In many, if not most, IP cases the utilization of both consulting experts and testifying experts is common. One key difference between the two is the ability for the opposing counsel to depose a testifying witness while the work of consulting experts is generally protected as part of work-product privilege. It is important to protect your consulting experts from discovery by knowing the right protection clause as well as understanding the Daubtert Standard rule of evidence. This protection comes from FRCP 26(b)(4)(D) for experts retained in expectation of litigation support that are not expected to testify unless there is a showing of exceptional circumstances. Specifically, the rule states:
“D) Expert Employed Only for Trial Preparation. Ordinarily, a party may not, by interrogatories or deposition, discover facts known or opinions held by an expert who has been retained or specially employed by another party in anticipation of litigation or to prepare for trial and who is not expected to be called as a witness at trial. But a party may do so only:
(i) as provided in Rule 35(b); or
(ii) on showing exceptional circumstances under which it is impracticable for the party to obtain facts or opinions on the same subject by other means.”
These exceptional circumstances require a firm to use caution. In Apple Inc. v. Amazon.com, Inc., Case No. 11-1327-PJH (JSC) (N.D. Ca. Apr. 1, 2013) in the US District Court for the N.D. of California a discovery ruling forced Apple to allow the limited deposition of two assistant experts (consulting experts) of a testifying expert. Apple maintained that the assistants initial survey work was independent of the testifying expert’s work but the court argued the following:
“The undisputed facts suggest that the [assistants’ initial survey] work may not have been independent of [the testifying expert’s] later survey work…. That is to say, [the testifying expert] may have considered, if not relied on, the initial survey work in forming her opinion because [the assistants] completed the initial survey work sometime before or during their work on the later surveys [with the testifying expert].”
So how should your firm avoid these problems and protect your consulting experts? The “undisputed facts” referenced above included:
Overlapping billing records- The assistant experts billed for their work during the same period in which the testifying expert was developing their own survey work. In fact, the assistant experts billed double the hours as the testifying expert. This cast doubt on the assertion that the testifying expert’s survey was “completely independent,” according to Apple, from the initial survey of the assistant experts. The lesson is to ensure that the overlap of experts is minimal or non-existent.
Tackle the issue of discovery of a testifying witness’ assistants early on- A protection order agreed to by the parties early on actually decreases the likelihood of the deposition of assistants due to language saying that the documents would be subject to discovery. However, the court determined it was not applicable, saying the protective order applied only to “discovery of materials provided to a testifying expert, not materials generated by a testifying expert’s assistants (emphasis added).” By taking into account the use of assistants as “consulting experts”, the whole issue could have been avoided.
In summary, keeping your testifying and consulting experts as separate and independent as possible can help to ensure protection from discovery and protect your pre-litigation exploration. In addition, a thorough knowledge of existing precedent can be instructive on how to protect your consulting experts.