unless the preclusion would necessarily result in dismissal or a finding of liability, depending on which party was to be precluded.  She found that the asserted justification for the late disclosure was unpersuasive.  KPM argued that, by asking the expert at deposition whether the initial report opined on the propriety of the execution of the declaration, IEP had opened the door for her to opine on the subject, but Judge Kobick found this would be a loophole that would run counter to the purpose of timely disclosures.  The late admission of the evidence would also be unfairly prejudicial to IEP, as it had prepared and filed a summary judgment motion based on the expert not opining on those issues and had no further opportunity to depose the expert on the new opinions (unless the court extended the discovery schedule, which would negatively affect the court’s docket).  Accordingly, Judge Kobick granted the motion and struck the supplemental report.