EDVA Judge Denies Production of Non-Testifying Experts' Test Results in Patent Case
On July 18, EDVA Judge Gerald Bruce Lee rejected MeadWestvaco’s effort to obtain the results of expert testing done by Rexam PLC shortly after it received MeadWestvaco's cease and desist letter regarding its patent for a "Fragrance Product, Dispenser and Dispenser Assembly. MeadWestvaco Corp. v. Rexam PLC, Case No. 1:10CV511, 2011 U.S. Dist. LEXIS 78028 (E.D.Va. July 18, 2011) (found here).
After receiving MeadWestvaco's cease and desist letter, Rexam hired counsel who retained two experts to test Rexam's product but Rexam decided not to identify either expert to testify at trial. MeadWestvaco moved to compel production of the test results. Judge Lee, as Magistrate Judge Jones had done before him, dismissed all of MeadWestvaco's arguments.
Judge Lee found:
- The materials at issue were clearly work product, as they were obtained after MeadWestvaco had threatened suit.
- MeadWestvaco failed to establish any substantial need for the information because Rexam had produced the testing that it planned to rely on at trial, MeadWestvaco performed its own tests on the allegedly infringing product, and MeadWestvaco had an opportunity to cross-examine Rexam’s testifying expert.
- Rexam had not waived work product protection because neither consulting expert would testify at trial and Rexam had not selectively disclosed any information relating to their testing.
- Since it could not show “substantial need” for the materials, MeadWestvaco could not meet the higher standard of “exceptional circumstances” under Fed. R. Civ. P. 26(b)(4)(D)(ii) to require production.
- Sandvik Intellectual Property AB v. Kennametal, Inc., 2011 U.S. Dist. LEXIS 11104 (W.D. Pa. Feb. 4, 2011) did not apply because that case involved internal testing, not testing done by an outside expert and not done at the request of an attorney.
- Rexam did not waive the work product privilege by denying in its Answer that its products infringed MeadWestvaco’s patent.
Judge Lee’s ruling is a straightforward application of the rules governing consulting experts with which all litigators are familiar. In fact, it’s not clear why MeadWestvaco persisted in appealing Judge Jones’ decision to Judge Lee. Regardless, Judge Lee’s decision provides patent litigators with a good summary of the law governing expert discovery for citation in future EDVA cases.
