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Beware Your Non-Reporting Expert


Authored by Joseph G. Eaton and J.T. Larson


A federal district court decision could potentially impact how attorneys interact with their non-reporting expert witnesses.


The case, Luminara Worldwide, LLC v. RAZ Imports, Inc., No. 15-CV-03028, 2016 WL 6774231 (D. Minn. Nov. 15, 2016), involved a patent dispute before the U.S. District Court for the District of Minnesota. The central issues in a discovery battle were the applicability of the attorney-client privilege and the scope of that privilege with respect to a non-reporting, testifying expert witness. The court’s ultimate decision left no protection for the non-reporting expert. To date, no other court has followed this ruling so we are optimistic it will remain an aberration.


As background, the 2010 amendments to the Federal Rules of Civil Procedure created two different classes of experts. The first category relates to experts required to provide reports. So-called “reporting experts” are either retained for the purposes of litigation or are employees whose duties regularly involve giving expert testimony. The second category includes all other experts, typically employees or consultants, and they are not required to provide a report. These “non-reporting experts” include employees that possess factual, technical knowledge related to the subject matter of the lawsuit but whom are also qualified to provide expert testimony on the particular subject-matter.


In this case, the plaintiff identified Doug Patton in its Rule 26 initial disclosures and later named him as a non-reporting, testifying expert witness pursuant to FRCP 26(a)(2)(C). Patton fit the mold of a traditional non-reporting expert: he was a named inventor on five of the patents involved in the litigation; he was a founding member of the plaintiff’s predecessor corporation; and he remained a paid consultant to the plaintiff on related technical issues. Over the course of discovery, defendants served document subpoenas specifically directed at Patton and also deposed him. The plaintiff objected at each turn to providing materials considered by Patton and communications with counsel on privilege grounds and instructed Patton not to answer certain questions during deposition.


The defendants moved to strike these objections, arguing that the plaintiff had waived the attorney-client privilege with respect to materials and communications provided to Patton in connection with his work on the case and his testimony when it identified him as a non-reporting expert. The magistrate judge agreed. The magistrate principally relied on a decision from the U.S. District Court for the Eastern District of California observing that the protection for communications between a party’s attorney and expert witnesses – provided by FRCP 26(B)(4)(c) as part of the 2010 amendments – only explicitly applies to experts “required to provide a report.” The magistrate found that the omission of non-reporting experts was intentional and held that the protections of Rule 26(B)(4)(c) did not apply to Patton as a non-reporting expert. Therefore, the magistrate ordered the plaintiff to either withdraw Patton as an expert or produce all communications and information he “considered.”


Following the magistrate’s order, the plaintiff elected not to withdraw Patton and instead produced 19 emails and 54 documents, which it contended constituted all of the documents not previously disclosed that Patton had “relied upon” in connection with his proposed testimony. This began a dispute as to the scope of the waiver; specifically whether the court’s order requiring that the plaintiff produce all documents that Patton “considered” meant all documents that Patton “relied upon” or all documents he “reviewed.” Along with its production, the plaintiff also produced a privilege log of other documents and communications that Patton had reviewed but not relied upon. The defendants moved to compel, arguing that “considered” had a broader meaning than “relied upon” and that the plaintiff must produce all documents that Patton reviewed in arriving at his opinions. The magistrate agreed with the defendants’ interpretation of “considered” and once more ordered the plaintiff to either withdraw Patton as an expert or produce all documents that Patton “generated, saw, read, reviewed, and/or reflected upon,” including communications with counsel, because the plaintiff had waived any privilege.


Both parties appealed the magistrate’s decision to the district court. The plaintiff challenged the waiver of privilege and the scope of the waiver and the defendants challenged the magistrate’s decision to give the plaintiff the option to withdraw Patton. The district court held that the magistrate’s decision on the waiver of attorney-client privilege was not properly before the court because the plaintiff did not timely appeal that decision. However, the district court went out of its way to note that it found the magistrate’s reasoning on the issue of Luminara’s waiver of the attorney client-privilege convincing and likely would have also ruled that Luminara had waived its privilege with respect to Patton. The district court then affirmed the magistrate’s decision with respect to the issues properly before it: the scope of the waiver and the additional time to withdraw the designation of Patton. In the end, the plaintiff faced the unenviable decision of either producing all documents and communications that Patton “generated, saw, read, reviewed, and/or reflected upon” – which, given his position, could reasonably contain sensitive materials – or withdrawing Patton as an expert witness – which, given the presumed depth of his knowledge, could make it more difficult to prove infringement. The plaintiff ultimately elected to withdraw Patton.


According to this court, the protections for communications between a party’s attorney and testifying experts provided by FRCP 26(B)(4)(c) do not apply to non-reporting experts. While there is little case law on this issue and no other courts have cited to the Luminara opinion so far, this decision shows that documents sent to non-reporting experts could wind up in the opponent’s hands. Thus, practitioners should consider taking additional precautions when working with company in-house technical engineers or other employees with similar expertise that may be identified as part of a Rule 26(a) Initial Disclosure.


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