The opinion of the court was delivered by: JOHN KEENAN, Senior District Judge
This is a patent case currently pending in the United States
District Court for the Eastern District of Michigan. Plaintiff
NetJumper Software L.L.C. ("NetJumper") has made claims for
infringement of its technology related to web navigation by
Defendant Google Inc. ("Google"). The matter comes before the
undersigned on Google's motion to compel document production and
the deposition of NetJumper's formerly designated testifying
expert, Dr. Nathaniel Polish ("Polish"). The Court heard oral
argument on November 8, 2005 and reserved decision. For the
reasons that follow, the motion is denied.
The following facts are taken from the briefs on the
motion.*fn1 On March 4, 2005, NetJumper informed Google that
Polish had been retained as a testifying expert in accordance
with Fed.R.Civ.P. 26(a) (2). On March 16, 2005, Polish executed an
undertaking stating that he had been retained as an expert
witness for NetJumper. Over the next six months, there were few
communications between NetJumper and Polish. NetJumper provided
Polish with some documents obtained from Google, but Polish never
produced any written reports or drafts.
NetJumper claims that a communication problem with Polish
developed in June 2005. In August 2005, Google filed a summary
judgment motion claiming, inter alia, non-infringement.
NetJumper tried to contact Polish for three weeks, but he could
not be found. On September 1, 2005, NetJumper notified Google of
the Polish problem by e-mail. With the deadline for service of
papers opposing Google's motion looming, NetJumper terminated
Polish's services and retained another testifying expert, Dr.
Bernard Galler. NetJumper so informed Google in mid-September
2005. On September 29, 2005, Google served a subpoena duces
tecum and ad testificandum on Polish. NetJumper asked Google
to withdraw the subpoena, but Google refused. On October 4, 2005,
NetJumper served objections to Google's subpoena. The parties
held a conference but were unable to resolve their differences.
The instant motion followed.
Google contends that NetJumper designated Polish as a
testifying expert and that Fed.R.Civ.P. 26(b) (4) (A) requires
Polish to comply with the subpoena regardless of NetJumper's
redesignation of him as a non-testifying expert. NetJumper contends that the
more restrictive Fed.R.Civ.P. 26(b) (4) (B) now governs the
situation and that Polish need not comply with the subpoena
absent a showing of exceptional circumstances by Google. The
parties also disagree over the necessity of a privilege log with
respect to the Polish subpoena. Google contends that NetJumper's
failure to produce a log describing any withheld documents
constitutes a waiver of privilege as to those documents.
NetJumper responds that a log is unnecessary because NetJumper
has objected to all documents sought by the subpoena as
privileged, not just some of them.
Fed.R.Civ.P. 26(b) (4) (A) permits a party to depose "any
person who has been identified as an expert whose opinions may be
presented at trial." Fed.R.Civ.P. 26(b) (4) (B) provides in
relevant part that "a party may, through interrogatories or by
deposition, discover facts known or opinions held by an expert
who has been retained . . . by another party in anticipation of
litigation or preparation for trial and who is not expected to be
called as a witness at trial, only as provided in Rule 35(b) or
upon a showing of exceptional circumstances." Fed.R.Civ.P.
35(b) refers to reports generated after physical or mental
examinations and is inapplicable in this case. "Exceptional
circumstances" are those "under which it is impracticable for the party seeking discovery to obtain facts and opinions on the same
subject by other means." Fed.R.Civ.P. 26(b) (4) (B). The
question here is whether Rule 26(b) (4) (A) or (B) applies, and,
if the latter, whether exceptional circumstances are present.
Neither party cites caselaw from the Second Circuit or the
districts therein addressing this precise issue. The Court also
finds none.*fn2 According to one highly-regarded treatise:
"Once a party has designated an expert witness as someone who
will testify at trial, the later withdrawal of that designation
may neither prevent the deposition of that witness by the
opposing party nor the expert's testimony at trial." 6 Moore's
Federal Practice § 26.80  [a] (3d ed.). For example, in CP
Kelco U.S. Inc. v. Pharmacia Corp., 213 F.R.D. 176 (D. Del.
2003), cited by Google, the court found a waiver of privilege in
certain documents where the defendant provided the documents to a
testifying expert in preparation for his deposition, but
re-designated him as non-testifying after the deposition had
begun. Id. at 177, 179. In House v. Combined Insurance Co. of
America, 168 F.R.D. 238 (N.D. Iowa 1996), also cited by Google,
the court refused to preclude the deposition and trial testimony
of a designated testifying expert where the defendant dropped the expert from the witness list after the expert examined the
plaintiff and generated a Rule 35 (b) report. Id. at 238, 245.
NetJumper cites cases in which courts have reached the opposite
result. In Ross v. Burlington Northern Railroad Co.,
136 F.R.D. 638 (N.D. Ill. 1991), the plaintiff re-designated a testifying
expert as a non-testifying expert before any expert testimony was
given, leading the court to conclude that discovery from the
expert could not be had absent exceptional circumstances under
Rule 26(b) (4) (B). Id. at 638-39. In Durflinger v. Artiles,
727 F.2d 888 (10th Cir. 1984), the Court of Appeals for the Tenth
Circuit ruled that a defendant who had hired the plaintiff's
formerly designated testifying expert could not present the
expert's testimony at trial because (i) the plaintiff had paid
the expert, (ii) the plaintiff furnished the information that
became the basis for the expert's opinion and (iii) the defendant
had its own expert testifying as to the same subject matter.
Id. at 891.
The Court has found cases from other districts that reach the
same result as Ross and Durflinger, though not necessarily on
the same facts. In Callaway Golf Co. v. Dunlop Slazenger Group
Americas, Inc., No. Civ. A. 01-669(MPT), 2002 WL 1906628 at *4
(D. Del. Aug. 14, 2002), the court refused to permit the
deposition of an expert whose designation had been changed from
testifying to non-testifying just prior to his deposition.*fn3 Mantolete v. Bolger, 96 F.R.D. 179 (D.
Ariz. 1982) is similar in both facts and holding. The court in
Dayton-Phoenix Group, Inc. v. General Motors Corp., No.
C-3-95-480, 1997 WL 1764760 at *1 (S.D. Ohio Feb. 19, 1997),
reached the same result, without making clear whether the expert
had disclosed his opinion prior to the re-designation. Finally,
in FMC Corp. v. Vendo Co., 196 F. Supp. 2d 1023 (E.D. Cal.
2002), the court applied Rule 26(b) (4) (B), even though the
experts were re-designated as non-testifying after they had
exchanged reports and opinions. Id. at 1042-46.
Having assessed the foregoing cases, the Court determines that
the weight of authority favors the application of Rule 26(b) (4)
(B) to the instant case. This case is unlike CP Kelco, where
the party re-designated the expert after the start of his
deposition to avoid producing documents consulted by the expert
in preparation for the deposition, and House, where the expert
had examined the opposing party and generated a Rule 35(b)
report. The facts of this case are more in line with Ross,
Calloway, and Mantolete, where the re-designation occurred
before the expert gave any testimony. The purpose of Rule 26 (b)
(4) (A), which permits discovery from a testifying expert
witness, is to facilitate cross-examination of that expert at
trial. See Shu-Tao Lin v. McDonnell Douglas Corp.,
742 F.2d 45, 48 n. 3 (2d Cir. 1984). That purpose is not implicated where, as here, the expert
will not testify, has never been deposed and has never produced a
report. The goal of Rule 26(b)(4)(B) is "to promote fairness by
precluding unreasonable access to an opposing party's diligent
trial preparation." Durflinger, 727 F.2d at 891. Had Polish's
deposition already taken place at the time of the re-designation,
the Court would have little cause for concern about unfair
access. Under the circumstances at hand, however, the purpose of
Rule 26(b)(4)(B) is surely implicated, and the Court will not
permit Google to access NetJumper's trial preparation by deposing
Polish and obtaining documents from him.
The Court finds that Polish is a non-testifying expert witness
subject to the protections of Rule 26(b)(4)(B). As Google makes
no showing of "exceptional circumstances," Rule 26(b)(4)(B) does
not permit discovery of facts known or opinions held by Polish
while he was retained. Of course, if NetJumper forwarded any
documents from Polish to the newly-designated testifying expert,
Dr. Galler, those documents may be discoverable under Rule
26(b)(4)(A). As for Google's argument concerning the privilege
log (see supra at 3), it is true that Fed.R.Civ.P.
45(d)(2) and Local Civil Rule 26.2(a)(2) require a party
asserting privilege to provide a description of the nature of
withheld documents and communications. Nevertheless, only
"flagrant" violations of these rules should result in a waiver of privilege. See In re In-Store Advertising Securities
Litigation, 163 F.R.D. 452, 457 (S.D.N.Y. 1995) (Leisure, J.).
The purpose of a privilege log "is to provide a description of
the allegedly privileged materials sufficient to enable the
demanding party to challenge the claim of privilege." EEOC v.
Rekrem, No. 00 Civ. 7239 (CBM), 2002 WL 27776 at *1 n. ...