The opinion of the court was delivered by: Denise Cote, District Judge:
Plaintiff Erchonia Corporation, f/k/a Therapy Products, Inc. ("Erchonia") and defendants Lionel Bissoon, M.D., d/b/a Mesotherapie & Estetik, Meridian Co., Ltd., Meridian Medical Inc. and Meridian America Medicals, Inc. (collectively, "Meridian") manufacture and market laser devices for medical use. Erchonia and Meridian have used the term "lipolaser" in connection with their respective low-level lasers designed for liposuction procedures. Erchonia brought this action on October 9, 2007 against Meridian for trademark infringement and false advertising. Meridian's motion for summary judgment against all of Erchonia's claims was granted on June 1, 2009, and Erchonia appealed.
In a summary order dated February 22, 2011, the Second Circuit affirmed this Court's decision on summary judgment as to Erchonia's trademark infringement claim and that portion of its false advertising claim relating to the use of scientific photos taken by Dr. Neira (the "Neira Photographs"). Erchonia claimed that the Neira Photographs that appeared in Meridian's marketing materials were a wrongful use of data and research by and for Erchonia.*fn1
The Court of Appeals remanded a portion of the false advertising claim pursuant to the procedure articulated in United States v. Jacobson, 15 F.3d 19, 22 (2d Cir. 1994) (the "Summary Order").*fn2 In remanding, the Second Circuit is seeking clarification for the basis of this Court's decision to grant summary judgment against the "Alternative Bases" for Erchonia's false advertising claim. The Alternative Bases for Erchonia's false advertising claim were Meridian's advertising regarding (1) how its laser works, (2) the effectiveness of its laser, (3) FDA approval of its laser and (4) who had endorsed its laser.
The Summary Judgment Opinion had addressed the Alternative Bases in a footnote. The footnote stated Erchonia argues that this false advertising claim should also include statements Meridian made about how its own lipolaser works, how effective it is, whether it has FDA approval, and who has endorsed it. Because Erchonia gave Meridian no notice of these claims until Shanks's October 3, 2008 deposition, Locander's expert report dated October 27, and the responses to interrogatories served on November 17, and fact discovery closed on October 10, 2008, these new claims are rejected as untimely and shall not be considered. Summary Judgment Opinion at 496 n.11.
The mandate issued on March 16, 2011. On March 21, this Court endorsed a plan jointly submitted by the parties providing for letter briefing on the remanded issue. That briefing was fully submitted on May 5.
Familiarity with the Summary Judgment Opinion is presumed. The following additional information responds to the Circuit's request for clarification. In brief, during the discovery period, Erchonia principally pursued its trademark claim. Erchonia did give Meridian timely notice that it had a false advertising claim, but that notice was of a claim associated with the Neira Photographs. It was only in the one week before the end of the fact discovery period that Erchonia, through a second deposition of the witness it produced pursuant to Federal Rule of Civil Procedure 30(b)(6), provided notice of Meridian of the Alternate Bases for its false advertising claim.
I. Complaint and Initial Conference
Erchonia's October 9, 2007 complaint (the "Complaint")
alleged in paragraph 18 that the Meridian plaintiffs had "wrongfully used data and research developed by and for [Erchonia] as if it were their own and have used these materials to falsely advertise and promote their products to the consuming public." In paragraph 20, Erchonia alleged that Meridian's "commercial use of Erchonia's Mark in . . . their advertising, websites, brochures and other marketing materials that promote their [lasers] constitute a false and misleading representation of their services."*fn3 The Complaint did not refer to any particular advertisements or indicate what in those advertisements was allegedly false or misleading.
On March 28, 2008, an initial pretrial conference was held pursuant to Federal Rule of Civil Procedure 16. In the joint case management conference statement (the "Joint Case Management Statement") submitted by the parties in anticipation of that conference, Erchonia laid out the "factual and legal bases for [its] claims" for its trademark infringement and dilution claims. No mention was made of the factual bases for the false advertising claim, even when generously read. Joint Appendix Volume V, A-242-44 ("JA-V-242-44").*fn4 Accordingly, Meridian's statement of defenses in the Joint Case Management Statement does not address a false advertising claim. JA-V-244-46.
At the conference itself, the discussion focused on Erchonia's trademark claim and Erchonia made no mention of the false advertising claim, much less of the Alternative Bases for that claim. Erchonia expected to take four depositions; Meridian planned to take at most five. Based on the description of the issues at stake in the litigation contained in the Joint Case Management Statement and presented orally at the conference, the parties and Court agreed upon a schedule for discovery. An order memorializing the schedule discussed at the conference was issued on April 1, setting the end of fact discovery for June 30, the end of expert discovery for September 26, and the filing of either a summary judgment motion or the joint pretrial order on October 24.
The parties have not identified any material produced by Erchonia in its initial disclosures pursuant to Rule 26, Fed. R. Civ. P., that gave notice to Meridian of the Alternative Bases for its false advertising claim. Rule 26(a)(1) required Erchonia to produce, inter alia, any documents that Erchonia had in its possession that it "may use to support its claims." Fed. R. Civ. P. 26(a)(1)(A)(ii).
II. First 30(b)(6) Deposition
On May 22, 2008, Meridian noticed a deposition pursuant to Federa Rule of Civil Procedure 30(b)(6) of a witness that could speak on behalf of Erchonia on certain designated topics. JA-V-435-40. The first topic noticed for that deposition was "[t]he allegations in Erchnoia's Complaint in the Action, and evidence supporting these allegations." JA-V-438. Erchonia produced Steven Shanks ("Shanks"), Erchonia's president, on June 3, 2008, for this 30(b)(6) deposition. When asked about the "basis" for paragraph 20 in the Complaint that Meridian's "commercial use of Erchonia's Mark in . . . their advertising, websites, brochures and other marketing materials that promote their [lasers] constitute a false and misleading representation of their services," Shanks answered, "the press releases they put out, the advertising that they put out on their results, websites, brochures. Obviously again they're using our research, our doctors. Their theory of explanation coming from research that was done with us." JA-I-195 (85:4-23). When asked, what of those materials ...