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November 10, 2005.

GOOGLE INC., Defendant.

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 [1] [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. ...

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