Non-Testifying Expert Who Submits Declaration on Unsuccessful Summary Judgment Motion Is Subject to Deposition Concerning the Subject Matter of the Declaration — Also on Opinions Formed as Percipient Witness

Positive Techs., Inc. v. Sony Electronics, Inc., 2013 U.S. Dist. LEXIS 49738 (N.D. Cal. April 5, 2013):

Plaintiff and Defendant have filed a joint statement regarding a discovery dispute over the deposition of Plaintiff's expert, Dr. Alan Sobel. See Dkt # 431. Plaintiff seeks a protective order barring Defendant from questioning Sobel on certain topics. For the following reasons, Plaintiff's request for a protective order is granted in part and denied in part.

I. Background

According to Defendant's section of the joint statement, Robert Hotto, the inventor of the patents-in-suit, sought assistance from Dr. Sobel in making his patents work. Hotto conferred with Sobel for several years in the mid-1990s about the ideas described in the patents.This case was filed in July 2010. In December 2011, Plaintiff submitted Sobel's declarations in support of its opposition to Defendant's motion for partial summary judgment regarding the invalidity of the patents-in-suit. Defendant did not depose Sobel in connection with the motion for summary judgment. Judge Illston denied the motion in January 2012.

Plaintiff has not, and states that it will not, designate Sobel as a testifying expert at trial. However, Plaintiff reserves the right to designate Sobel as a rebuttal expert after Amazon designates its expert on the validity of the patents-in-suit.

Plaintiff argues that because Sobel has not been designated as a testifying expert, and is merely a consulting expert, Federal Rule of Civil Procedure 26(b)(4)(D) ("Expert Employed Only for Trial Preparation") proscribes his deposition on the following topics: opinions expressed or facts relied on in his declaration; work-product or privileged information related to the declaration; his expert opinions related to the patents-in-suit or prior art; and his opinions developed prior to the inception of the litigation, or as an expert consultant for prior counsel for Plaintiff.

Footnote 2. Defendant does not argue that it is entitled to discovery of Sobel's opinions related to the patents-in-suit or prior art, except to the extent that the opinions related to the opinions Sobel expressed in his declaration.

Defendant argues that because Sobel has submitted sworn testimony in this case, he cannot retain the status of a consulting expert. Defendant argues that it is entitled to depose Sobel regarding the subject matter of his declaration; information he acquired or opinions formed before this lawsuit was filed; and any underlying communications regarding the declaration.

The parties have suggested proposed compromises that narrow the scope of their dispute. Plaintiff agrees to allow Defendant to depose Sobel about information, but not his expert opinions, that was not acquired in preparation for trial, but through his interactions with Hotto before he began working for Plaintiff. Defendant agrees to refrain from questioning Sobel on the content of any privileged communications with counsel for Plaintiff.

II. Analysis

The Court will accept both parties' proposed compromises, and will resolve only those issues on which the parties have not been able to come to a mutually agreeable compromise. Thus, the Court must decide whether Defendant is entitled to depose Sobel on the following subject matter: opinions expressed and facts relied on in his declaration, and opinions that were formed prior to the inception of this litigation.

A. The opinions expressed and facts relied upon in Sobel's declaration are not protected from discovery.

The Court finds that opinions expressed and facts relied upon in Sobel's declaration submitted in support of Plaintiff's opposition to Defendant's motion for partial summary judgment are discoverable. To begin with, parties may obtain discovery of any non-privileged matter that is reasonably calculated to lead to the discovery of admissible evidence. Fed. R. Civ. 26(b)(1).

Federal Rule of Civil Procedure 26(b)(4)(D), which protects discovery of facts known or opinions held by an "Expert Employed Only for Trial Preparation," does not apply to the opinions expressed or facts relied upon in Sobel's declaration. The declaration was submitted to the Court as sworn testimony in support of Plaintiff's opposition to Defendant's motion for summary judgment. Thus, Sobel was not retained only for the purpose of trial preparation, and Rule 26(b)(4)(D) does not prevent his deposition on subjects related to his declaration.

In a 2006 Northern District decision, the Court held that when a party had opened the door to expert testimony by submitting the testimony of its expert in summary judgment proceedings, the opposing party was entitled to depose the expert about the subject of the testimony. See Sims v. Metropolitan Life Ins. Co., No. C-05-02980, 2006 WL 3826716 at *2 (N.D. Cal. 2006). The Court explained that "[s]ubmitting sworn testimony is incompatible with retaining the status of a mere consulting expert immune from discovery." Id. Sims reasoned that affidavits and depositions are a substitute for live testimony at trial, and that, therefore, even though the experts had not been disclosed as testifying experts, they did not retain the status of a consulting expert. Id. However, the Sims Court limited the scope of the deposition to the statements in their declarations. Id. at *3.

The reasoning in Sims applies to this case. Because Plaintiff filed Sobel's declaration during summary judgment proceedings, and the declaration is sworn testimony similar to testimony at trial, Plaintiff cannot now claim that Sobel is merely a consulting expert with respect to the subjects raised in his declaration. See also SEC v. Reyes, No. C 06-04435, 2007 WL 963422 at *1-*2 (N.D. Cal. 2007) (holding that when an expert alternately serves as a litigation consultant and a testifying witness, only materials that do not pertain to the subject matter on which the experts have submitted testimony are protected by the work-product privilege).

Plaintiff argues that because the motion for summary judgment has been denied, the Sobel declaration thus is no longer relevant to this case. But Sobel's opinions, and the facts he relied upon, related to the declaration, appear to be reasonably calculated to lead to the discovery of admissible evidence regarding the validity of the patents-in-suit. Indeed, Sobel's declaration may have contributed to the denial of Defendant's motion for summary judgment. Accordingly, it appears that Defendant has met its initial burden of showing relevance for the purposes of discovery. It is then Plaintiff's burden to show why the information is protected from discovery, which it has failed to do.

Plaintiff further argues that a testifying expert may be re-designated as a non-testifying, consulting, expert, and that such a re-designation protects the expert from discovery unless "exceptional circumstances" are present. See Joint Statement at 4; Fed. R. Civ. P. 26(b)(4)(D) (facts known or opinions held of expert employed only for trial preparation not discoverable absent exceptional circumstances). In support of this argument, Plaintiff cites several distinguishable cases. In Feist, Judge Illston found that a magistrate judge's decision to quash deposition subpoenas of a non-testifying expert who had submitted declarations earlier in the proceedings in support of a motion to quash and a sanctions motion was not "clearly erroneous or contrary to law." Feist v. RCN Corp., Nos. 12--mc--80135, 12--mc--80119, 12--mc--80121, 12--mc--80140, 2012 WL 5412362 at *3 (N.D. Cal. 2012). The facts in Feist are different than the facts here, because there was no indication in Feist that the subject matter on which the expert opined in support of the motion to quash and the motion for sanctions was relevant to the substantive issues at trial. See id. at n.7 ("The Court . . . rejects PaxFire's arguments that by submitting a declaration in support of the motion to quash the subpoenas and by submitting a declaration in the underlying action on Feist's motion for sanctions, Eckersley and EFF have waived any otherwise applicable protections. Declarations in support of a motion to quash or a motion for sanctions do not go to the merits of the claims alleged, and, therefore, cannot operate as a waiver for purposes of merits-based discovery."). Here, Sobel's testimony was submitted in relation to a motion for summary judgment, [*11] and relates to the validity of the patents-in-suit, which will likely be a key issue at trial.

Plaintiff also cites several district court cases that are distinguishable on the basis that the experts in those cases were re-designated before they submitted any testimony to the Court. See R.C. Olmstead, Inc. v. CU Interface, 657 F. Supp. 2d 899, 904 (N.D. Ohio 2009) (expert protected from deposition where he was re-designated as a non-testifying expert before providing any testimony to the Court, and his testimony would not be used at summary judgment); Fed. Ins. Co. v. St. Paul Fire & Marine Ins. Co., No. C05-01878, 2008 WL 761417 at *2 (N.D. Cal. Mar. 19, 2008) (same); Estate of Manship v. United States, 240 F.R.D. 229, 237 (M.D. La. 2006) (re-designation of experts who had not provided any expert reports or testimony). These cases do not assist Plaintiff here. Plaintiff's expert was not re-designated as a non-testifying expert before providing testimony to the Court, and his testimony was used at summary judgment. As such, Plaintiff's reliance on these cases is misguided.

B. Sobel's opinions formed prior to the inception of this litigation are not protected from discovery.

Plaintiff argues that Sobel's opinions that were formed prior to the inception of this litigation are not discoverable, because they are protected by Rule 26(b)(4)(D). As noted above, this rule does not protect all of Sobel's opinions, because Sobel has not acted solely as an expert employed only for trial preparation. Before this case began, and before Sobel was retained as an expert by Plaintiff, any opinions Sobel had formed were unrelated to his role as a consultant for Plaintiff. Rather, they were related to his knowledge of facts acquired through his interactions with Hotto.

The designation of Sobel as a consultant for Plaintiff does not "transmute the experience that the expert witness acquired as an actor into experience that he acquired in anticipation of litigation or for trial." Atari Corp. v. Sega of Am., 161 F.R.D. 417, 421 (N.D. Cal. 1994) (holding that "an expert may be deposed concerning information acquired or opinions formed prior to his employment by a party"). See also Synopsys, Inc. v. Ricoh Co., Ltd., No. C03-2289, 2006 WL 2458721 *2 (N.D. Cal. 2006) (citing Atari); Barkwell v. Sturm Ruger Co., Inc., 79 F.R.D. 444, 446-47 (D. Alaska 1978) ("Rule 26(b)(4)(B) by its very terms applies only to 'facts known and opinions held by experts . . . acquired or developed in anticipation of litigation,'" and therefore expert witness was subject to a deposition as a fact witness regarding information acquired and opinions held prior to his retention).

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