Deere & Co. v. Bush Hog, LLC
Deere & Co. v. Bush Hog, LLC
2011 WL 13097463 (S.D. Iowa 2011)
June 16, 2011

Bremer, Celeste F.,  United States Magistrate Judge

Clawback
Protective Order
Waiver
Attorney-Client Privilege
Attorney Work-Product
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Summary
The court found that the ESI was subject to attorney-client privilege and work-product protection, and that the disclosing party had taken reasonable steps to prevent disclosure and rectify the error. The court ordered the parties to promptly return, sequester, or destroy the specified information and any copies it has, and not to use or disclose the information until the claim is resolved.
Deere & Company, Plaintiff,
v.
Bush Hog, LLC and Great Plains Manufacturing Incorporated, Defendants
CIVIL NO. 3:09-CV-00095-CRW-CFB
United States District Court, S.D. Iowa, Davenport Division
Signed June 16, 2011

Counsel

Richard J. Sapp, Ryan Gene Koopmans, Nyemaster Goode PC, Des Moines, IA, Roderick R. McKelvie, Christopher Paul Nofal, Jay I. Alexander, R. Jason Fowler, Stephen Pierce Anthony, Allison Elizabeth Kerndt, Covington & Burling LLP, Washington, DC, Alan C. Lau, Covington & Burling LLP, New York, NY, for Plaintiff.
Craig C. Martin, Bradford P. Lyerla, David Eric Jimenez-Ekman, Sara Tonnies Horton, Steven R. Trybus, Jenner & Block LLP, Chicago, IL, Edmund J. Sease, Michael C. Gilchrist, McKee Voorhees & Sease PLC, William W. Graham, Graham Ervanian & Cacciatore, LLP, Des Moines, IA, Phillip M. Aurentz, Christopher L. Limpus, Colleen Bloss, Meredith Elkins, Nicholas M. Mathews, Samuel F. Baxter, Scott W. Hejny, Thomas A. Graves, McKool Smith, PC, Dallas, TX, Alan R. Thiele, Rosenthal Pauerstein Sandoloski Agather LLP, San Antonio, TX, Scott R. Brown, Matthew B. Walters, Michael B. Hurd, Hovey Williams LLP, Overland Park, KS, Martha L. Shaff, Betty Neuman & McMahon PLC, Davenport, IA, for Defendants.
Bremer, Celeste F., United States Magistrate Judge

ORDER ON MOTION TO COMPEL AND FURTHER PROTECTIVE ORDER

*1 This matter comes before the Court on Defendants' Motion to Compel Reproduction of Documents (Clerk's No. 111) filed under seal. Plaintiff filed a Resistance (Clerk's No. 112), and filed under seal a Resistance Brief and attached exhibits (Clerk's No. 124).
On May 18, 2011, the Court held a hearing. Appearing for Plaintiff, Deere & Company, were Karl R. Fink, Shane Delsman and Richard Sapp. Bradley J. Powers appeared for Defendant Bush Hog, LLC. Scott R. Brown and Matthew B. Walters appeared for Defendant Great Plains Manufacturing Incorporated. On May 25, 2011, Defendants filed a Supplemental Memorandum of Law in Support of Their Motion to Compel Reproduction of Documents, and Plaintiff filed under seal a Memorandum of Law Regarding the New Issues Raised by Great Plains During the May 18, 2011, Hearing.
Defendants seek reproduction of a document that Deere produced during discovery but then retrieved under Federal Rule of Evidence 502 and a Protective Order, asserting attorney-client privilege and work-product protection.
This matter is fully submitted. Based upon the parties' arguments and the record, the Court FINDS and ORDERS as follows.
I. Background
Deere filed a Complaint of patent infringement against Defendants on June 5, 2009. Great Plains and Bush Hog each filed a counterclaim for declaratory judgment against Deere on November 13 and 23, 2009, respectively.
On December 23, 2009, the Court adopted the Proposed Scheduling Order and Discovery Plan, stating that fact discovery would begin on December 18, 2009, and be completed by November 1, 2010, in accordance with the patent-oriented discovery plan to be later filed.
On January 29, 2010, the parties filed a Joint Motion for Protective Order and an attached proposed Stipulated Protective Order that “would facilitate orderly discovery.” Joint Mot. Prot. Order 1. The Court adopted the Protective Order, which provided in relevant part:
Any party who inadvertently discloses documents that are privileged or otherwise immune from discovery shall, promptly upon discovery of such inadvertent disclosure, so advise the receiving party and request that the documents be returned. The receiving party shall return such inadvertently produced documents, including all copies, within ten (10) days of receiving such a written request. The party returning such inadvertently produced documents may thereafter seek re-production of any such documents pursuant to applicable law.
Prot. Order 4-5.
In March and April 2010, the parties negotiated an agreement on how to handle disclosure or discovery of electronically stored information (ESI). On April 20, the parties reached an agreement. As part of the terms, the parties agreed to produce e-mails in electronic. tiff (“TIFF”) images rather than in native format. The TIFF images would, “to the extent possible,” include the electronic searchable text of the native file. Deere Ex. J at 3. According to the agreement, the parties intended to produce non-privileged e-mail.
To collect documents from Deere's e-mail databases, the company hired an e-discovery vendor, H&A eDiscovery. Using keywords supplied by Defendants, H&A searched the computers of Deere employees identified by Defendants. H&A gave the resulting 20,000 documents to Deere's in-house counsel, Stephen Dellett, who was experienced in patent litigation. Dellett reviewed each document, separating them into three groups: privileged, non-privileged, and not relevant. H&A then sent the approximately 300 privileged and 13,800 non-privileged documents Dellett had reviewed and separated to Elijah, another e-discovery vendor hired by Deere, for processing and production. As Elijah's president, Andrew Reisman, an attorney, stated he has logged more than 10,000 hours performing electronic discovery consulting and data-filtering services in connection with “hundreds of litigation matters.” Reisman Decl. 1-2.
*2 Elijah employees used a computerized system to process the privileged and non-privileged electronic documents, extracting searchable text and metadata, and bundling the text, metadata and files into a searchable, sortable database. Separating the privileged documents from the non-privileged documents, the employees loaded the processed data onto Elijah's host online platform, Concordance FYI. Elijah employees created a user ID for Shane Delsman, a Deere attorney, so he could access Concordance FYI to review the documents for privilege.
Delsman conducted a keyword search of the electronically stored documents and reviewed for privilege each document that resulted from the search. Among the keywords were “patent” and “Dixon,” the last name of Deere's in-house counsel, William Michael Dixon. In addition to the documents already designated as privileged by Dellett, Delsman tagged another approximately 100 documents as privileged within Concordance FYI. Delsman instructed Elijah employees not to produce any document that was tagged as privileged. In stages, Elijah employees created TIFF images of the non-privileged documents for production, endorsed the documents with bates stamps and confidentiality designations, and created production sets.
Using this process, Deere produced documents totaling 5,980 pages in May 2010, 110,397 pages in June, and 26,601 pages in July. On September 17, 2010, the parties filed a Joint Motion to Amend Scheduling Order, requesting that the deadline for completion of fact discovery be extended to February 21, 2011, and the Court granted the Motion.
Deere produced documents totaling 1,823 pages in September 2010, 346 pages in October, and 2,083 pages in November.
On January 11, 2011, the parties filed a joint motion requesting an extension of the fact discovery deadline to March 18, 2011. The Court granted the motion. In January 2011, Deere produced 137,377 pages.
On February 10, 2011, the parties filed another joint motion seeking extension of scheduling order deadlines. The Court granted the motion, extending the fact discovery deadline to April 1, 2011, and the expert discovery deadline to June 10, 2011.
On February 16, 2011, Deere produced seven discs containing 189,747 pages numbered DC 285154 through DC 474901. Document number DC 396275-76 was a two-page meeting appointment request sent March 7, 2008, on an electronically maintained calendar program from Tony Grande, a Deere engineer, to Dixon and other Deere employees, including Debra Harrison, an engineering manager. Grande indicated on the appointment request that at the meeting he wanted Dixon's opinion on a legal issue, which he described and which relates to this case.
On March 1, 2011, Great Plains and Bush Hog each filed a Motion for Summary Judgment of Non-Infringement.
On March 23, 2011, during the lunch break at Harrison's deposition, a Great Plains attorney had Grande's March 7, 2008, meeting request marked as exhibit 188. When the deposition resumed, the attorney began questioning Harrison about the exhibit, reading into the record part of the exhibit describing the legal issue Grande had described to in-house counsel. Deere's attorney objected on the basis the document was privileged and inadvertently produced. He instructed Harrison not to answer.
The next day, Deere's counsel e-mailed Defendants' counsel with the following notice and request concerning the material in exhibit 188 from Harrison's deposition:
During yesterday's deposition of Debra Harrison, Mr. Brown, counsel for Great Plains, introduced a document marked DC 396275-[7]6 as exhibit 188. This document was inadvertently produced and is a privileged document under the attorney-client privilege and work-product protection.
*3 Pursuant to paragraph 10 of the Protective Order ..., Fed. R. Civ. P. 26(b)(5)(B) and Fed. R. Evid. 502(b), we hereby request that all electronic and hard copies of document DC 396275-[7]6 be permanently destroyed and/or removed. This would include Summation, counsels' personal computers, or any locations where counsel, or anyone under counsel's control (i.e. electronic discovery vendors, paralegals, etc.) may have stored a copy of DC 396275-[7]6. Please return the seven discs produced by Deere on February 16, 2011, which contain DC 396275-[7]6 .... We will send a new set of production without DC 396275-[7]6 upon receipt of the old discs. Please also confirm, via a reply to this email, that you have deleted or destroyed all hard and electronic copies of DC 396275-[7]6, including removing such document from Summation.
I would appreciate a response by the end of the day today confirming that Defendants will comply with our request and agree to the withdrawal of exhibit 188 from the Harrison Deposition.
Deere Ex. C at 5-6 (alterations added). Defendants agreed to comply with Deere's requests and agreed to the withdrawal of exhibit 188 from the deposition. Great Plains notified Deere that it had found two duplicates of the document, numbered DC 396155-56 and DC 396181-82 in Deere's production. Deere asked Defendants to handle the duplicates in the same manner as Deere had requested them to handle DC 396275-76. Deere informed Defendants that it would contact the court reporter and have exhibit 188 removed from the Harrison deposition transcript. No party raised the issue of redacting from the transcript the portion of DC 396275-76 that Great Plains' attorney had read into the record while questioning Harrison at her deposition. The transcript was marked as confidential pursuant to the parties' agreement, and each party received a copy.
At some point in March 2011, Deere produced an additional 719 pages, bringing the total to 475,000 pages produced. DC 396275-76 and its two duplicates are the only produced documents Deere has retrieved as privileged.
On April 5, 2011, a paralegal for Great Plains' counsel wrote to Deere's counsel that he was enclosing the seven discs produced by Deere on February 16, and the letter would “serve as confirmation that all of the reference documents from the aforementioned email string have been destroyed, both in physical and electronic form.” Deere Ex. H.
On April 28, 2011, Defendants filed the present Motion to Compel, seeking reproduction of DC 396275-76. In their Motion, Defendants asked the Court to conduct an in camera review of DC 396275-76, which the Court later did.
On May 16, 2011, for an exhibit supporting its Resistance to the Motion to Compel, Deere filed under seal portions of Harrison's deposition transcript, including the statements that Great Plains' counsel had read from DC 396275-76, which had been marked as deposition exhibit 188. In its Order filed the next day, the Court directed Deere to provide a copy of the document at issue for in camera inspection prior to the May 18 hearing. Deere complied by hand delivering the document (exhibit 188) to the Court in a sealed envelope marked as confidential and for the Judge's eyes only.
At the discovery hearing on May 18, 2011, Great Plains' attorney read into the transcript the language from DC 396275-76 that he had read during the Harrison deposition, and to which Deere's attorney had raised a privilege objection during the Harrison deposition.
Invoking Federal Rule of Evidence 502, Defendants in their present Motion ask the Court to compel production of exhibit 188, on the grounds Deere waived attorney-client privilege and work-product protection covering document DC 396275-76 because it produced the document on February 16, 2011, or because when Deere filed the Harrison deposition transcript pages on May 16, 2011, Deere made a disclosure and waiver that extends to exhibit 188. Defendants seek production of exhibit 188 in its entirety, or, alternatively, if the Court concludes Deere has not waived the privilege and work-product protection for the document, Defendants seek a redacted version of exhibit 188. As a further alternative, Defendants assert the statements from exhibit 188 read into the Harrison deposition transcript by Great Plains' attorney are not protected, and Defendants request that the Court find the Harrison deposition transcript is not privileged. Defs.' Supp. Mem. Law Support Motion Compel Reproduc. Docs. 6 n.2. At the May 18, 2011, hearing, Defendants stated they did not need production of exhibit 188 to prevail on their pending Motion for Summary Judgment, but the document “confirms the position that Defendants have always had, and that Deere has just recently changed away from” concerning a term at issue in the underlying patent claims. May 18, 2011, Tr. at 5.
*4 Deere asks the Court to deny Defendants' Motion to Compel reproduction. Deere also requests the Court enter a further Protective Order striking the question of Great Plains' counsel on page 108, line 21, through page 109, line 4, of the Harrison deposition transcript; the striking of the reading of the Harrison deposition questions in the May 18, 2011, hearing transcript on page 5, line 4 and lines 9 through 14; and the removing of the excerpt of the Harrison transcript filed by Deere at Clerk's No. 124-6.
II. Discussion
Federal discovery rules “do not require production of documents protected by an evidentiary privilege.” General Dynamics Corp. v. United States, ___ U.S. ____, ____, Nos. 09-1298, 09-1302, 2011 WL 1936073, at *5 (May 23, 2011) (citing Fed. R. Civ. P. 26(b)(1)). Defendants do not dispute Deere's claim that the document at issue contains some material subject to attorney-client privilege and work-product protection.
Under the Federal Rules of Evidence, evidentiary privileges “shall be governed by the principles of the common law ... in the light of reason and experience.” Fed. R. Evid. 501; United States v. Jicarilla Apache Nation, ___ U.S. ____, ____, No. 10-382, 2011 WL 2297786, at *6 (June 13, 2011); see Pittman v. Frazer, 129 F.3d 983, 988 (8th Cir. 1997) (stating the work-product doctrine “is to be applied in a commonsense manner in light of reason and experience as determined on a case-by-case basis”).
A. February 16, 2011, production of DC 396275-76
Deere contends, and Defendants dispute, that Deere's production of DC 396275-76 on February 16, 2011, did not operate as a waiver of attorney-client privilege and work-product protection, in that Deere satisfied the requirements of Rule 502(b) in relation to the production.
Rule 502(b), adopted in 2008, provides that when a communication or information covered by attorney-client privilege or work-product protection is disclosed in a federal proceeding or to a federal office or agency, the disclosure does not operate as a waiver in a federal proceeding if, “(1) the disclosure is inadvertent; (2) the holder of the privilege or protection took reasonable steps to prevent disclosure; and (3) the holder promptly took reasonable steps to rectify the error, including (if applicable) following Federal Rule of Civil Procedure 26(b)(5)(B).”[1] Fed. R. Evid. 502(b).
For a court analyzing whether the disclosure was inadvertent and whether the disclosing party used reasonable steps to prevent disclosure and rectify the error, the Advisory Committee lists some non-determinative guidelines, or factors, taken from case law that a court may consider, including the reasonableness of precautions taken, the time taken to rectify the error, the scope of discovery, the extent of the disclosure, the number of documents to be reviewed, the time constraints for production, and the overriding issue of fairness. Fed. R. Evid. 502 advisory committee note at Subdivision (b) (stating Rule 502 does not codify any factors, because the guidelines vary from case to case; Rule 502 is flexible) (citations omitted); see Puckett v. Hot Springs Sch. Dist. No. 23-2, 239 F.R.D. 572, 586 (D.S.D. 2006) (holding school district did not waive attorney-client privilege; school district's attorney and paralegal reviewed file to be produced, but mistakenly assumed that full log had already been produced without noticing that only first page had been previously disclosed; inadvertent disclosure of unredacted pages of events log was only 13 pages of over 1,000 produced in discovery, school district acted promptly when it realized mistake, and interests of justice weighed in favor of finding no waiver).
*5 Handling the “voluminous production of ESI” poses “extra challenges” in preventing a privilege waiver. Victor Stanley, Inc. v. Creative Pipe, Inc., 250 F.R.D. 251, 258 n.5 (D. Md. 2008) (“When the review is of electronically stored information, the risk of waiver, and the time and effort required to avoid it, can increase substantially because of the volume of electronically stored information and the difficulty in ensuring that all information to be produced has in fact been reviewed.”) (quoting Fed. R. Civ. P. 26(b)(5) advisory committee's notes).
As the party invoking the evidentiary privileges, Deere bears the burden of establishing the privileges have not been waived for purposes of Rule 502. Eden Isle Marina, Inc. v. United States, 89 Fed. Cl. 480, 503 (2009) (citing In re Keeper of the Records (Grand Jury Subpoena Addressed to XYZ Corp.), 348 F.3d 16, 22 (1st Cir. 2003)); accordAmobi v. District of Columbia Dep't of Corr., 262 F.R.D. 45, 53 (D.D.C. 2009).
1. Inadvertent disclosure
In determining whether the disclosure of privileged information was inadvertent, a court examines whether the disclosure occurred “by mistake or unintentionally,” as opposed to whether disclosure was made “on purpose or intentionally,” as for example when disclosure is based on a mistaken understanding that the document was not privileged. Datel Holdings Ltd. v. Microsoft Corp., No. C-09-05535 EDL, 2011 WL 866993, at *3 (N.D. Cal. Mar. 11, 2011) (juxtaposing Rule 502(b)'s first requirement with Rule 502(a)) (citing Amobi, 262 F.R.D. at 53; Silverstein v. Federal Bureau of Prisons, No. 07-cv-02471-PAB-KMT, 2009 WL 4949959, at *11 (D. Colo. Dec. 14, 2009)).
Defendants argue, in essence, that Deere's disclosure of the privileged document was not inadvertent, in that Deere intentionally disclosed the privileged document and its duplicates based on a mistaken understanding that the document was not privileged. As evidence, Defendants point to the fact that Dellett and Delsman each reviewed the document and its duplicates before deciding to produce them as non-privileged and mark them as confidential.
Deere asserts the production was not intentional, or based on a mistaken understanding that the document was not privileged, but resulted instead from an unknown, unintentional mistake in the production process. Deere provided declarations from Dellett and Delsman, in which the attorneys described their relevant experience, and stated that they did not recall reviewing the document at issue and its duplicates, but had they seen the documents, they would have designated them as privileged. Deere placed the same confidentiality designation on all of its e-mails produced on February 16, 2011. Deere contends it does not know what went wrong in the company's ESI production process to account for the inadvertent production.
Deere handled voluminous amounts of ESI, and the company produced a large amount of documents: 475,000 pages overall, including 189,747 pages in February 16, 2011. The document at issue and its two duplicates were the only ones Deere identified as an inadvertent production. In early February, the parties were facing a March 18 discovery deadline, and on February 10 they filed their third motion to extend deadlines, including the fact discovery deadline. The Court recognizes that an accidental software glitch in a standard computerized document processing system can cause disclosure of a privileged document by mistake or unintentionally. See id. (concluding defendant's production of six e-mails, including five in a long e-mail chain, was inadvertent, where a glitch in defendant's computerized document processing system truncated, for reasons unknown, the e-mails during processing, removing the portion conveying the request from defendant's in-house counsel to investigate an infringement of defendant's intellectual property rights; the technical glitch prevented defendant's lawyers from recognizing the privileged nature of the e-mails).
*6 Having viewed the document in camera, and considering the circumstances of this case, the Court finds that Dellett's and Delsman's declarations that they did not recall reviewing the document at issue and its duplicates, but had they seen the documents, they would have designated them as privileged, are credible. The Court finds Deere met its burden to show the production was inadvertent as required under Rule 502(b).
2. Reasonable steps to prevent disclosure
Defendants maintain Deere has not shown it took reasonable steps to prevent disclosure.
Deere provided the declarations of Dellett, Reisman, and Delsman to offer facts concerning their qualifications and methodology for review and processing of the produced documents, including the voluminous number of documents reviewed, and relevant words used in the keyword search. The Court notes the time constraint just prior to the production at issue, as the parties sought their third extension of discovery deadlines.
“Inadvertent production of a relatively low proportion of documents in a large production under a short timetable due to mistake should be and usually is excused.” Id. at *4 (citing Kandel v. Brother Int'l Corp., 683 F. Supp. 2d 1076, 1085–86 (C.D. Cal. 2010)). Furthermore, depending on the circumstances, a party that used “advanced analytical software applications and linguistic tools in screening for privilege and work product may be found to have taken ‘reasonable steps' to prevent inadvertent disclosure.” Id. (quoting Rule 502 advisory committee's note). No evidence shows Deere treated the privileged material with carelessness. See Gray v. Bicknell, 86 F.3d 1472, 1484 (8th Cir. 1996) (reviewing courts' approaches to determining the occurrence and scope of waiver as a result of the unintended release of privileged documents, and approving as “best suited to achieving a fair result” the “middle test” that “accounts for the errors that inevitably occur in modern, document-intensive litigation, but treats carelessness with privileged material as an indication of waiver”).
The Court finds Deere has met its burden to show the company took reasonable steps to prevent disclosure.
3. Reasonable steps to rectify the error
Defendants assert Deere has not shown it took reasonable steps to rectify the error.
After learning during the Harrison deposition about the inadvertent production, Deere's counsel immediately objected during the deposition and instructed Harrison not to answer questions concerning exhibit 188. The following day, Deere sent Defendants written notice of its claim that document DC 396275-76, which had been introduced as exhibit 188 at Harrison's deposition, was inadvertently produced and was covered by attorney-client privilege and the work-product protection. Deere asked the Defendants to return all copies, including specific forms of the copies. At the May 18, 2011, hearing, Defendants argued that, as part of Deere's duty to take reasonable steps to rectify the error, Deere should have also requested that the privileged and protected information that Great Plains' attorney read into the record at the Harrison deposition be redacted from the sealed transcript.
Rule 26(b)(5)(B), as incorporated in Rule 502(b), states that if information produced in discovery is subject to a claim of privilege or work-product protection “the party making the claim may notify any party that received the information of the claim and the basis for it.” Fed. R. Civ. P. 26(b)(5)(B). The Protective Order states a party who inadvertently discloses privileged documents must promptly advise the receiving party and ask that the documents be returned. Deere satisfied these requirements at the Harrison deposition and in the notice it sent to Defendants the following day.
*7 Rule 26(b)(5)(B) next states that the notified party, in this case Defendants, “must promptly return, sequester, or destroy the specified information and any copies it has; must not use or disclose the information until the claim is resolved; must take reasonable steps to retrieve the information if the party disclosed it before being notified; and may promptly present the information to the court under seal for a determination of the claim.” Id. The Protective Order similarly required Defendants, as the party who received notice of the inadvertent disclosure, to return the inadvertently produced documents, including all copies. Neither Rule 26 nor the Protective Order placed on Deere a duty to retrieve the information if Defendants had disclosed it before being notified, as Great Plains did at Harrison's deposition, or a duty to identify for Defendants the specific copies for Defendants to destroy. The Court holds that Deere had no duty to request that the Harrison transcript be redacted, as part of Deere's duty to take reasonable steps to rectify the error of inadvertent disclosure.
Defendants next assert Deere failed to take reasonable steps to rectify the error when Deere filed part of the unredacted Harrison deposition transcript under seal in its Resistance to the Motion to Compel.
Under Rule 26(b)(5)(B), Deere was required to “preserve the information until the claim is resolved.” Id. By filing the Harrison transcript pages under seal, Deere preserved the information from the public. In filing the pages, Deere did not fail to preserve the information as to Defendants, because Defendants already had the Harrison transcript; they had received and retained a transcript copy, as had Deere. Furthermore, Defendants had the information in their trial preparation materials, as evidenced by Defendants' questioning of Harrison regarding the information at her deposition, and Defendants' reading of the information from the Harrison deposition at the May 18, 2011, hearing.
Deere also did not fail to preserve the information as to the Court. Rule 26 permitted Defendants to present the information “to the court under seal for a determination of the claim,” while in the same sentence prohibiting them from using or disclosing the information “until the claim is resolved.” Rule 26(b)(5)(B). Rule 26 thus distinguishes between the prohibited act of using or disclosing the information, and the permissible act of presenting the information to the court under seal for a determination of the claim. Considerations of fairness and common sense lead to the conclusion that Deere similarly was permitted to present the information under seal to the Court for a determination of the claim, without failing to “preserve the information until the claim is resolved.” Id.
The Court finds Deere has met its burden to show it took reasonable steps to rectify the error. Deere has shown its disclosure of the document and its duplicates was inadvertent, and it did not waive attorney-client privilege and work-product protection.
B. Filing of Harrison deposition transcript on May 16, 2011
Defendants assert the Court should compel reproduction of exhibit 188 from the Harrison deposition, because Deere's filing of the Harrison deposition transcript portion in which the exhibit was discussed, “revealed protected information to defendants and results in a waiver that, under Federal Rule of Evidence 502(a), also waives Deere's protections with respect to materials [exhibit 188] concerning the same subject matter that in fairness ought to be considered together with the deposition transcript.” Defs.' Supp. Mem. Law Support Mot. Compel Reproduc. Docs. 1 (alteration added). In essence, Defendants argue that Deere's filing of the Harrison deposition transcript constituted a disclosure and waived the privilege and protection, and that the waiver extends to exhibit 188.
Rule 502(a) states that when a communication or information covered by the attorney-client privilege or work-product protection is disclosed, the following provisions apply:
When the disclosure is made in a Federal proceeding or to a Federal office or agency and waives the attorney-client privilege or work-product protection, the waiver extends to an undisclosed communication or information in a Federal or State proceeding only if:
*8 (1) the waiver is intentional;
(2) the disclosed and undisclosed communications or information concern the same subject matter; and
(3) they ought in fairness to be considered together.
As an initial matter, the Court must determine if Deere's May 16, 2011, filing of the transcript constituted a disclosure under Rule 502(a). Defendants acknowledge that filing the transcript under seal did not disclose it to the public. Defendants, however, contend the transcript was disclosed to them and to the Court through the filing.
A “disclosure” is “The act or process of making known something that was previously unknown; a revelation of facts.” Black's Law Dictionary 531 (9th ed. 2009). Defendants already had possessed the transcript for some time by May 16, 2011, when Deere filed it under seal. Under the facts of this case, and in the light of reason and experience, the Court concludes that Deere did not make known to Defendants something that was previously unknown when Deere filed the Harrison transcript; the filing did not constitute a disclosure to Defendants.
On April 28, 2011, Defendants requested the Court to review the document at issue in camera, and on May 17, the Court ordered Deere to provide a copy of the document for in camera inspection. Only one day before, on May 16, Deere had filed the Harrison transcript. If the Court had reviewed the document in camera before viewing the transcript, the filing of the transcript would not have made known to the Court something that was previously unknown. But because the transcript was filed shortly before the in camera inspection, technically the filed transcript made known to the Court something previously unknown. The Court declines to find a disclosure occurred based on this timing technicality. Furthermore, even if a disclosure occurred, the information is entitled to the protection of the attorney-client privilege and the work-product doctrine, because “only a limited waiver of the privilege occurred,” as a result of filing the transcript under seal in this Court for purposes of determining the claim in the Motion to Compel, especially in view of the fact that Defendants already possessed the information. See Diversified Industr., Inc. v. Meredith, 572 F.2d 596, 611 (8th Cir. 1978) (en banc) (holding confidential communications of the corporate client were entitled to the attorney-client privilege; when the documents were disclosed in a nonpublic Securities and Exchange Commission investigation, only a limited waiver of the privilege occurred).
Moreover, Defendants have not shown they have a substantial need for the materials and that they cannot get the substantial equivalent of the materials by other means. Baker v. General Motors Corp., 209 F.3d 1051, 1054 (8th Cir. 2000); see Fed. R. Civ. P. 26(b)(3). The Court notes Defendants “are not foreclosed from obtaining the same information from non-privileged sources.” Diversified, 572 F.2d at 611.
The Court declines to grant Defendants' Motion to Compel Reproduction of Documents on the basis of Rule 502(a). All forms of the information contained in exhibit 188, including statements from the document read by Great Plains' attorney into the Harrison deposition transcript, are covered by the attorney-client privilege and the work-product doctrine.
III. Conclusion
*9 For the reasons discussed above, Defendants' Motion to Compel Reproduction of Documents (Clerk's No. 111) is denied.
The Court grants Plaintiff's request for a further Protective Order. The Court orders the following: the striking of the questions of Great Plains' counsel in the Harrison deposition transcript on page 107, lines 20–23; page 108, lines 1–9 and 20–23; and page 109, lines 1–5; the striking of the reading of the Harrison deposition questions in the May 18, 2011, hearing transcript on page 5, lines 2–14; and the removing of the excerpt of the Harrison transcript filed by Deere at Clerk's No. 124-6.
IT IS SO ORDERED.
Dated this 16th day of June, 2011.

Footnotes

Rule 26(b)(5)(B) states as follows:
If information produced in discovery is subject to a claim of privilege or of protection as trial-preparation material, the party making the claim may notify any party that received the information of the claim and the basis for it. After being notified, a party must promptly return, sequester, or destroy the specified information and any copies it has; must not use or disclose the information until the claim is resolved; must take reasonable steps to retrieve the information if the party disclosed it before being notified; and may promptly present the information to the court under seal for a determination of the claim. The producing party must preserve the information until the claim is resolved.