Products Liability Discovery of Privileged Information Furnished to Experts By Michael Hoenig - New York Law Journal - May 8, 2006	Print article

You are an attorney handling a significant litigation in federal court. You have retained a highly recommended expert to testify on critical issues in the case.

A conference with the expert is scheduled in the afternoon. You prepared a detailed agenda for the meeting. You are assembling information and materials for the expert.

At the conference you will brief the expert at length on salient facts that the other side doesn't know and has not requested in discovery. You have created a memorandum discussing these points. You also have some confidential information your client told you which would solidify the expert's opinion in your favor.

This is contained in a memo your client sent you confirming the "hot" phone conversation you both had. Plus, your investigator has unearthed some "dirt" about the adversary which likely would immunize your expert from cross-examination on one issue. You can't wait to add this gravy to the forensic stew.

As the rush of anticipation heightens, you remember to emphasize to the expert the confidentiality of some of the items to be discussed: that they involve attorney-client communications and attorney work product and, so, secret items must not be disclosed. All is ready. Or is it?

Have you noted that the materials you will give to the expert may have to be disclosed precisely because the testifier expert received them for his or her consideration? Are you aware that your own work product, your mental impressions and strategies, which will be considered by the expert, will have to be disclosed? That documents normally protected by the hallowed attorney-client privilege will be squeezed out during discovery like toothpaste from the tube? That even your oral statements to the expert might be fair game for disclosure, in detail? If you haven't chewed well on these risks, you probably haven't read some of our past columns on this subject.

This article is a "refresher," a wake-up call. Here we present a new decision that delivers the resounding message we issued earlier — but even more so.

Pro-Disclosure Trend

Our column of Sept. 8, 2003, entitled "Experts' Reports, Drafts and Attorney Work Product,"¹ reported on a pro-disclosure trend in federal courts towards forcing testifying experts, when requested, to disclose the attorney work product that had been furnished to them. The article surveyed the "raging debate" about whether the pro-disclosure trend should extend even to so-called "core" attorney work product, i.e., the attorney's mental impressions, opinions and litigation strategies. That debate involved decisional law and legal commentary. Numerous leads to decisions and literature were furnished to readers along with this writer's admonition that attorneys interfacing with testifying experts must do so most thoughtfully. Given the trend, what the lawyer says or writes on a "confidential" basis could wind up being the subject of a judge's in camera review, the subject of disclosure to the other side and, potentially, an accusatory topic revealed to and debated before the jury.

That September 2003 column triggered many reader contacts lamenting such a development and criticizing the invasion of the sanctity of attorney work-product protections. Some wondered how this intrusive, prodisclosure trend would interfere with a skillful lawyer's ability to shape critical expert testimony. Clearly, the problem has been exacerbated and the challenge magnified by explosive growth of the digital age, the world of electronic data and e-mails, where drafts and revisions and embedded data abound. Because of the keen interest of readers in this topic, our November 2003 column revisited the subject.² We pointed out some additional precedents and commented on the practical realities as to why many lawyers, scholars and judges justifiably could be concerned about forcing disclosure of "core" attorney work product.

The realities of modern litigation require frequent retention and use of testifying experts. It is common practice for experienced lawyers to dynamically interface with their experts in molding claims, defenses, trial themes, evidence and demonstrative exhibits, responses to potential cross-examination questions and the like. This creative, sometimes brutally candid, give-and-take process does not unfold using sign language or mime. Lawyers and experts need to communicate effectively and that means oral, written or electronic transfers of not only data, ideas, impressions, inferences and conclusions, but also tactical disadvantages or worst-case scenarios, skeletons in the closet, strategies that the other side might find valuable, and innumerable "don't-do-it" topics. Any discovery regime that intrudes into the privacy and dynamism of such attorney creativity — however lofty the reasons for such discovery may be — is bound to agitate many persons, perhaps deservedly so.

Fundamental Clash

The key problem is the fundamental clash between two important sources of law. Rule 26(a)(2)(B) requires the testifying expert, in advance of trial, to produce a written report specifying a complete statement of all opinions to be expressed and the basis and reasons for them; plus "the data or other information considered by the witness in forming the opinions"; as well as certain other information. The word "considered" in the quoted segment is applied very broadly, an approach stimulated by the advisory committee notes to the 1993 amendments. On the other hand, the attorney work-product doctrine precludes discovery, upon mere demand, of attorney-generated work in anticipation of litigation. An exception may apply if the adversary shows particularized need and undue hardship in obtaining disclosure from other sources. However, courts must take special care to protect an attorney's mental impressions, conclusions, opinions and legal theories. This latter cluster is sometimes referred to as "core work product." Thus, one legal rule vividly says "disclose" and the other, worshiped by lawyers, loudly says "protect the lawyer's privacy."

Which Is To Prevail?

Our September and November 2003 NYLJ columns reported that, notwithstanding understandable chagrin and perhaps justifiable grimaces by top-notch litigators, the "pro-disclosure" trend seemed to be winning the tug of war. In other words, fulsome expert disclosure trumps core attorney work product.

Our article reported on ameliorative "advice" some judges or litigators had given. These included suggestions such as: (1) protecting the work product by electing not to disclose it to the expert, concededly a choice which is "less conducive to a productive relationship between attorney and expert"; (2) telling experts they have to preserve everything; (3) entering into stipulations with opposing counsel that draft reports of testifying experts will not be produced; and (4) entering into agreements at the beginning of a case about what experts need to retain. One law professor suggested taking care of such issues by agreeing "early on before you hate each other."

Then, in our November 2005 NYLJ column, we reported on a federal district court decision that protected prior drafts or versions of an affidavit by a litigant's employee.³ The draft versions of the affidavit were held to implicate attorney-client and work-product protections. The district court relied, in part, upon two decisions that had held that draft responses to interrogatories were to be protected because they contained the attorney's mental impressions and legal strategies. This writer suggested that, cumulatively, with all these attempted intrusions into lawyers' thought processes, we may be approaching some sort of unwholesome erosion of creativity.

The attempts to get drafts of expert reports, drafts of interrogatory answers and drafts of affidavits in which lawyers have had input might be rationalized in terms of the needs of the particular case. However, except for crime-fraud scenarios, each court-approved, court-ordered revelation of attorney thinking may shrink the intellectual and creative world in which lawyers can shape litigation approaches and enhance their service to clients. In an adversarial system, which is institutionally viewed as an excellent mechanism to get at the truth, an erosion of traditional protection of attorney thoughts, institutionally and proverbially speaking, may amount to the adversarial system shooting itself in the foot. Arguably, as the November 2005 article suggested, seasoned litigators and most clients well know and understand that they must sacrifice much to the great god called "Discovery." Does that mean, however, that courts should become that god's "thought police" when attorneys happen to write down in draft form or orally express to experts what they think?

New Decision

The weight of emergent authority is not seeing it this way, however. Now there is a relatively new, well-crafted federal decision out of the U.S. Court of Appeals for the Eastern District of Pennsylvania, Synthes Spine Co. v. Walden.⁴ Decided near the end of December, it seems to ratchet up the prodisclosure approach a notch. We report it here because it contains a good overview and confirms the need for thoughtful lawyer interface with testifying experts on core attorney work product subjects. Readers, therefore, can consider this yet another "wake-up call" that both written and oral communications with the expert, which they may think are confidential and protected from disclosure, probably will not be.

In Synthes, the corporate plaintiff retained a damages expert to testify. Defendant sought production of all information "considered" by the expert regardless of its privileged status. The argument: Rule 26(a)(2) expert discovery trumps or waives any type of privilege against disclosure. Plaintiff responded by agreeing to produce what the expert reviewed except three categories of information which it claimed were protected as core work product and by the attorney-client privilege. Plaintiff also sought a protective order on various items.

'Battleground' Information

The three "battleground" types of information were: (1) notes made by plaintiff's expert at a meeting between plaintiff and plaintiff's in-house counsel, outside counsel, and the expert; (2) the content of oral conversations between plaintiff, the expert and/or plaintiff's counsel; and (3) unredacted versions of documents reviewed by the expert, including e-mails requesting and/or receiving information from plaintiff and sales charts predating third-party discovery. The court plunged right into the controversy generally identified in our prior columns.

The court viewed the 1993 amendments and the advisory committee notes as providing "express instruction" on how to interpret the requirement that the expert disclose all "information considered" by the expert witness as well as the scope of relevant and suitable inquiry by opposing counsel during the expert's deposition.⁵ The court said it was "clear" that the term "considered" in Rule 26(a)(2)(B) exceeds the more narrow definition of "relied upon." Any information furnished to a testifying expert that such an expert "generates, reviews, reflects upon, reads, and/or uses in connection with the formulation of his opinion, even if such information is ultimately rejected," is discoverable.

"Equally clear" to the court from these sources was the conclusion that the disclosure requirements "were meant to trump all claims of privilege, mandating production of all information furnished to the testifying expert for consideration in the formulation of her opinions, regardless of privilege."⁶ Despite such clear intent, the court acknowledged there was some "jurisprudential division" when it came to privileged information. However, this split was "hardly balanced" since the "overwhelming majority of courts addressing this issue have adopted a pro-discovery position," including core work product and attorney-client information considered by the testifying expert.

This well-crafted opinion cites case law presenting still other key rationales as to why expert disclosure trumps even privileged information. One notion is "fundamental fairness." As one district judge stated, it would be "manifestly unfair to allow a party to use the privilege to shield information which it had deliberately chosen to use offensively." Another is that "disclosure of privileged materials to a testifying expert to formulate her testimony assumes that such materials will be made public or put at issue in the litigation." This effectuates a "waiver to the same extent as any other disclosure."⁷ The bright-line rule also serves important policy considerations, including the facilitation of effective cross-examination and the resolution of uncertainty as to discoverability of documentation divulged to an expert.

All information "considered" by the testifying expert, even if the information is ultimately rejected, is therefore discoverable. Here, this meant that the motion to compel essentially had to be granted. The notes the expert took at a conference with counsel were fair game. As the court put it, "[t]hese notes may contain information that bears on the credibility of plaintiff's expert, his report, and his trial testimony."⁸ However, two caveats were imposed. Defendant was not entitled to notes on conversations unrelated to the instant case. Further, defendant was not entitled to notes that have no relation to the expert's role as a testifying expert on the issue of damages. Additionally, the court allowed a limited protective order prohibiting disclosure of the documents to nonparties; disallowing nonparties to attend the expert's deposition; and prohibiting defendant from asking the expert about the content of privileged conversations between plaintiff and its counsel that plaintiff's expert did not consider in formulating his opinions.

Conclusion

For privilege lovers, perhaps the most destructive "bomb" in this expert disclosure blitz is the requirement to disclose oral communications about privileged matters between plaintiff, its expert and plaintiff's counsel. The court saw "no principled distinction" between the discoverability of oral and written communications that a testifying expert considers in fashioning opinions. No such distinction appears in the federal rule. Nor does the case law expressly make such a distinction. Thus, the expert here was required to disclose the content of oral privileged communications that he "considered," even if the privileged information was ultimately rejected.⁹

Synthes bites hard at lawyers who may believe that, if they don't put it in writing, there is nothing the expert will have to disclose. It also will disturb lawyers who drew distinctions between the attorney-client privilege and work product. Lawyers interfacing with testifying experts need to take into account that there are particularly sensitive issues regarding information gleaned from the client. If transfer to the expert constitutes a "waiver" of any privilege, how far and how deep does this waiver go? Additionally, it must be remembered that what attorneys say or write to the expert — even about their innermost impressions, thoughts, strategies and their "dos and don'ts" — may wind up in the expert's deposition transcript or on the adverse attorney's desk.

Endnotes:________________________________________________________________________________________________________
[1.] M. Hoenig, New York Law Journal, Sept. 8, 2003, p. 3.
[2.] M. Hoenig, "More on Attorney Work Product and Testifying Experts," NYLJ, Nov. 10, 2003, p. 3.
[3.] M. Hoenig, "Drafts of Affidavit Protected From Disclosure," NYLJ, Nov. 15, 2005, p. 3 (discussing Ideal Electric Co. v. Flowserve Corp., 230 FRD 603 (D. Nev. 2005)).
[4.] 232 FRD 460 (E.D. Pa. 2005).
[5.] Synthes, 232 FRD at 462-464.
[6.] Id. at 463.
[7.] Id. at 463-464.
[8.] Id. at 464.
[9.] Id. at 465.