C.A. No. 10-11041-NMG, 2013 WL 812484 (D. Mass. March 4, 2013) (Sorokin, M.J.) [Contentions and Testing Data]

This case involves claims of infringement involving multiple patents by both parties. The present issue concerns the withholding of certain testing information by defendant ZOLL Medical Corporation (“ZOLL”). Plaintiffs, Koninklijke Philips Electronics N.V. and Philip Electronics North America Corporation (collectively, “Philips”), moved to compel that information. The Court (Sorokin, M.J.) ordered its production, finding that any claim of protection under the work product doctrine was waived when ZOLL cited to the information in its publicly-filed infringement contentions.

ZOLL explicitly cited to testing data throughout its preliminary infringement contentions, which were filed on the Court’s docket. It now seeks to shield the data, asserting that ZOLL’s trial experts will not rely upon it and that it is immune from discovery as work product. The Court, however, rejected both these arguments. First, the Court noted that ZOLL cannot avoid disclosure merely because it now disavows any intent to use the information in the future. Because of its reliance on the data in the infringement contentions, it is relevant under Fed. R. Civ. P. 26. Second, a party cannot incorporate work product into a publicly-filed document and then decline to produce that same work product on the basis of privilege. Allowing such a result would provide ZOLL with the classic “sword and shield” weapon that basic principles of fairness preclude. Accordingly, Chief Magistrate Judge Sorokin allowed Philips motion to compel to the extent it seeks “technical information regarding the dates, parameters, and tests references through ZOLL’s preliminary infringement contentions….”