PLAINTIFF'S MOTION TO SUPPLEMENT THE SUMMARY JUDGMENT RECORD BASED ON NEWLY DISCOVERED EVIDENCE

ROBERT HUGHES, JR., District Judge.

Plaintiff, Flexstake, Inc. ("Plaintiff" or "Flexstake) moves supplement the summary judgment record in the above-styled cause. As grounds, Plaintiff states the following:

1. On July 23, 2018, Defendant filed its Second Corrected Motion for Summary Judgment (Doc. 104). In the motion, among other things, Defendant claimed that the undisputed facts showed that it sent genuine Flexstake 750 series delineator top sections to TTI, which were used in the impact testing that formed the basis for the October 2, 2015 Technical Memorandum. Defendant presented no actual evidence that this was the case. The only evidence was presented was an email that did not actually support Defendant's position in this regard.

2. Nonetheless, in Plaintiff's response to the motion dated August 3, `, it submitted evidence that the top sections tested were not Flexstake products. (e.g Doc. 105-1; 105-6).

3. Plaintiff has subsequently discovered additional evidence that proves conclusively that the knock-off top sections were used in the TTI testing1. The top sections that were tested were shipped to Orafol Americas, Inc. and are currently located at their headquarters in Avon, Connecticut. A review of the delineators sent to Orafol shows that the wall thickness of the product tested by TTI is too thin to have been a Flexstake 750 Series top section, which is specified and manufactured to a minimum wall thickness of .055 inches. The wall thickness of the products tested was between .045 and .049.

4. In support of the preceding, Plaintiff requests that it be allowed to supplement the record by including the declarations of Chris Gaudette of Orafol Americas, Inc. (Ex. A) and Robert Hughes of Flexstake (Ex. B).

5. In determining whether to grant a motion to supplement the summary judgment record, a district court analyzes whether the proposed supplementary information provides any new evidence or creates any new questions of material fact that impact ruling on the pending motion for summary judgment. Hinkle v. City of Wilmington, 205 F.Supp.3d 558 (D. Del. 2016). Here, there are ample grounds to supplement the summary judgment based on newly discovered evidence.

6. By way of this motion, Plaintiff does not intend to waive its request for a sur-reply brief and attendant evidentiary materials (Doc. 113) with respect to which the court has not yet taken action.

7. The undersigned counsel has conferred with counsel for Defendant, Adrienne Love. Attorney Love has indicated that Defendant objects to the relief sought herein.

WHEREFORE, Plaintiff respectfully requests that the court enter an order supplementing the record on summary judgment to include the declarations of Chris Gaudette and Robert Hughes, attached as Exhibits A and B herein.

EXHIBIT A

DECLARATION OF CHRIS GAUDETTE

I, Chris Gaudette, hereby swear or affirm the following under pains and penalties of perjury:

1. I am eighteen years of age or older and believe in the obligations of an oath,

2. I am currently employed by ORAFOL Americas, Inc. ("ORAFOL") in the position of Manager of Specifications and Testing, a position 1 have held for more than twenty years. I am providing this Declaration at the request of Flexstake, Inc. ("Flexstake"), one of ORAFOL's customers.

3. One of the products that ORAFOL sells is a reflective sheeting material known as AR1000. ORAFOL sells AR1000 to Flexstake, which incorporates it into its flexible delineators.

4. In late August of 2016, to the best of my knowledge, my ORAFOL colleagues Mr. Brook Jerzyk and Mr. Jon Corbin were notified by Mr. Robert Hughes of Flexstake, that counterfeit AR1000 may have been used on delineators not manufactured by Flexstake and installed by DBI Services, LLC ("DBI") on a section of 1-95 in Miami-Dade County, Florida, for a project (the "1-95 Project") for the Florida Department of Transportation ("FDOT"). Mr. Hughes raised this concern to ORAFOL based on delineators obtained by Flexstake from the 95 Project.

5. I, together with others at ORAFOL, conducted an investigation as to whether the delineators obtained by Flexstake from the 1-95 Project had authentic or counterfeit ORAFOL AR1000 on them and, if counterfeit, whether such sheeting infringed ORAFOL's intellectual property.

6. To the best of my knowledge, in late August of 2016, my colleagues at ORAFOL were also notified by Mr. Hughes that the Texas A & M Transportation Institute ("TTI") had conducted impact testing for FDOT in the fall of 2015 of the delineator posts installed during the 1-95 Project (the "TTI Report").

7. In the fall of 2016, as part of ORAFOL's investigation into whether counterfeit sheeting of ORAFOL's AR1000 was used on delineators in the 1-95 Project, my ORAFOL colleagues and I spoke to Mr. Paul Gentry at FDOT and requested sample delineators which had been used for the impact testing in the TTI Report. Mr. Gentry authorized us to directly contact Mr. Dusty Arlington of TTI to obtain samples of the delineator posts used in the TTI Report.

8. Pursuant to our request, Mr. Arlington sent to ORAFOL a box of samples of delineator posts that had been used in TTI's impact testing for the TTI Report (the "TTI Posts"). The TTI posts were received by ORAFOL in the fall of 2016, and have been within ORAFOL's sole custody and control since that time.

9. On October 26, 2018, at the request of Flexstake, ORAFOL took measurements of the top sections of several of the TTI posts, specifically the wall thickness of the extruded tubes. The measurements are as follows, corresponding with the number marked on the tubes:

Pursuant to 28 USC 1746, I declare under penalty of perjury, under the laws of the United States of America that the foregoing is true and correct to the best of my knowledge.

Executed in Avon, Connecticut,

Dated this 31 day of October, 2018.

EXHIBIT B

DECLARATION OF ROBERT HUGHES JR.

I, Robert Hughes, Jr., hereby swear or affirm the following under pains and penalties of perjury:

1. I am eighteen years of age or older and believe in the obligations of an oath. I have personal knowledge of the matters set forth herein.

2. At all times material to the allegations in the complaint, I have been president of Flexstake, Inc.

3. I have been personally involved in the development of the Flexstake 750 Series delineator. The Flexstake 750 Series delineator is the product of many years of testing and development on the part of Flexstake.

4. The top section of Flexstake 750 Series delineators is designed and manufactured to a minimum wall thickness of .055 inches. Based on the testing we have conducted over the years as part of a research and development, we have concluded that a wall thickness of less than.055 inches causes the top section to bend over the patented hinge and insert after only a few impacts on which the top section is attached.

5. On October 25, 2018, I visited the Orafol facility at 120 Darling Drive Avon, Connecticut. I was provided access to a box containing eight Flexstake Series 750-type delineator top sections that were provided to Orafol by Dusty Arlington of TTI in the fall of 2016, which were represented to be the top sections TTI tested as part of its impact testing of the Flexstake 753.5, which formed the basis for the Technical Memorandum dated October 2, 2015.

6. Upon inspection, it was clear that the eight 750 Series-type delineator top sections in the above-referenced box are not Flexstake products. Using a Westward Digital Caliper, I measured the wall thickness of each of the top sections. Each of the top sections were in the 0.045-0.048 range. As such, they could not be Flexstake 753.5 top sections.

7. The difference between a top section with a 0.045 wall thickness and a 0.055 is significant, and represents an approximately 20% increase in materials. As stated above, a delineator top section with a wall thickness of 0.045 would result in failure after only a few impacts, and would cause the top section to bend over at the patented hinge and insert-a failure mode confirmed in the photographs contained in the October 2, 2015 Technical Memorandum, in the testing conducted by USA Crash Testing, LLC, Flexstake's own testing, and photographs of 1-95 south of Golden Glades Interchange to Miami taken by FDOT officials.

Pursuant to 28 USC 1746, I declare under penalty of perjury, under the laws of the United States of America that the foregoing is true and correct to the best of my knowledge.

Dated this 31st day of October, 2018.