United States District Court, E.D. Missouri, Eastern Division
MEMORANDUM AND ORDER
SHIRLEY PADMORE MENSAH, Magistrate Judge.
This matter is before the Court on Emerson's Motion for Protective Order (Doc. 172) and Defendants' Motion to Compel Testimony of Stuart Holsten (Doc. 173). For the reasons stated below, both motions will be granted in part and denied in part.
I. FACTUAL AND PROCEDURAL BACKGROUND
This case concerns Emerson's claims that Defendants manufacture, use, sell, offer to sell, and/or import various vacuum cleaners (the "Accused Products") that infringe Emerson's patents. In its initial disclosures, Emerson identified two of the inventors on the patents at issue in this lawsuit (Stuart Holsten and Mark Tomasiak) as persons likely to have discoverable information regarding the conception and reduction to practice of the inventions disclosed in the patents at issue.
On July 22, 2014, Defendants conducted their first deposition of Mr. Holsten. At the deposition, Emerson's counsel instructed Mr. Holsten not to answer several questions, including questions about the meaning of claim terms in the patent at issue. Emerson filed a motion requesting "a protective order precluding Defendants from attempting to elicit expert opinion testimony from non-expert witnesses regarding claim scope, validity, and any other matters outside their personal knowledge or within the scope of Rule 702, unless and until that witness has been identified as an expert pursuant to Rule 26 and the Court's Case Management Order." (Doc. 154, at 7). On August 22, 2014, in an amended order, the Court granted Emerson's motion for a protective order in part and denied it in part, stating:
Plaintiff's motion for protective order should be denied to the extent Defendants seek to elicit opinions held by Plaintiff's inventors that flow from the inventor's established expertise and personal observations made in the normal course of their duties. However, Plaintiff's motion should be granted, in part, to make clear that Defendants are prohibited from attempting to elicit opinions from Plaintiff's inventors based on information beyond that gained in the witness's ordinary duties, hypothetical information, or information provided to the witness for purposes of the litigation.
(Doc. 163). The Court further ordered that Defendants would be permitted to elicit answers to questions related to what the claims mean, the scope of the claims, and indefiniteness.
At a second deposition of Mr. Holsten on September 24, 2014, Emerson instructed the witness not to answer certain questions about an exhibit depicting one of the Accused Products, including questions asking Mr. Holsten to identify the parts of the exhibit that showed an impeller, a collector scroll, and a collector chamber. Emerson's counsel indicated that these matters were privileged because Emerson had retained Mr. Holsten to conduct a preliminary infringement investigation in this case. Upon questioning, Mr. Holsten stated that he had been retained to conduct an investigation by Emerson related to Emerson's patents and Defendants' products, but he did not remember many of the details regarding the subject matter and timing of his retention.
The parties contacted the Court by telephone to obtain a ruling on Emerson's privilege objections, and the Court ordered the parties to submit briefs. (Doc. 168). On October 3, Emerson submitted the instant motion for protective order, and Defendants submitted the instant motion to compel. (Docs. 172, 173). Each party filed a brief in response to the other party's motion. (Docs. 180, 181). At the request of the Court, Emerson also provided a declaration concerning the nature and timing of Mr. Holsten's retention. (Doc. 191, 191-1). Defendants then filed a supplemental memorandum opposing the motion for protective order. (Doc. 193).
In its Motion for Protective Order, Emerson argues that because it retained Mr. Holsten as an expert to conduct pre-filing investigation in anticipation of this litigation, Rule 26(b)(4)(D) precludes Defendants from discovering the facts known and opinions held by Mr. Holsten regarding the Accused Products and certain other matters. Rule 26(b)(4)(D) states:
Ordinarily, a party may not, by interrogatories or deposition, discover facts known or opinions held by an expert who has been retained or specifically 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.
Fed. R. Civ. P. 26(b)(4)(D). In their opposition to Emerson's motion and in their Motion to Compel, Defendants contend that Emerson has not established that Mr. Holsten was an expert retained in anticipation of litigation, that such a contention is inconsistent with Emerson's prior position that Mr. Holsten was only a fact witness, and that the questions at issue do not seek material protected by Rule 26(b)(4)(D).
The Court shares Defendants' concern that Emerson's current position appears inconsistent with positions Emerson has previously taken before this Court. In Emerson's first motion for protective order with regard to Mr. Holsten, Emerson's position was that Mr. Holsten's expert testimony was not discoverable because he was a "fact witness" who had not been prepared to give expert testimony. (Doc. 154). In addition, at the hearing on the motion for protective order, counsel for Emerson stated, "I'm not so sure that we have a hybrid witness here only because we're not relying on them as an expert witness. And to date they haven't formed any opinions." (Doc. 173-1). Moreover, despite the fact that Emerson's purpose in filing the earlier protective order was to prevent Defendants from discovering Mr. Holsten's opinions during his deposition, and despite the fact that Rule 26(b)(4)(D) expressly limits the discoverability of opinions from a retained, non-testifying expert, Emerson never mentioned the fact that Mr. Holsten was a retained, non-testifying expert. Taken together, these statements and omissions certainly left the Court with the impression that Emerson viewed Mr. Holsten ...