Blue Bottle Coffee, LLC v. Liao

• Court: District Court, N.D. California
• Decided: August 25, 2023
• Docket: 3:21-cv-06083
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 BLUE BOTTLE COFFEE, LLC, Case No. 21-cv-06083-CRB (DMR)

8 Plaintiff, ORDER RE MOTION TO STRIKE 9 v. REBUTTAL EXPERT OPINIONS OF RHONDA HARPER 10 HUI CHUAN LIAO, et al., Re: Dkt. No. 117 11 Defendants.

12 Plaintiff Blue Bottle Coffee, LLC filed this action on August 6, 2021 against Defendants 13 Hui Chan Liao and Southern Technologies, LLC asserting claims for trademark and trade dress 14 infringements. Defendants counterclaimed against Plaintiff on October 20, 2022. [Docket No. 15 65.] The case was referred to the undersigned for resolution of all discovery matters. [Docket No. 16 61.] Plaintiff now moves to strike three rebuttal reports by Defendants’ expert, Rhonda Harper 17 (the “Harper Reports”). [Docket No. 117 (“Mot”).] Defendants opposed and Plaintiff replied. 18 [Docket Nos. 120 (“Opp’n”), 122 (“Reply”).] This matter is suitable for determination without 19 oral argument. Civil L.R. 7-1(b). For the following reasons, the court grants Plaintiff’s motion to 20 strike the Harper Reports. 21 On April 7, 2023, pursuant to the relevant scheduling order, Plaintiff served three opening 22 expert reports by Jeffrey S. Andrien, Norman Broadhurst, and Jill Morton. Mot. at 5. Andrien’s 23 report opined on how and why corrective advertising damages are appropriate in this lawsuit. Id. 24 (citing Docket No. 117-1 (A. John P. Mancini Decl., June 30, 2023) ¶ 4, Ex. 2 (Expert Report of 25 Jeffrey S. Andrien at ¶ 10)). Broadhurst’s report opined on (i) the distinctiveness of Plaintiff’s 26 marks-in-suit and (ii) how and why consumers are likely to associate the Defendants’ branding 27 with Plaintiff’s branding and marks-in-suit. Id. at 5-6 (citing Mancini Decl. ¶ 5, Ex. 3 (Expert 1 Bottle blue marks are attributes of the Blue Bottle brand instead of products sold under the Blue 2 Bottle brand and (ii) the shade of blue that Defendants use for their products could cause 3 consumers to associate those products with the Blue Bottle brand. Id. at 6 (citing Mancini Decl. ¶ 4 6, Ex. 4 (Expert Report of Jill Morton) ¶ 11). On the same date, Defendants served an opening 5 expert report by Harper, addressing the secondary meaning of some of Plaintiff’s asserted 6 trademarks. Opp’n at 4; see Mancini Decl. ¶ 7, Ex. 5 (Expert Secondary Meaning Survey Report 7 of Rhonda Harper). 8 On April 14, 2023, the Honorable Charles R. Breyer set a new case schedule, ordering the 9 parties to submit opening reports by May 22, 2023 and rebuttal expert reports by June 19, 2023. 10 [Docket No. 94.] Pursuant to that order, Plaintiff served updated versions of Andrien, Broadhurst, 11 and Morton’s reports, “which opined on the same subject matter as the April 7, 2023 versions of 12 their opening reports.” Mot. at 6 (citing Mancini Decl. ¶¶ 8-10, Exs. 6-8). On June 19, 2023, 13 Defendants served three additional expert reports by Harper, all opining on the issue of consumer 14 confusion. Mancini Decl. ¶¶ 11-13, Exs. 9-11 (“Trade Dress Forward Consumer Confusion 15 Survey,” “Trademark Forward Consumer Confusion Survey,” and “Color Likelihood of 16 Confusion Survey”) (collectively, the Harper Reports). According to Defendants, the Harper 17 Reports provide survey evidence that establishes non-infringement. Opp’n at 1. 18 Plaintiff contends that although Defendants describe the Harper Reports as “rebuttal 19 reports,” they are actually opening reports that Defendants were required to serve by May 22, 20 2023. Mot. at 7. Defendants’ opposition brief is far from clear, but as best as the court can tell, 21 they respond with two arguments. Their primary argument is that the Harper Reports were timely 22 served because they fall under the definition of “rebuttal expert reports” agreed upon by the parties 23 and later adopted by Judge Breyer. Defendants also seem to assert that the Harper Reports are true 24 rebuttal expert reports because they address the same subject matter as Plaintiff’s expert reports. 25 As to the first argument, Defendants assert that the parties’ stipulations resulting in 26 scheduling orders dated December 10, 2021 (Docket No. 37) and February 10, 2023 (Docket No. 27 73) clarified that opening expert reports would address “issues on which each party bears the 1 proof expert reports or . . . issues which the party with the burden of proof did not provide an 2 expert report.” Opp’n at 2-3 (referring to Docket Nos. 37, 73). Defendants ask the court to find 3 that the Harper Reports are timely because they meet the definition in those scheduling orders that 4 rebuttal reports may be “on issues which the party with the burden of proof did not provide an 5 expert report.” See Opp’n at 1, 2 (emphasizing the relevant language); see also id. at 8. Plaintiff 6 counters that Defendants are wrong that language in non-operative scheduling orders still control; 7 instead, they urge the court to adopt the language in the most recent scheduling order dated April 8 13, 2023 (Docket No. 94), which refers to “rebuttal expert reports” without further definition. See 9 Reply at 2-4. 10 On August 16, 2023, the Honorable Judge Breyer issued an order addressing the meaning 11 of the April 13, 2023 scheduling order. [Docket No. 130.] The court held that the language in 12 Docket No. 94 was mere shorthand and that the court did not sign off on a change to the parties’ 13 agreed-upon definition of “rebuttal expert reports.” Id. In light of Judge Breyer’s clarification, the 14 question now becomes whether the Harper Reports encompass issues on “which the party with the 15 burden of proof did not provide an expert report.” See Docket Nos. 37, 73. 16 Defendants’ position on this point is confusing and contradictory. They argue that the 17 Harper Reports fall under the definition of “rebuttal reports” in the prior scheduling orders because 18 they address an issue (consumer confusion) for which the party with the burden of proof did not 19 provide an expert report. See Opp’n at 1-3, 5 (distinguishing Plaintiff’s cited case because it “did 20 not involve a party without the burden of proof filing a rebuttal report on an issue on which 21 Plaintiff failed to provide an expert report”). But at the same time, Defendants acknowledge that 22 Plaintiff served opening reports by Morton and Broadhurst that opine on the “likelihood of 23 [consumer] confusion,” an issue on which Plaintiff carries the burden of proof. See, e.g., Opp’n at 24 4. 25 Given Defendants’ concession that Plaintiff’s expert reports address the “likelihood of 26 confusion” – the same subject matter covered by the Harper Reports – the court cannot find that 27 1 these reports were timely filed under the scheduling orders.1 2 Next, Defendants argue that the Harper Reports “plainly rebut” the Broadhurst and Morton 3 reports because they all address the issue of “likelihood of confusion.” Opp’n at 11. It is not clear 4 whether Defendants’ argument continues to rely on the definition in the scheduling orders or 5 hinges instead on the language under Federal Rule of Civil Procedure 26(a)(2)(D)(ii). That rule 6 permits the disclosure of testimony that is “intended solely to contradict or rebut evidence on the 7 same subject matter identified by another party under Rule 26(a)(2)(B) or (C).” Fed. R. Civ. P. 8 26(a)(2)(D)(ii). Plaintiff responds that the Harper Reports are not rebuttal reports because they 1) 9 do not even mention Plaintiff’s expert reports, and 2) concern an entirely different subject matter 10 than any of Plaintiff’s expert reports. Mot. at 8-9. The court agrees with Plaintiff’s first point. 11 Plaintiff explains that the Harper Reports do not list any of Plaintiff’s expert reports as 12 materials reviewed and considered by Harper.2 Mot. at 9. In fact, two of the Harper Reports are 13 dated May 5, 2023 – 17 days before Plaintiff served its expert reports on May 22, 2023. Id. In 14 addition, the names of Plaintiff’s experts do not appear anywhere in the Harper Reports. Id. 15 Defendants only tangentially respond to Plaintiff’s arguments. They are silent on whether 16 Harper reviewed Plaintiff’s expert reports in preparing her reports. Instead, they argue that 17 Plaintiff’s cited case, Petersen v. Costco Wholesale Co. Inc., No. SACV131292DOCJCGX, 2017 18 WL 11046667, at *2 (C.D. Cal. May 1, 2017), contradicts Plaintiff’s position because it states that 19 1 If Defendants are arguing that they timely filed the Harper Reports by the deadline for “rebuttal 20 reports” because they do not bear the burden of proof on the issue of “likelihood of confusion,” that argument is also unavailing. First, to the extent Defendants are making this argument, it is far 21 from obvious. As previously mentioned, Defendants repeatedly rely on the language defining “rebuttal reports” in the scheduling order – not the language defining opening reports. See Opp’n 22 at 1, 2 (emphasizing that the scheduling order clarifies that rebuttal reports may be “on issues which the party with the burden of proof did not provide an expert report”). Second, the 23 scheduling order states that opening reports include “reports on issues on which each party bears the burden of proof.” [Docket Nos. 37, 73.] Even assuming Defendants do not bear the burden of 24 proof on the issue of “likelihood of confusion,” that Defendants could not serve the Harper Reports as affirmative expert reports does not automatically qualify them as “rebuttal reports” 25 under the scheduling orders.

26 2 All three Harper Reports assert the following under the section “Materials Received and Considered”: “To understand the pertinent background information on this case, I reviewed the 27 First Amended Complaint for Damages and Injunction and the Defendant’s Answer to Complaint, 1 the rule on rebuttal experts “does not necessarily require that the rebuttal expert’s report explicitly 2 reference the primary expert’s report.” Opp’n at 11. The Peterson court nevertheless noted that 3 the rule “does require that [the report] rebut the primary expert’s report.” Indeed, Petersen struck 4 two purported rebuttal expert reports, concluding that they should have been designated as primary 5 experts. 2017 WL 11046667, at *3-*4. In any event, Defendants’ failure to explain how the 6 Harper Reports could possibly rebut expert reports that are not listed in the “Materials Received 7 and Considered” section or even mentioned in the reports themselves is fatal to their argument. 8 See Clear-View Techs., Inc. v. Rasnick, No. 13-CV-02744-BLF, 2015 WL 3509384, at *4 (N.D. 9 Cal. June 3, 2015) (noting in analogous circumstances that such a “glaring” issue alone is a 10 sufficient reason to strike an expert report). Indeed, “[c]ourts have repeatedly held that an expert 11 is improperly designated as a rebuttal expert when he has failed to review the initial expert report, 12 or otherwise failed to indicate that he was aware of the opinions offered by the initial expert.” Id. 13 (cleaned up) (collecting cases). As the Clear-View court explained, “[s]uch a rule makes sense: an 14 expert cannot be said to ‘rebut’ testimony he or she has never seen or reviewed.” Id. 15 Because the Harper Reports do not qualify as “rebuttal reports” under the scheduling 16 orders or Rule 26(a)(2)(D)(ii), the reports must be stricken unless Defendants show that their 17 failure to serve the reports was harmless or substantially justified. Fed. R. Civ. P. 37(c)(1) (“If a 18 party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is 19 not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a 20 trial, unless the failure was substantially justified or is harmless.”). 21 Defendants’ arguments are not persuasive. First, they argue that the untimely submission 22 of the Harper Reports is substantially justified because they relied on the parties’ agreed-upon 23 definition of rebuttal reports in Docket Nos. 37 and 73. Opp’n at 9-10. As previously explained, 24 this argument is unavailing because Defendants do not show how the Harper Reports fall under 25 the scheduling orders’ definition of rebuttal reports. Second, Defendants contend that the 26 untimely submission is harmless because 1) Plaintiff has already noticed the deposition of Harper 27 and will have an opportunity to cross-examine her, and 2) Plaintiff had an opportunity to submit 1 expert reports on a similar subject matter but chose not to do so.3 Id. Neither of these arguments 2 explain why Plaintiff would not suffer “obvious prejudice” from its inability to offer an opposing 3 expert to rebut Harper’s additional reports absent further delay to the case schedule.4 See Mot. at 4 12-13. 5 As Plaintiff points out, “[d]isruption to the schedule of the court and other parties in that 6 manner is not harmless. Courts set such schedules to permit the court and the parties to deal with 7 cases in a thorough and orderly manner, and they must be allowed to enforce them, unless there 8 are good reasons not to.” Wong v. Regents of Univ. of California, 410 F.3d 1052, 1062 (9th Cir. 9 2005); see also Martinez v. Cnty. of San Benito, No. 15-CV-00331-JST, 2018 WL 1863013, at *2 10 (N.D. Cal. Apr. 18, 2018) (holding delay in briefing on motion for summary judgment was not 11 harmless). 12 In light of the above, Rule 37(c)(1) requires that the Harper Reports be stricken, and that 13 Defendants be precluded from relying on the Harper Reports on a motion, at a hearing, or at trial. 14 Defendants’ motion for sanctions under Rule 37(a)(5)(B) is denied. 15 16 IT IS SO ORDERED. 17 Dated: August 25, 2023 18 ______________________________________ Donna M. Ryu 19 Chief Magistrate Judge 20 21 22

23 3 Defendants assert that Plaintiff never requested the ability to serve a third set of expert reports to address expert reports by the party without the burden of proof. Opp’n at 14. Defendants’ 24 argument misses the point. As previously explained, Defendants have not shown that the Harper Reports were timely submitted under the scheduling orders or Rule 26(a)(2)(D)(ii). 25

4 At most, Defendants argue that Plaintiff’s arguments in this respect are “disingenuous” because 26 counsel previously sought a 45-day extension of the case and cited cases for the proposition that delaying the case would not be prejudicial. See Opp’n at 14. In addition, Defendants note that no 27 trial date has been set in this case. Id. These arguments are not compelling in light of Plaintiff’s