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IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

SYNTHES SPINE COMPANY, L.P., :

Plaintiff, : CIVIL ACTION 

:

v. :

:

ROBERT WALDEN, et al., :

Defendants. : NO. 04-CV-4140

MEMORANDUM OPINION

J. Davis December 21, 2005

Presently before the Court is defendants’ motion to compel discovery and required

disclosures pursuant to Federal Rule of Civil Procedure 26(a)(2) (Doc. No. 84), plaintiff’s

response in opposition to defendants’ motion to compel discovery and cross-motion for limited

protective order (Doc. No. 88), defendants’ reply thereto (Doc. No. 90), and plaintiff’s sur-reply

memorandum in further response to defendants’ motion to compel (Doc. No. 95). 

For the following reasons, this Court grants in part and denies in part both motions (Doc.

No. 84, 88).

I. Defendants’ Motion to Compel

Defendants seek the production of all information “considered” by plaintiff’s damages

expert, John Stavros, in fashioning his conclusions in accordance with Federal Rule of Civil

Procedure 26(a)(2) (“Rule 26(a)(2)”). (See Def. Br., at 7). Defendants seek this information

regardless of its privileged status, arguing that Rule 26(a)(2) trumps or waives any type of

privilege against disclosure. (Id., at 8-18). 

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Plaintiff contends that this discovery dispute involves only one “critical issue,” the 1

applicability of the attorney-client privilege to the notes and communications of a testifying

expert. (See Def. Br., at 16, 18, 24). This Court disagrees. For instance, plaintiff does not

concede the discoverability, in unredacted form, of all documents reviewed by plaintiff’s

testifying expert, but, instead, seeks to limit this discovery to various categories of

documentation based upon work product principles. (See Pl. Br., at 9) (“Synthes is willing to

produce all factual data contained in the e-mails . . . request[ing] only that the Court permit

appropriate redactions of any attorney communications in which counsel imparted attorney

impressions about the case . . . .”). Furthermore, plaintiff continues to assert that the core work

product privilege of Rule 26(b)(3) insulates both notes between plaintiff’s expert, plaintiff’s

client, and plaintiff’s counsel and communicational exchanges between plaintiff’s expert and

plaintiff’s counsel. (Id., at 12-14).

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In response, plaintiff agrees to produce various categories of information that plaintiff’s

expert reviewed prior to issuing his expert report, subject to the execution of a confidentiality

agreement as to several categories of documents. (See Pl. Br., at 8-12). However, plaintiff still

refuses to produce three types of information: (a) notes of plaintiff’s expert during a September

23, 2005 meeting between plaintiff and plaintiff’s in-house counsel, outside counsel, and expert;

(b) the content of oral conversations between plaintiff, plaintiff’s expert, and/or plaintiff’s

counsel; and (c) unredacted versions of documents reviewed by plaintiff’s expert, including emails requesting and/or receiving information from plaintiff and sales charts pre-dating thirdparty discovery. (Id., at 8, 10, 12-13, 14-23). Plaintiff contends that this information is protected

against disclosure by virtue of the core work product privilege and/or the attorney-client

privilege. (Id., at 24). 

A. Rule 26(a)(2)(B) requires the disclosure of all privileged information

considered by a testifying expert. 

Resolution of this discovery dispute requires an interpretation of the interaction between

Rule 26(a)(2)(B), Rule 26(b)(3), Rule 26(b)(4), and the attorney-client privilege. This, in turn, 1

requires an analysis of the discovery modifications imposed by the 1993 amendments to Rule 26.

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Based upon a textual reading of the interaction between pre-1993 Rule 26(b)(4) and pre2

1993 Rule 26(b)(3), which pertained (as it does now) to work product protections, the Third

Circuit found that opinion work product materials provided to a testifying expert were not

discoverable, rejecting the argument that pre-1993 Rule 26(b)(3) needed to “give way” to pre1993 Rule 26(b)(4) and the provisions authorizing discovery of expert witnesses. See, e.g.,

Bogosian v. Gulf Oil Corp., 738 F.2d 587, 594-596 (3d Cir. 1984). This decision, and its

underlying rationale, have been held inapposite when determining whether evidentiary privileges

shield from discovery materials provided to testifying experts after the 1993 amendments. See,

e.g., Suskind, 2001 WL 92183, at *3 (finding that authors of the Federal Rules of Civil

Procedure, through the 1993 amendments, “rejected the interpretation of Rule 26(b)(3) set forth

in the Bogosian case that discovery pursuant to Rule 26(b)(4) is subject to the limitations of the

second sentence of Rule 26(b)(3) concerning core attorney work product”); B.C.F. Oil Refining,

Inc., 171 F.R.D. at 65 (Bogosian logic is “probably obsolete”). 

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Prior to 1993, parties were limited both in what they could discover from testifying

experts and in how they could obtain this discovery. Expert testimony was only discoverable if

“known” and relied upon by the expert. See Fed. R. Civ. P. 26(b)(4) (1992); Duke Oishi, A

Piece of Mind for Peace of Mind: Federal Discoverability of Opinion Work Product Provided to

Expert Witnesses And Its Implications in Hawaii, 24 U. Haw. L. Rev. 859, 868 (2002)

(addressing differences between pre-1993 expert discovery rules and post-1993 expert discovery

rules). Moreover, interrogatories were the only method of taking discovery of expert witnesses,

as permitted by Rule 26(b)(4)(A)(i), unless the presiding court granted a “motion” for leave to

take further discovery. See Fed. R. Civ. P. 26(b)(4)(i)-(ii) (1992); Suskind v. Home Depot 2

Corp., 2001 WL 92183, at *3 (D. Mass. Jan. 2, 2001). 

The 1993 amendments, which imposed mandatory disclosure obligations on testifying

experts, broadened the scope of discoverable information and the methodology for obtaining this

information. Rule 26(b)(4) was expanded to permit the taking of depositions of testifying

experts. See Fed. R. Civ. P. 26(b)(4) (2005). Furthermore, Rule 26(a)(2)(B) was added to

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require testifying experts to submit an expert report, which, in turn, must disclose, inter alia, “the

data or other information considered by the witness in forming the opinions.” Id. (emphasis

added). The advisory committee notes accompanying the 1993 amendments to Rule 26 identify

the objectives behind this mandatory report: 

The report is to disclose the data and other information considered by the expert . . .

Given this obligation of disclosure, litigants should no longer be able to argue that

materials furnished to their experts to be used in forming their opinions–whether or not

ultimately relied upon by the expert–are privileged or otherwise protected from

disclosure when such persons are testifying or being deposed. 

Id. (emphasis added). 

The advisory committee notes to the 1993 amendments to Rule 26 provide express

instruction on how to interpret both the requirement that the expert report disclose all

“information considered” by the expert witness and the scope of relevant and suitable inquiry

during the expert’s deposition pursuant to Rule 26(4)(a). See Mississippi Publishing Corp. v.

Murphree, 326 U.S. 438, 444 (1946); 4 Wright & Miller, Federal Practice and Procedure § 1029

(3d ed. 2002) (“In interpreting the federal rules, the Advisory Committee Notes are a very

important source of information and direction and should be given considerable weight.”). For

instance, it is clear from such commentary that the term “considered” in Rule 26(a)(2)(B)

exceeds the more narrow definition of “relied upon,” referring instead to 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 opinions, even if such information is ultimately

rejected. See, e.g., Amway Corp. v. Procter & Gamble Co., 2001 WL 1877268, at *1 (W.D.

Mich. April 17, 2001) (documents supplied to testifying expert, but not read, reviewed, or

considered in forming opinions, not discoverable under Rule 26(a)(2)(B)); Vitalo v. Cabot Corp.,

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212 F.R.D. 472, 474 (E.D. Pa. 2002) (defining “consider” in Rule 26(a)(2)(B) as reflecting on,

reviewing, or using, even if ultimately rejected by expert). It is equally clear that the disclosure

requirements of Rule 26(a)(2)(B) 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. Finally, the 1993 advisory committee notes

to Rule 26 fail to distinguish between types of “privilege,” such as the attorney-client privilege or

the work product privilege codified in Rule 26(b)(3). See Wright, Miller, & Marcus, Federal

Practice and Procedure § 2016.2, at 252 (2d ed. 1994) (“the disclosure requirements of Rule

26(a)(2), adopted in 1993, were intended to pretermit further discussion and mandate disclosure

despite privilege”). 

Despite the clear intent behind Rule 26(a)(2)(B), jurisprudential division exists among

federal courts over how to interpret the interplay between Rule 26(a)(2)(B), Rule 26(b)(4), and

the attorney-client and work product privileges. Compare Krisa v. Equitable Life Assurance

Soc’y, 196 F.R.D. 254, 259 (M.D. Pa. 2000) (finding that disclosure of core work product to a

testifying expert does not abrogate the privilege that attaches to such materials) with Suskind,

2001 WL 92183, at *6 (“present weight of the caselaw tends to be in favor of allowing discovery

of core attorney work product materials which have been considered by an expert”). This

division, however, is hardly balanced, as the overwhelming majority of courts addressing this

issue have adopted a pro-discovery position, concluding that, pursuant to Rule 26(a)(2)(B), a

party must disclose all information provided to its testifying expert for consideration in the

expert’s report, including information otherwise protected by the attorney-client privilege or the

work product privilege. See, e.g., In re Pioneer Hi-bred Int’l, Inc., 238 F.3d 1370, 1375-1376

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(Fed. Cir. 2001) (“fundamental fairness requires disclosure of all information supplied to a

testifying expert in connection with his testimony,” regardless of whether such information falls

under the attorney-client or core work product privilege); Colindres v. Quietflex Mfg., 228

F.R.D. 567, 571 (S.D. Tex. 2005) (“information that the expert creates or reviews related to his

or her role as a testifying expert must be produced,” even when materials are privileged); Am.

Fidelity Assurance Co. v. Boyer, 225 F.R.D. 520, 521 (D.S.C. 2004) (requiring disclosure of core

attorney work product materials that were used or consulted in preparation of expert report);

Cornell Research Found, Inc. v. Hewlett, 223 F.R.D. 55, 78-79 (N.D.N.Y. 2003) (disclosure of

work product materials to testifying expert overcomes privilege); CP Kelco U.S. Inc. v.

Pharmacia Corp., 213 F.R.D. 176, 178-179 (D. Del. 2003) (requiring production of documents,

which implicate the attorney-client privilege, reviewed by testifying expert because it would be

“manifestly unfair to allow a party to use the privilege to shield information which it had

deliberately chosen to use offensively”); Vitalo v. Cabot Corp., 212 F.R.D. 478, 479 (E.D. Pa.

2002) (“Rule 26(a)(2)(B) . . . vitiates a claim of attorney work product with respect to any

information considered by a party’s expert, whether or not relied upon by that expert”); In re

McCrae, 295 B.R. 676, 679 (N.D. Fla. Bankr. 2003) (materials furnished to testifying expert

must be disclosed because “plain meaning of Rule 26(a)(2) trumps protections afforded by

attorney-client privilege and work product doctrine”). These courts reason that the 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, and effectuates a waiver to the same extent as

any other disclosure. See In re Pioneer Hi-bred Int’l, Inc., 228 F.3d at 1375-1376 (finding waiver

of attorney-client and work product privileges upon disclosure of confidential communications to

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testifying experts); United States Fid. & Guar. Co. v. Braspetro Oil Serv. Co., 2002 WL 15652,

at *5-6 (S.D.N.Y. Jan. 7, 2002) (finding waiver of attorney-client privilege when testifying expert

reviews electronic disks containing otherwise privileged information); Paul Rice, 2 AttorneyClient Privilege in the United States § 9:33 (2005) (when an expert witness considers

confidential attorney-client communications in developing her testimony, offering of opinions

constitutes waiver of attorney-client privilege for those communications). Furthermore, this

bright-line rule serves important policy considerations, including the facilitation of effective

cross-examination and the resolution of uncertainty as to the discoverability of documentation

divulged to a testifying expert. See, e.g., Musselman v. Phillips, 176 F.R.D. 194, 198 (D. Md.

1997) (outlining policy considerations behind pro-discovery interpretation of Rule 26(a)(2)(B)). 

This Court interprets Rule 26(a)(2)(B) as requiring disclosure of all information, whether

privileged or not, that a testifying expert generates, reviews, reflects upon, reads, and/or uses in

connection with the formulation of his opinions, even if the testifying expert ultimately rejects

the information. See Luther Hajek, Guise, Contrivance, or Artful Dodging?: The Discovery Rules

Governing Testifying Employee Experts, 24 Rev. Litig. 301, 315 (2005) (“Rule 26(a)(2)(B)

precludes litigants from asserting work product and attorney-client privileges to prevent

disclosure of documents and other information disclosed to an expert”). The Court finds that

this interpretation best comports with the advisory committee notes to the 1993 amendment to

Rule 26, the great weight of the case-law interpreting Rule 26(a)(2)(B), and the policies behind

the relevant evidentiary privileges. 

B. Application

This Court now applies its interpretation of Rule 26(a)(2)(B) to the various documents

Case 2:04-cv-04140-LDD Document 96 Filed 12/21/05 Page 7 of 13
Plaintiff concedes that these materials were furnished to plaintiff’s expert for his review. 3

(See Pl. Br., at 8-12). Furthermore, although plaintiff suggests that the summaries of Joan

Raybuck’s time expenditures were not “considered” by plaintiff’s expert, it is clear that the

expert considered these summaries within the meaning of Rule 26(a)(2)(B), and ultimately

rejected use of these summaries in his final damages calculation, prior to the completion of his

expert report. (Id., at 11). 

Plaintiff fails to provide a persuasive reason why Rule 26(a)(2)(B) would require the 4

production of documents covered by the opinion work product privilege, but not the attorneyclient privilege. Nor does plaintiff suggest that the scope of a waiver for information protected

by the work product privilege differs from the scope of a waiver for information protected by the

attorney-client privilege, particularly when that information is placed at issue during the litigation

through consideration by a testifying expert.

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and information that defendants seek to compel.

1. Materials Furnished to Plaintiff’s Expert

The Court finds that plaintiff must disclose all materials, regardless of privilege, that

plaintiff’s expert generated, reviewed, reflected upon, read, and/or used in formulating his

conclusions, even if these materials were ultimately rejected by plaintiff’s expert in reaching his

opinions. This includes disclosure, in whatever form the expert received them, of materials that

plaintiff’s counsel supplied to plaintiff’s expert, including e-mails, summaries of lost sales,

summary spreadsheets, pleadings, corporate information, sales charts and breakdowns, time

analyses, retainer letters and invoices, and draft expert reports.3

2. Expert Notes of the September 23, 2005 Meeting

This Court finds that plaintiff must produce those notes of the September 23, 2005

meeting that plaintiff’s expert created in his role as a testifying expert, regardless of whether

these notes contain information that falls under the protection of the attorney-client privilege or

the work product privilege. These notes may contain information that bears on the credibility of 4

plaintiff’s expert, his report, and his trial testimony; and therefore are discoverable pursuant to

Case 2:04-cv-04140-LDD Document 96 Filed 12/21/05 Page 8 of 13
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Rule 26(a)(2)(B) and Rule 26(b)(4). See B.C.F. Oil Refining, Inc. v. Consolidated Edison Co. Of

New York, Inc., 171 F.R.D. 57, 62 (S.D.N.Y. 1997) (discovery obligations apply to documents

considered or generated by testifying expert). 

However, in requiring this disclosure, the Court imposes two caveats. First, defendants

are not entitled to any notes memorializing conversations unrelated to the instant case. (See Pl.

Br., at 12) (noting that participants discussed a wide range of topics in both this case and a

number of others). Second, defendants are not entitled to notes that have no relation to the

expert’s role as a testifying expert on the issue of damages, such as notes unrelated to the subject

matter of plaintiff’s expert testimony. See, e.g., Colindres, 228 F.R.D. at 571; B.C.F. Oil

Refining, Inc., 171 F.R.D. at 62 (Rule 26(a)(2)(B) does not require disclosure of documents

having no relation to expert’s role as testifying expert); Thoedore Banks, 2 Successful Partnering

Between Inside and Outside Counsel § 33:34 (2004) (“the disclosure requirements of Rule 26

arguably should only apply to privileged communications or other materials concerning subjects

that are related to the topics upon which the expert has been retained to testify, and a testifying

expert’s mere access to other privileged documents, or presence during unrelated privileged

communications, should have no bearing whatsoever on privilege considerations”). 

3. Oral Communications Between Plaintiff, Plaintiff’s Expert, and/or

Plaintiff’s Counsel

Plaintiff’s expert must disclose the content of all oral communications that plaintiff’s

expert considered in formulating his opinions as a testifying expert in this case, regardless of

whether these oral communications come from plaintiff’s counsel or plaintiff itself. The Court

sees no principled distinction between the discoverability of oral and written communications

that a testifying expert considers in fashioning her opinions. See, e.g., Fed. R. Civ. P.

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26(a)(2)(B) (requiring disclosure of “data or other information” considered by testifying expert);

TV-3, Inc. v. Royal Ins. Co. Of Am., 193 F.R.D. 490, 492 (S.D. Miss. 2000) (requiring

disclosure of all documents and oral communications reviewed by experts in connection with

formulating opinions, even those ultimately rejected or not relied upon). Nor does the case-law

expressly make such a distinction. See, e.g., B.C.F. Oil Refining, Inc., 171 F.R.D. at 67 (“there

does not seem to be a principled difference between oral and written communications between an

expert and an attorney insofar as discoverability is concerned”); Karn v. Ingersoll-Rand Co., 168

F.R.D. 633, 640 (N.D. Ind. 1996); Theodore Banks, 2 Successful Partnering Between Inside and

Outside Counsel § 33.34 (noting that many courts permit discovery of oral communications

between a corporation’s counsel and their testifying expert”). Consequently, although plaintiff’s

expert need not disclose the content of privileged communications that plaintiff’s expert never

considered in formulating his opinion as to damages in the instant case, as such communications

would not fall within the scope of Rule 26(a)(2)(B) and therefore would retain their privileged

status, plaintiff’s expert must nonetheless disclose the content of all oral communications

between plaintiff, plaintiff’s attorney, and/or plaintiff’s expert that plaintiff’s expert considered in

fashioning his conclusions in this litigation. 

II. Plaintiff’s Motion for a Limited Protective Order

Plaintiff cross-moves for a limited “mirror image” protective order under Rule 26(c). 

(See Pl. Br., at 25). 

This Court disagrees that plaintiff is entitled to the entirety of the relief requested in its

proposed protective order, particularly because this Court has already granted in part defendants’

motion to compel. Nonetheless, this Court agrees that a limited protective order granting some

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Some of these documents, such as the sales charts and summary charts, contain trade 5

secrets and other confidential information.

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of plaintiff’s requested relief would serve the interests of justice and avoid undue harassment and

oppression. See Fed. R. Civ. P. 26(c). Accordingly, this Court grants plaintiff’s motion for a

protective order to the extent that plaintiff seeks to: (a) prohibit disclosure to non-parties of the

documents that plaintiff must produce pursuant to this Order; (b) prohibit non-parties from 5

attending the deposition of plaintiff’s expert; and (c) prohibit defendants from asking plaintiff’s

expert about the content of privileged conversations between plaintiff and its counsel that

plaintiff’s expert did not consider in formulating his opinions as to damages in the instant case. 

III. Conclusion

For the preceding reasons, this Court grants in part and denies in part both defendant’s

motion to compel and plaintiff’s cross-motion for a protective order. An appropriate Order

follows.

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This includes, but is not limited to, both the attorney-client privilege and the work 6

product privilege.

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IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

SYNTHES SPINE COMPANY, L.P., :

Plaintiff, : CIVIL ACTION 

:

v. :

:

ROBERT WALDEN, et al., :

Defendants. : NO. 04-CV-4140

ORDER

AND NOW, this 21 day of December 2005, upon consideration of defendants’ st

motion to compel discovery (Doc. No. 84), plaintiff’s response in opposition to defendants’ 

motion to compel discovery and cross-motion for limited protective order (Doc. No. 88), 

defendants’ reply thereto (Doc. No. 90), and plaintiff’s sur-reply memorandum in further 

opposition to defendants’ motion to compel (Doc. No. 92), it is hereby ORDERED as follows:

1. Defendants’ motion to compel discovery (Doc. No. 84) is GRANTED in part and

DENIED in part according to the following formula:

A. Plaintiff is required to produce, within five days from the date of this Order, all

materials generated, reviewed, reflected upon, read, and/or used (“considered”) by

plaintiffs’ expert in reaching his conclusions in this litigation, including all

materials that would otherwise be privileged. This includes, but is not limited to, 6

the categories of documents that plaintiff identifies in his response (Doc. No. 88),

such as e-mails, summaries of lost sales, summary spreadsheets, pleadings,

corporate information, sales charts and breakdowns, time analyses, retainer letter

and invoices, and draft expert reports; 

B. Plaintiff is required to produce, within five days from the date of this Order, those

portions of plaintiff’s expert notes during the September 23, 2005 meeting that

relate both to the instant case and to the expert’s role as a testifying expert on the

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issue of damages; and

C. Plaintiff’s expert is required to disclose, at the resumption of his deposition, all

oral communications between plaintiff, plaintiff’s expert, and/or plaintiff’s

counsel that plaintiff’s expert considered in formulating his opinions as to

damages in this matter. 

2. Plaintiff’s motion for a limited protective order (Doc. No. 88) is GRANTED in part and

DENIED in part according to the following formula:

A. The parties are prohibited from disclosing to non-parties the content of the

documents that plaintiff must produce pursuant to this Order;

B. Non-parties are prohibited from attending the deposition of plaintiff’s expert;

C. Defendants are prohibited from asking plaintiff’s expert about the content of

conversations between plaintiff and its counsel that plaintiff’s expert did not

consider in formulating his opinions as to damages in the instant case; and

D. Plaintiff’s motion is DENIED in all other respects. 

 BY THE COURT:

_____/s/____________

Legrome D. Davis, J.

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