Bone Care Int’l, LLC v. Pentech Pharms, Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Feb. 4, 2010) (Ashman, Mag. J.).
Judge Ashman granted defendants’ motion for a protective order precluding plaintiffs’ proposed supplemental expert reports as untimely filed. Plaintiffs’ supplemental reports sought to respond to alleged improper new material in defendants’ reply expert report. Reasoning that “[e]nough is enough,” the Court granted the motion to avoid an additional round of expert reports by both sides, further delaying resolution of the case. The Court, however, noted that plaintiffs were free to move in limine to exclude any allegedly new or unfair material in defendants’ reply report.

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This is a reproduction with permission of an excellent article written by Bob Ambrogi detailing proposed changes to Fed. R. Civ. P. 26 regarding expert witness practice that every litigator should be aware of, as they are expected to take effect December 1, 2010.
Rule 26: Major Changes for Attorneys and Experts
By Robert Ambrogi
Robert Ambrogi is the only person ever to hold the top editorial positions at both national U.S. legal newspapers, the National Law Journal, and Lawyers Weekly USA. An experienced attorney, ADR professional, writer and legal technologist, Bob formerly served as director of the Litigation Services division at American Lawyer Media.
A major revision to the federal rules governing expert witness reports is on track to take effect in December. Lawyers and experts alike agree that the changes are long overdue.
No longer would Rule 26 of the Federal Rules of Civil Procedure allow full discovery of draft expert reports and require broad disclosure of any communications between an expert and trial counsel, as has been the case ever since the rule’s revision in 1993.
Instead, under proposed amendments to Rule 26, those communications would come under the protection of the work-product doctrine. The amendments would prohibit discovery of draft expert reports and limit discovery of attorney-expert communications. Still allowed would be full discovery of the expert’s opinions and of the facts or data used to support them.
The changes were approved by the U.S. Judicial Conference in September and submitted to the Supreme Court. The Supreme Court is expected to approve the amendments by May 1 and submit them to Congress. Unless Congress rejects the rules, they will take effect on Dec. 1, 2010.
The proposed rule is broadly supported by trial lawyers and bar organizations as a step towards reducing the cost and contentiousness of litigation.
Organizations that endorsed the rule include the American Bar Association, American College of Trial Lawyers, American Association for Justice, Defense Research Institute, Federal Magistrate Judges’ Association, Lawyers for Civil Justice, Federation of Defense & Corporate Counsel, International Association of Defense Counsel, and the U.S. Department of Justice.
Dual Sets of Experts
“Lawyers and experts take elaborate steps to avoid creating any discoverable record and at the same time take elaborate steps to attempt to discover the other side’s drafts and communications,” the Judicial Conference explained in its report to the Supreme Court.
“The artificial and wasteful discovery-avoidance practices include lawyers hiring two sets of experts – one for consultation, to do the work and develop the opinions, and one to provide the testimony – to avoid creating a discoverable record of the collaborative interaction with the experts.”
The proposed rule would expressly provide that the work-product protection applies to “protect drafts of any report or disclosure required under Rule 26(a), regardless of the form in which the draft is recorded.”
The proposed rule retains the three categories of attorney-expert communications that are excluded from the work-product protection under the existing rule:
§ Communications pertaining to the expert’s compensation.
§ Facts or data that the attorney provided and the expert considered in forming opinions.
§ Assumptions that the attorney provided and that the expert relied on.
In another change, the proposed rule would alter the procedure for witnesses who will provide expert testimony but who were not specifically retained to provide expert testimony. Treating physicians and government accident investigators are examples of this category of expert.
Under the proposed rule, if the expert is not required to submit a written report, then the lawyer who will use the testimony must submit a disclosure summarizing the facts and opinions to which the expert is expected to testify.
Support from Both Sides of the Bar
Stephen B. Pershing, a lawyer with the Center for Constitutional Litigation in Washington, D.C., submitted testimony in favor of the proposed rule on behalf of the American Association for Justice. He said that plaintiff and defense lawyers agree on the need to apply work-product protection to expert draft reports.
“Practice under the 1993 expert discovery amendments has become preoccupied with a search for counsel’s work product, or counsel’s manipulation of the expert’s output that takes up time better spent focusing on the expert’s conclusions themselves,” Pershing said.
The amended rule would enable litigants to avoid the kind of “artificial behavior” that is now all too common, he suggested. No longer would lawyers and experts feel compelled to avoid written communications and no longer would well-funded litigants hire two sets of experts, one to consult in case development and the other to testify.
Another who spoke in favor of the proposed rule is Wayne B. Mason, former board chair of the Federation of Defense & Corporate Counsel and a partner in the Dallas office of Sedgwick, Detert, Moran & Arnold.
“Attorney discussions with experts are too often forced to be verbal in an effort to discourage discovery of draft reports,” he said. “The proposed rules supply a well-reasoned approach that strengthens the veracity and straightforwardness of the discovery process while considering the burden and expense.”
Mason praised the proposed rule for extending the work-product protection to employee-experts who are not required to prepare a written report. “Facilitating open communication between attorneys and in-house witnesses is an important practical consideration for the committee.”
Rule Would Reduce Costs
John H. Martin, a past-president of the Defense Research Institute and a partner with Thompson & Knight in Dallas, said that the proposed rule will help reduce the cost of litigation.
“The proposed amendments provide protection to attorney-expert communications that allows the attorney and the expert to communicate freely with each other without having to engage in time-consuming and wasteful measures to avoid the creation of a draft report,” Martin said.
“This allows the attorney to learn about the scientific or technical aspects of the case from the expert so that legal arguments not based on sound scientific methodology can be discarded, and the issues to be presented at trial can be narrowed,” Martin added. “At the same time, it allows the attorney to speak freely with the expert, many of whom are not fulltime professional expert witnesses, and to engage in an ethical preparation of the witness to present opinion testimony.”
It appears that the proposed rule extends the work-product protection to not just the expert, but also to the expert’s employees. The official Committee Note that accompanies the proposed rule explains that its protection is intended to include communications “between the party’s attorney and assistants of the expert witnesses.”
A number of lawyers had urged the committee to take this position. “An expert engineer at MIT may use grad students in his doctoral program to assist him in his research,” explained R. Matthew Cairns, president-elect of the Defense Research Institute and a lawyer in Concord, N.H., “and those students are the ones that counsel may deal with on a day-to-day basis as the expert’s team does his testing and analysis prior to him reaching a conclusion and preparing a report.”
Given the broad support for the proposed rule by lawyers and experts alike, the changes to Rule 26 are virtually certain to take effect Dec. 1.

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Bone Care Int’l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Feb. 2, 2009) (Dow, J.).
Judge Dow denied defendants’ motion to prevent plaintiffs from using their preferred technical experts in this patent case. Pursuant to a Protective Order, plaintiffs notified defendants of their intent to provide three experts with confidential materials. Defendants objected because defendants had previously retained the same experts in a different patent case in the Northern District. The Court noted that disqualifying experts was a “drastic measure” taken only when the party seeking disqualification proves a substantial relationship between any acquired confidential information and the expert’s testimony. The two cases these experts were hired for involve different pharmaceutical formulations for treatment of different conditions. And the experts testified that because of the different technologies, no information gained in defendants’ earlier case could impact the present case or benefit defendants in this case. Additionally, the Court noted that defendants did not have a confidential or privileged relationship with the experts.

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Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jan. 9, 2009) (Cox, Mag. J.).*
Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony following the reasoning of a previous opinion in a related case about the same expert — click here to read about that opinion in the Blog’s archives. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.
* Click here for more on this case and related cases in the Blog’s archives. Also, note that the Court continues the progressive use of footnote citation.

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Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc, No. 05 C 4088, Slip Op. (N.D. Ill. Aug. 15, 2008) (Moran, Sen. J.).*
Judge Moran granted declaratory judgment plaintiff Rosenthal Collins Group’s (“RCG”) motion for leave to use an expert witness that declaratory judgment defendant Trading Technologies (“TT”) previously met with. TT met the first prong of the test for expert disqualification. TT had established a confidential relationship with the expert, as proven by the non-disclosure (“NDA”) agreement entered into by TT and the expert.
But the NDA was not enough to meet the second prong of the test, that confidential information requiring disqualification was exchanged. The expert stated that he had two meetings with TT approximately four years before the issuance of this opinion. One meeting was held before the NDA was executed and one after. TT alleged that there were additional meetings, but only had supporting evidence of two meetings. TT also alleged that it discussed litigation strategy, prior art and a relevant court decision with the expert. But based upon an in camera review of TT’s evidence, the Court held that there was not sufficient evidence of an exchange of confidential information. The emails TT provided were one or two lines each and contained no confidential or work product information. And TT did not provide attorney notes or other evidence of confidential or work product information. The Court did acknowledge that one email discussion of a court opinion could have been work product, but the expert’s response was so brief and vague that the Court did not consider it advice.
Finally, TT did not offer evidence that it retained the expert or paid him any fees. TT did argue that it compensated the expert by having TT’s president speak to a trading group the expert owned. But there was no evidence that the speaking engagement was intended to be or was accepted as payment for the expert’s work.
* Click here to read much more about this case in the Blog’s archives and click here for a copy of this opinion.

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Lorillard Tobacco Co. v. Elston Self Service Wholesale Groceries, Inc., No. 03 C 4753, Slip Op. (N.D. Ill. May 13, 2008) (Ashman, Mag. J.).
Judge Ashman granted in part plaintiff Lorillard’s motion to strike defendant Elston’s expert report. Lorillard alleged that Elston, in violation of the Lanham Act and state law, knowingly bought and sold counterfeit Newport cigarettes. Elston offered an expert to opine on three general subjects: (1) customs and practices in the cigarette industry; (2) Elston’s cigarette purchasing history; and (3) whether the prices of the allegedly counterfeit cigarettes would have made it obvious to Elston that the cigarettes were counterfeit.
The Court held that the expert’s seven years in the cigarette industry and subsequent consulting were sufficient to qualifying him as an expert in the custom and practice of the industry. But the Court struck the remainder of the expert’s opinions. His opinions regarding Elston’s purchasing history were based solely on produced documents. And the jury could glean the same information from its review of the documents. The expert’s opinions regarding Elston’s subjective reaction to the price difference were struck because they were beyond both the expert’s expertise and his personal knowledge.

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Watts v. Cypress Hill, No. 06 C 3348, 2008 WL 697356 (N.D. Ill. Mar. 12, 2008) (Ashman, Mag. J.).
Judge Ashman struck plaintiffs’ expert report pursuant to Fed. R. Civ. P. 37(c)(1). Plaintiffs’ authored the song “Is It Because I’m Black” in 1968. Plaintiffs’ alleged that defendants, the musical group Cypress Hill (click here for some of the group’s music on their MySpace page), infringed their copyright in the song by using parts of it in their Black Sunday album. Cypress Hill contended that plaintiffs sold the copyright pursuant to a 1969 songwriters contract. Plaintiffs argued that the contract was a fraud.
Plaintiffs submitted an expert report (the “Report”) to support that the contract was fraudulent. In six paragraphs, the expert stated that he ran various tests and concluded that the 1969 contract was a fraud because it was printed and signed by an inkjet printer — inkjet printers were developed in the 1970s or 1980s. When Cypress Hill complained that the Report was incomplete, plaintiffs supplemented it with pictures of the testing.
But the Court held that the supplemented Report was not sufficient because it did not explain the expert’s methodology. There was no way to know how the expert translated data into conclusions. And no reputable rebuttal expert could test the expert’s methodology or opine that the data was misinterpreted. It did not matter that the missing information could likely be obtained in a deposition. Rule 26 requires that an expert report include “the basis and reasons” for the expert’s opinions. Because the Report did not disclose the expert’s methodology and reasoning, and because Cypress Hill was prejudiced by the late-served, incomplete Report, the Court struck the Report.

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Se-Kure Controls, Inc. v. Vanguard Prods. Group Inc., No. 02 C 3767, 2008 WL 169054 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*
Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.
* Click here for more on this case and related cases in the Blog’s archives. Also, note that this opinion also uses footnote citation.

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Konvin Assocs. V. Extech/Exterior Techs., No. 04 C 2544, 2006 WL 2460589 (N.D. Ill. Aug. 21, 2006) (Kennelly, J.).

In this opinion, Judge Kennelly ruled on opposing summary judgment motions arguing invalidity and infringement issues.  As an initial matter, the Court refused to exclude opposing expert affidavits despite the fact that neither expert was disclosed as required by Rule 26(a)(2)(A).  The Court held that Rule 37(c) does not allow striking evidence based upon Rule 26(a) violations where the violation is harmless.  Because neither party argued that they were harmed by the failure to disclose the experts, the Court refused to exclude the expert affidavits.  The Court went on to deal with numerous invalidity and infringement issues, but I will focus on one more expert testimony issue.


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