Feeling savvy? Test your expert witness discovery know-how with this quiz.
ssume you're in the thick of it and nine months in to a heated trademark infringement case. You represent Vanities Magazine
against a sad, seedy, obvious Vanities
started out in a garage in Miami with an InkJet printer and a glue table but is now growing and diverting your client’s readers with its slavish imitations of Vanities’
iconic name, cover layout, and even their steamy monthly quiz. You tried to negotiate with VANITEASE’s
attorney, Jim Sneed, but when VANITEASE
followed up your client’s “Don’t Fight if He’s Not Mr. Right” quiz with a “Don’t Stay Long if He’s Mr. Wrong,” enough was enough. “Our quizzes are sacred!” you thundered to Sneed and later to the judge who, thankfully, agreed and found VANITEASE
liable for trademark infringement. Take that Sneed.
It is now time for you to prove Vanities’
has hired economics guru Frank Pistol. From reading his expert report, you know he is going to say VANITEASE’s
2015 profits were actually very low, after deducting their allegedly “considerable” labor, raw materials, and printing costs. You saw the photos of their InkJet-and-glue production. You know Pistol’s theory is Swiss cheese, but you want to make sure you get all of the ammunition you possibly can to nail him. Most attorneys are familiar enough with the 2010 expert discovery amendments to Rule 26 of the Federal Rules of Civil Procedure
to know you cannot discover draft expert reports or attorney-expert communications. But there are some underused exceptions. Let’s see what your years as Vanities’
top trademark attorney have taught you with this steamy expert discovery quiz.
1. An email from Sneed to Pistol providing last year’s sales figures and publication expenses.
2. An email from Pistol to Sneed attaching a draft report and setting out his expert fees incurred in preparing the report.
3. An email from VANITEASE's
in-house bookkeeper to Sneed providing copies of the monthly profit and loss reports he has generated for the last six months.
4. An email from Sneed to Pistol asking how it would affect Pistol’s opinion if VANITEASE’s
expenses for 2015 did not exceed $25,000.
5. An email from Pistol to Sneed discussing likely outcomes of this lawsuit and potential retention of Pistol in the future.
But this is an attorney-expert communication! You can’t get those. Is that what you are thinking?
We’ll you’re right. Most of the time. But, Rule 26 does have this very handy “except to the extent that” qualification that is often underutilized and allows more expert discovery than most attorneys would presume under the 2010 “attorney-expert communications” prohibition. One exception is the discovery of communications that “identify facts or data that the party’s attorney provided and that the expert considered in forming the opinions to be expressed.” That clause is in the Rule, section (b)(4)(C)(ii). Think how often an attorney is sending an expert “facts or data” the expert “considered in forming his opinions” and note that the verbiage is merely “considered” which is broader than “relied upon.”
In this example, Sneed is sending Pistol sales figures and publication expenses. These are items he must consider in calculating VANITEASE’s
profits in order to offer an opinion as to damages. Meaning, whether or not the email explicitly says, “Hey Dr. Pistol, I’m sending you some data and facts for you to consider in forming your opinion,” you—as the attorney attempting to discover this kind of information—can craft your expert discovery requests in such a manner to try to get this exact type of attorney-expert exchange you are entitled to under Rule 26(b)(4)(C)(ii). Try this request:
All communications with your retained expert which contain facts or data he considered in forming his opinions in this matter.
In deposition, you can go through Pistol’s report with him in detail, highlighting each “fact or data” that supports his opinion and ask how that information was provided to him. If he says “Sneed provided it,” voila
|This one was likely a bit easier as it is now fairly common knowledge that draft expert reports are no longer discoverable under Rule 26 after the 2010 amendment. This is true “regardless of the form in which the draft is recorded.” Meaning, even if the expert sends some revisions to his report in an email for counsel to add into the final report that he will sign, this will likely fall under a “form” of a draft report that is still protected under Rule 26(b)(4)(B). Same goes for a note the expert makes from a phone call with counsel discussing revisions he plans to make to his report. The protection of “draft reports” under Rule 26 is intentionally broad. But, just because a communication from the expert contains a draft report, or includes a draft report as an attachment, does not extend protection to portions of that communication which are discoverable under Rule 26. The fees Pistol incurred in preparing his report that were included in the email attaching the draft report are discoverable. This is where that handy “to the extent that” distinction comes in. To be sure your discovery requests are designed to extract and elicit unprotected communications from protected communications, try this:
RFP: Any communications, including those stored in electronic format, between counsel and your retained expert(s) that relate to compensation for the expert's study or testimony. To the extent that communications responsive to this request also contain information protected under F.R.C.P. 26(b)(4)(C), redact the information you claim is protected and submit a privilege log with your response describing the nature of the documents withheld and the basis for your claim of protection pursuant to F.R.C.P. 26(b)(5)(A)(ii).
Even if the expert sends some revisions to his report in an email this will likely fall under a “form” of a draft report that is still protected under Rule 26.
What?! Surely Sneed will claim attorney-client privilege between himself and VANITEASE’s
in-house bookkeeper. I’m sure he will. But the profit and loss statement, itself, is not a communication to the attorney. It is a report generated by VANITEASE
. More importantly, it is also a report not
generated by a retained expert. The protection granted over draft reports in Rule 26(b)(4)(C) only extends to retained experts, not in-house experts who have not been hired with the sole and specific purpose of offering expert testimony in the case. Attorneys with clients who have many employees who could be considered in-house experts (i.e.
, engineers, accountants, technicians, CFOs, CEOs) should warn these employees that reports, statements, ledgers, etc. they generate could be discovered during the course of litigation. As opposing counsel in the VANITEASE
case, you should try to discover these:
Any accounting reports, statements, ledgers or data compilations created by an employee or independent contractor of VANITEASE
that contain VANITEASE’s
profits or expenses for 2015.
Why doesn’t this fall under 26(b)(4)(C)? It is an attorney-expert communication, discussing some highly critical information relating to VANITEASE’s
damages. How could this not be protected? Look at Sneed’s request closely. Does it identify an assumption Sneed provided to Pistol that Pistol relied on in forming his opinion? Perhaps. It would depend whether Pistol did in fact rely upon this assumption in forming his opinion. The “facts or data considered” exception in Rule 26(b)(4)(C)(ii) is broader than the “assumptions relied upon” provision in (C)(iii).
Look at your opposing expert’s report. If there are any
stated assumptions in it, you can start there and ask for any
communications to the expert that provided those assumptions.
If you’re wondering how the heck you’re supposed to know that from the other side of the fence, good question. As opposing counsel, you’ll have to start from the chicken and make your way back to the egg. Look at your opposing expert’s report. If there are any stated assumptions in it, you can start there and ask for any communications to the expert that provided those assumptions. Similar to the expert deposition tip above, ask Pistol where he obtained the assumed information. For example, if Pistol’s expert report says “Assuming the publication expenses did not exceed $25,000 for the fiscal year 2015…” you could then ask for any communications with Pistol that identify or provide that assumption. If the opposing expert’s report does not give you such a clear roadmap (often the case), give this a whirl:
Any communications, including those stored in electronic format, with your retained expert that identify assumptions upon which he relied in forming his opinions.
|This seems like a pretty sensitive email. You might have trouble getting this one. But, what is your angle? What information in this email might fall under one of the three “to the extent that” exceptions to the Rule 26 protection of attorney-expert communications? Compensation. The Advisory Committee Notes accompanying the 2010 Amendment to Rule 26 specifically state “any communications about additional benefits to the expert, such as further work in the event of a successful result in the present case” are discoverable. The intent of this exception is to “permit full inquiry into such potential sources of bias.” This exchange between Sneed and Pistol could suggest future work for Pistol as an expert for VANITEASE if Pistol achieves a successful outcome in this case. That’s definitely motive to be a particular kind of persuasive at trial, and that’s definitely something that should be brought to the jury’s attention.
But, again, how do you, as Vanities’ attorney on the other side determine even the existence of such communications, much less prove they meet the Rule 26(b)(4)(C)(i) exception in order to discover them? Like this:
RFP: Communications with your retained expert discussing any and all benefits, monetary or otherwise, including tangential or contingent benefits, offered or provided to your expert as a result of his work in this case.
This exchange between Sneed and Pistol could suggest future work for Pistol as an expert for VANITEASE if Pistol achieves a successful outcome in this case.
So, how did you do? Were Pistol and Sneed able to get anything by you? If they did, they won’t next time with your five new savvy moves to discover their expert’s views. No matter the type of expert you’re facing or case you are trying, when it comes to your expert discovery skills you’ll now be in the know.
This article was originally published on Law360