Brotech Corp. v. The Purolite Co., Case No. 05-2330 (E.D. Pa. March 17, 2008) 

Faced with an onerous Order requiring defendants to produce all files found on two servers, originally discussed here, Judge Cynthia M. Rufe overruled the Magistrate’s Order and limited it to search hits, filtered for privilege and work product. The court agreed with the rule established in the district courts of the Second Circuit that an expert witness can assume two roles, a testifying expert and a consulting expert, and it is only the material reviewed in connection with the testifying expert opinion that is subject to production to the opposing party.

The case involves alleged trade secret misappropriation. In an earlier Stipulation and Order, defendants were required “to return to plaintiffs any Purolite files in their possession, and then to purge said files from their possession, custody and/or control.” In a subsequent deposition, defendants’ computer expert testified

[A]t Thermax's direction, he had performed two distinct tasks. The first was to produce an expert report regarding whether an array of Purolite information identified by Purolite's expert witness Lawrence Golden ("the Golden Exhibits") was located on a discrete set of data storage devices ("the Thermax devices"), after performing all necessary searches of images of the devices. This set of devices did not include the India or Michigan servers. The second task was to conduct electronic searches of images of Thermax's India and Michigan servers for evidence of Purolite files therein (which, in accordance with the May 23 Order, already should have been disclosed to Plaintiffs and purged).

Slip Opinion at 2-3 (footnotes omitted). He also testified that: “in December 2007, after completing the review of only 5% of the hits yielded by the search of the India and Michigan servers for evidence of Purolite files, he was instructed to stop the job by Thermax's counsel.” To no one’s surprise, this generated a motion for production of the files on the India and Michigan servers, all of them.

The Magistrate Judge, finding that, since the expert testified that he considered the India and Michigan servers for purposes of Rule 26(a)(2)(B), “defendants must provide copies to Plaintiffs, regardless of any claim of attorney-client privilege or work product doctrine." Such production was required to permit a determination of whether Defendants had violated the earlier Stipulation and Order. Accordingly, the Magistrate issued the following Order:

On or before February 20, 2008, Defendants' counsel shall produce to Plaintiffs' counsel forensically sound copies of the images of all electronic data storage devices in Michigan and India which Defendants' expert, Huron Consulting Group ("Huron"), copied in May and June 2007 and which were reviewed by Stephen Wolfe, Defendants' expert. These forensically sound copies are to be marked "CONFIDENTIAL-DESIGNATED COUNSEL ONLY."

Slip Opinion at 1. 

After objection, Judge Rufe took a more nuanced approach. The court found that the expert had actually performed two separate tasks, only one of which formed the basis for his opinion. The portion that did not, the consulting portion, was not subject to Rule 26(a)(2)(B). As such, an expert's proponent may still assert a privilege over materials considered by the expert, “but only over those materials generated or considered uniquely in the expert's role as consultant.” The court noted that the “law on this point is especially developed in the Second Circuit, and specifically, in a line of cases decided in the Southern District of New York.”

The court did not stop there:

Notwithstanding the foregoing ruling, the Court wholly agrees with the Magistrate Judge that, in present circumstances, a significant measure of disclosure of the contents of the India and Michigan servers is necessary to ensure that Thermax has not retained Purolite information in violation of the May 23 Order. The fact that Wolfe's electronic search of the India and Michigan servers using search terms designed to find Purolite information yielded numerous hits suggests the strong possibility (if not providing conclusive proof) that Purolite information is improperly contained in those servers.

Slip Opinion at 7. Because no intentional violation of the earlier Order has been established, the court limited disclosure to hits from the searches previously agreed to, subject to filtering for privilege and work-product review.

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