tecum against Dudney and to request that Dudney be ordered to pay all expenses associated with
the motion should Vastera prevail.
tion t uCeS.

As noted above, Expeditors has sued Vastera for trade secret misappropriation, and based
on the damages opinion proffered by Dudney, Expedit Ny claims more than $20 million in
damages. To defend against these claims, Vastera is an fled to explore the purported factual and
legal bases of Dudney’s damages opinions as well as ri inconsistencies between the views
he intends to express in the underlying case and the testimony and opinions he has given, and the
damages theories and methodologies he had adopted, in his prior trade secret and patent cases.
See Fed.R.Civ.P. 26(b)(1) (authorizing parties to obtain discovery regarding “any matter, not
privileged, that is relevant to the claim or defense of any party”); Ortiz-Lopez v. Sociedad
Espanola de Auxilio Muto y Benefiencia de P.R., 248 F.3d 29, 34-35 (1st Cir. 2001) (holding that
an expert’s credibility and qualifications, including prior testimonial experience in cases
involving similar claims, was “directly at issue” and affirming the preclusion of expert’s
testimony for failing to make a timely disclosure of the cases in which the expert previously had
testified). Indeed, Rule 26(a)(2)(B) now requires that an expert report contain a complete listing
of any other cases in which the witness has testified as an expert at trial or by deposition within
the preceding four years, and the Advisory Committee notes authorize the pursuit of an expert’s
prior testimony even beyond the four year period for which a listing is required. Advisory
Comm. Notes for 1993 Amendments to Fed.R.Civ.P. 26(a). Accordingly, Vastera’s requests for
copies of the transcripts of Dudney’s deposition testimony, trial testimony, and expert reports in

trade secret during the past ten years and patent matters during the past five years are within the


For the reasons above, Vastera’s Motion to Enforce Subpoena Duces Tecum against

Louis G. Dudney and for Sanctions is GRANTED.

ENTER:

QL af

James}B. Zagel Lal
Unitgf States District Judge
pate: 20 Jah Zo


F.R.D. 431, 432 (W.D. Va. 1992). However, a subpoena duces tecum issued pursuant to Rule 45
is an appropriate discovery mechanism against nonparties such as a party’s expert witness.
Fed.R.Civ.P. 34(c) (“A person not a party to the action may be compelled to produce documents
and things . . . as provided in Rule 45”); All W. Pet Supply Co. v. Hill’s Pet Prods. Div., 152
F.R.D. 634, 639 (D. Kan. 1993) (“With regard to nonparties such as plaintiff's expert witness, a
request for documents may be made by subpoena duces tecum pursuant to Rule 45.”); Western
Res., 2002 WL 1822428, at *3 (ordering expert to produce testimony pursuant to Rule 45
subpoena). Dudney’s reliance on Marsh in support of the proposition regarding a blanket
prohibition against serving document subpoenas on experts is misplaced. At most, Marsh
criticizes the service of subpoenas on experts to obtain information pertaining directly to the
party, but it does not prohibit the use of a subpoena “to uncover information about other cases” in
which an expert has served. Thomas v. Marina Assocs., 202 F.R.D. 433, 434 (E.D. Pa. 2001)
(denying motion to quash subpoenas directed to expert); Quaile v. Carol Cable Co., Civ. A. No.
90-7415, 1992 W: 277981, at *2 (E.D. Pa. Oct. 5, 1992) (discussing Marsh and granting motion
to compel discovery regarding expert’s opinions pursuant to subpoena). Unlike the Marsh case,
Vastera is not seeking to circumvent the normal discovery process by pursuing from Dudney
information relating to Expeditors, the party in the underlying action. Rather, as in Thomas,
Vastera is attempting to uncover information regarding Dudney’s damages opinions in his prior
trade secret and patent cases. Accordingly, Rule 26 does not prohibit the use of a subpoena in
this situation.

Dudney also argues that the motion should be denied because the subpoena was

improperly issued during a stay of discovery in the underlying action in Michigan. However, I


bounds of permissible discovery. See Western Res., Inc. v. Union Pac. RR. Co., No. 00-2043-
CM, 2002 WL 1822428, at *3 (D. Kan. July 23, 2002) (ordering testifying expert to produce
prior testimony from other litigations, administrative proceedings, and arbitrations that related to
the subject matter or his opinions in the underlying action, as well as documents considered in
forming those prior opinions); Ladd Furniture, Inc. v. Ernst & Young, No. 2:95CV00403, 1998
WL 1093901, at *10-11 (M.D.N.C. Aug. 27, 1998) (compelling production of prior expert
reports and prior deposition and trial testimony dating back six years).

Regarding any opposition from Dudney, Vastera argues that Dudney waived all
objections to the subpoena by failing to object within 14 days of service, and that he thus has no
basis to refuse to produce the requested materials. In response, Dudney argues that the 14-day
time limit in which to object does not apply to those objections that relate to information subject
to a privilege or other prohibition on disclosure, citing Vente v. Datronic Rental Corp., No. 92 C
3289, 1995 WL 42345, at *4 (N.D. Ill. Feb. 2, 1995). This argument regarding waiver of
objections may be irrelevant in light of the fact that a party cannot waive certain discovery
protections. See Ludwig v. Pilkington North America, Inc., No. 03 C 1086, 2003 WL 22242224,
at *3 (N.D. Ill. Sept. 29, 2002). More importantly, this discussion is irrelevant because
considering Dudney’s objections on the merits, I find that they are not valid.

Dudney first argues that the motion should be denied because a document discovery
regarding a party’s testifying expert must proceed against that party under Rule 26 and the
appropriate provisions of Rule 34, not through the use of a subpoena duces tecum directed to the
expert under Rule 45. He points out that subpoenas issued under Rule 45 may not be used to

circumvent the limitations on expert discovery set forth in Rule 26, citing Marsh v. Jackson, 141


some confidentiality protection is warranted, this cannot serve as a proper basis to deprive
Vastera of this discovery. See Western Res., 2002 WL 1822428, at *3 (rejecting expert’s
protective order argument and ordering expert to produce prior testimony).

In the end, I see no reason to deny the instant motion. Accordingly, Dudney is hereby
ordered to produce without further delay all materials responsive to Requests Nos. 6 and 7 in
Vastera’s subpoena.

Motion for Sanctions

Rule 37(a)(4) “presumptively requires” every loser to pay the attorneys’ fees and costs
that the prevailing party incurred in connection with a motion to compel. Rickels v. City of South
Bend, 33 F.3d 785, 786-87 (7th Cir. 1994). In this case, by requiring a motion to compel in order
to obtain materials that he should have produced voluntarily, Dudney engaged in sanctionable
conduct under Rule 37(a)(4). Illinois Tool Works, Inc. v. Metro Mark Prods., Ltd., 43 F.Supp.2d.
951, 960 (N.D. Ill. 1999). In addition to having no valid objection to complying with the
subpoena, Dudney has failed to make timely objections to the requests, failed to timely seek a
protective order if one was needed, ignored the response date of the subpoena, and still has not
produced the materials requested. Accordingly, I find that it is entirely appropriate to order
Dudney to reimburse Vastera for its fees and costs. See Sparks Tune-Up Crrs., Inc. v. Strong,
No. 92 C 5902, 1994 WL 87458, at *3 (N.D. Ill. March 16, 1994) (granting motion for sanctions
where party should have lodged objections or sought a protective order, but instead let deadlines
pass). Vastera is instructed to submit a bill of costs detailing the fees and costs incurred in

connection with this motion, to which Dudney will have an opportunity to respond.


Midi fe Order Form (06/97)

United States District Court, Northern District of Hlinois

Name of Assigned Judge Sitting Judge if Other
OF Magistrate Judge James B. Zagel than Assigned Judge
CASE NUMBER 04 C 321 DATE 2/20/2004
CASE EXPEDITORS vs. VASTERA, INC., ET AL
TITLE
[in the following box (a) indicate the patty filing the motion, e.g, plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.]
DOCKET ENTRY:
qd) a Filed motion of [ use listing in “Motion” box above.]
(2) a Brief in support of motion due
@) a Answer brief to motion due . Reply to answer brief due. .
(4) oO Ruling/Hearing on set for at
(5) a Status hearing[held/continued to] [set for/re-set for] on set for at
(6) a Pretrial conference(held/continued to} [set for/re-set for] on set for at
(7) o Trial{set for/re-set for] on at
(8) Oo [Bench/Jury trial] [Hearing] held/continued to at
(9) im This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to}
OFRCP4(m) OLocal Rule 41.1 OFRCP41(ayi) 0 FRCP41(a)(2).
ao) @ [Other docket entry] Motion (1-1) to enforce subpoena duces tecum against Louis G. Dudney
and for sanctions is granted. Enter Memorandum Opinion and Order.
(aii) @ {For further detail see order attached to the original minute order.]
No notices required, advised in open court.
No notices required. sme of otis
Notices mailed by judge's staff.
Notified counsel by telephone. FEB 26 2004
oY | Docketing to mail notices.
Mail AO 450 form. ened doctting LA naa
Copy to judge/magistrate judge. yrs -
courtroom . + vs date mailed notice
Dw deputy’s - _-
initials
Date/time received in
central Clerk's ‘Office mailing deputy intiaks



find no legal support for the argument that an expired stay in discovery requires the denial of a
motion to compel compliance with a subpoena issued during the stay. See In re Air Crash
Disaster, 130 F.R.D. 627, 630 (E.D. Mich. 1989), In addition, even if there was a stay at some
point, it is undisputed that there presently is no stay in the underlying action and thus no
prohibition against Vastera seeking this discovery from Dudney at this time.

Dudney further argues that the propriety of the discovery requests should be decided by
the Michigan Court. In Kearney v. Jandernoa, 172 F.R.D. 381 (N.D. Ill. 1997), this Court faced
a scenario that is nearly identical to the one presented here. However, as the Court in Kearney
recognized, a motion dealing with a subpoena “must be filed and decided in the court from
which the subpoena issued,” so the approach in Kearney ~ namely deferring to the decision of the
Michigan Court — cannot be used here. Jd. at 383 n. 4.

Finally, Dudney argues that the motion to compel should be denied because protective
orders in his other engagements preclude him from complying with the subpoena. As a general
tule, however, protective orders should not be used as shields to resist the production of relevant
information even when the information is considered to be confidential. See Jepson, Inc. v.
Makita Elec. Works, Ltd,, 30 F.3d 854, 859-60 (7th Cir. 1994), There is a strong presumption
that pretrial discovery must take place in public, and it is Dudney’s burden to prove with specific
evidence that his prior reports and testimony should be afforded some protection. Id., see also
Andrew Corp. v. Rossi, 180 F.R.D. 338, 341-42 (N.D. Ill. 1998) (noting that protective orders are
designed to encourage apprehensive litigants to produce responsive materials and should not be
used as an excuse to avoid discovery). Dudney’s conclusory and unsupported assertions are

insufficient for me to exempt prior reports and testimony from discovery, but even if find that


order, After the deadline for objections as well as the deadline for production had passed,
Vastera requested by letter dated September 18, 2003 that Dudney immediately comply with the
subpoena. It was then suggested that Dudney would produce at least some responsive materials,
but despite Vastera’s additional follow up efforts, Dudney produced no prior reports or
testimony.

On October 20, 2003, Dudney’s counsel represented that Dudney might be willing to
produce his prior expert reports and testimony witha a motion to compel, and so the attorney
requested an additional ten days for Dudney to contact the clients. Yet ten more days passed, and
Vastera again received no response from either Dudney or his counsel.

On November 7, 2003, Vastera again inquired why Dudney had not produced his prior
reports and testimony, as required by subpoena, and advised Dudney’s counsel that further delays
would not be acceptable. In response, Dudney again requested additional time, and Vastera
agreed to give Dudney another week to comply with the subpoena. But another week came and
went, and Dudney did not comply.

Vastera followed up with another letter on November 20, 2003 advising that it would
have no choice but to proceed with a motion to compel and for sanctions should Dudney refuse
to provide concrete assurances that he would produce the requested materials, Dudney’s counsel
replied by email on the same day, confirming that Dudney had provided his prior reports and
testimony to Expeditors’ counsel prior to the September 15 response date of the subpoena and
further representing that “[Expeditors’ counsel] acknowledges that he did not make a timely
production.” Nonetheless, Dudney refused to produce the materials requested. Accordingly,

Vastera filed the instant motion, pursuant to Rule 37 and Rule 45, to enforce the subpoena duces


In light of Dudney’s claimed intellectual property experience, Vastera promptly requested
in a letter dated May 15, 2003, the production of Dudney’s prior testimony and reports in trade
secret and patent infringement litigations. When Dudney did not produce the requested
materials, Vastera served him with a subpoena duces tecum on August 27, 2003. In addition to
several other requests not at issue here, the subpoena included the following two requests:

6. All transcripts of the deposition testimony, trial testimony, and/or expert reports of

Louis G. Dudney, in any matter involving allegations of trade secret misappropriation

during the past ten years.

7. All transcripts of the deposition testimony, trial testimony, and/or expert reports of

Louis G. Dudney, in any matter involving allegations of patent infringement during the

past five years.
The subpoena was issued by the United States District Court for the Northern District of Illinois,
Eastern Division, and directed Dudney to produce the requested materials by September 15,
2003.? He made no production by that response date.

In the ensuing four months after the subpoena’s issue, Vastera made a good faith effort,

pursuant to Rule 37(a)(2)(B), to encourage Dudney to comply with the subpoena without a court

" Asa designated expert, Dudney agreed to abide by the protective order entered by the
Michigan Court in the underlying litigation, which by its terms covers responses to subpoenas
duces tecum. Vastera’s counsel advised Dudley that he could designate as confidential any
materials he produced pursuant to Vastera’s subpoena under the protective order. Moreover,
Vastera’s counsel made it clear that Vastera was not interested in using any confidential business
information that might be contained in Dudney’s prior reports and testimony, and that Vastera’s
counsel was willing to review redacted materials and then consider whether there was a need for
further information from Dudney. For months, Dudney’s counsel rejected Vastera’s offers,
asserting that “it was not feasible” to redact portions of the reports, and thus Dudney, as of
November 2003, produced nothing in response to Requests No. 6 and 7. Shortly before Vastera
filed the instant motion to enforce the subpoena, Dudney made an incomplete production of
redacted plaintiff reports from selected prior matters.

? Because Dudney is based in Chicago, the subpoena properly issued from this Court
under the signature of Vastera’s counsel. See Fed.R.Civ.P. 45(a)(2) & (3).

2


UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

EXPEDITORS INTERNATIONAL OF
WASHINGTON, INC., a Washington
corporation, and EXPEDITORS
TRADEWINN, L.L.C., a Washington limited
liability company,

Plaintiffs,
v.

VASTERA, INC., a Delaware corporation,
VASTERA SOLUTION SERVICES

No. 04 C 0321
Judge James B. Zagel

Underlying Action Pending in
United States District Court

For the Eastern District of
Michigan, Docket No. 01-71000
(Borman, J.)

CORPORATION, a Delaware corporation,
and JENNIFER SHARKEY, an individual,

Defendants.

DOCKETED
MEMORANDUM OPINION AND ORDER
MEMO! DUM OPINION AND ORDER FEB 2 6 2004

Introduction

In March 2001, Expeditors International of Washington, Inc., et al. (collectively
“Expeditors”) filed a trade secret misappropriation action against Vastera, Inc. et al. (collectively
“Vastera”) in the United States District Court for the Eastern District of Michigan. Louis G.
Dudney is Expeditors’ designated expert on damages issues in the lawsuit. On May 2, 2003,
Dudney signed a Federal Rule of Civil Procedure 26 report rending his opinion that Expeditors
has “suffered” more than $20 million in damages as a result of Vastera’s alleged
misappropriation of trade secrets. To buttress his damages opinion against Vastera, Dudney
touted his qualifications and professional experience in various types of litigation, including
intellectual property litigation. As required by Rule 26(a)(2)(B), Dudney also provided Vastera

with a listing of his recent trial and deposition testimony.