Carl Zeiss X-Ray Microscopy, Inc. v. Sigray, Inc.
- Edward Davila
- 5:21-cv-01129
- U.S. District Court · Northern District of California
- 8
In Carl Zeiss v. Sigray, Judge Davila granted Zeiss’s motion to strike five late-disclosed witnesses because the disclosures were untimely, unjustified, and prejudicial.
Sigray, Inc. cannot offer testimony from Dr. Jiaqi Jin, Dr. Charlotte Garing, Haibo Huang, Bernard Kozioziemski, or Dr. Francisco Machuca at trial. Zeiss’s motion to strike was granted.
What happened
Carl Zeiss X-Ray Microscopy, Inc. sued Sigray, Inc. in a case involving alleged patent infringement and trade-secret misappropriation. Zeiss asked the court to strike five witnesses Sigray disclosed after fact and expert discovery had closed.
Sigray argued that the witnesses became relevant because Zeiss added recent sales to its damages case, or that the delay was justified. Zeiss argued that Sigray should have disclosed the witnesses earlier and that allowing their testimony would prejudice Zeiss’s preparation.
Judge Edward J. Davila granted Zeiss’s motion. He found that the disclosures were not timely or substantially justified and that Sigray had not shown the delay was harmless. Sigray may not offer testimony from the five witnesses at trial.
The detailed version
- Carl Zeiss X-Ray Microscopy, Inc. v. Sigray, Inc. · No. 5:21-cv-01129
- Edward Davila
- Apr. 1, 2025
Background
Carl Zeiss X-Ray Microscopy, Inc. (“Zeiss”) brought a patent-infringement and trade-secret-misappropriation case against Sigray, Inc. Zeiss alleges that Sigray misappropriated trade secrets related generally to x-ray microscopy and infringed two patents: U.S. Patent No. 7,057,187 and U.S. Patent No. 7,400,704.
The motion addressed five witnesses: Dr. Jiaqi Jin, Dr. Charlotte Garing, Haibo Huang, Bernard Kozioziemski, and Dr. Francisco Machuca. Fact discovery closed on February 16, 2023, and expert discovery closed on July 27, 2023. Sigray disclosed Dr. Jin and Dr. Garing in January 2024, then disclosed Huang, Kozioziemski, and Dr. Machuca in December 2024. Zeiss moved to strike the witnesses on February 13, 2025.
Legal standard
Federal Rule of Civil Procedure 26 requires parties to disclose individuals likely to have discoverable information and to supplement or correct disclosures in a timely manner when necessary. Under Rule 37(c)(1), a party that fails to identify a witness as required generally may not use that witness to provide evidence at trial unless the failure was substantially justified or harmless.
Court’s analysis
The court found the disclosures untimely. Zeiss had identified its lost-profits damages theory and its position about competition and non-infringing alternatives by April 2022, and Zeiss’s damages expert addressed those issues in April 2023. The court concluded that Sigray should have recognized earlier that customer testimony about purchasing decisions, competition, and alternative products could be relevant.
The court also found Sigray’s explanation unpersuasive. Sigray argued that the witnesses became relevant because Zeiss included recent sales in its damages calculation. But the court noted that the University of Utah sale that Dr. Jin would address occurred in December 2022, before fact discovery closed, and that Zeiss’s damages expert had already identified that sale. Sigray did not explain why it could not have disclosed Dr. Jin earlier or why the other witnesses could not have been disclosed during discovery.
The court further determined that the late disclosures were not substantially justified and were not harmless. Zeiss’s damages expert had based her opinion on the record available at the close of fact discovery and had not been able to consider testimony from the new customer witnesses. Allowing five new witnesses at that stage would require additional discovery, create delays, and hinder Zeiss’s preparation for trial. The court emphasized that Sigray, rather than Zeiss, had the burden of showing that the late disclosure was harmless.
Disposition
The court GRANTED Zeiss’s motion to strike Dr. Jiaqi Jin, Dr. Charlotte Garing, Haibo Huang, Bernard Kozioziemski, and Dr. Francisco Machuca. Sigray is precluded from offering any testimony from those witnesses at trial.
Read the full 8-page opinion on CourtListener, the free public archive maintained by the Free Law Project.