*1 The above matter came on before the undersigned upon Defendant Marco Gonzalez’s Motion to Compel [Docket No. 504].

Sofia B. Andersson-Stern, Esq. and Lisa C. Stratton, Esq. appeared on behalf of plaintiff; Britt M. Gilbertson, Esq. appeared on behalf of SMS Holdings Corporation and Service Management Systems, Inc. (“SMS”); and Kurt J. Erickson, Esq., appeared on behalf of defendant Marco Gonzalez.

The Court, being duly advised in the premises, upon all of the files, records, and proceedings herein, and for the reasons stated on the record at the hearing and in the Memorandum below, now makes and enters the following Order.

IT IS HEREBY ORDERED that:

Defendant Marco Gonzalez’s Motion to Compel [Docket No. 504] is GRANTED in part and DENIED in part as follows:

1. Defendant Marco Gonzalez is entitled to an extension of time to subpoena and depose Claudia Medina. Gonzalez may serve the subpoena on Claudia Medina by United States Marshal or through plaintiff’s counsel. Gonzalez’s request that Claudia Medina be sequestered is denied.

2. Pursuant to Rule 37(a)(5) of the Federal Rules of Civil Procedure and this Court’s inherent power, plaintiff’s counsel shall reimburse Gonzalez for the out-of pocket costs incurred in connection with his service of the faulty subpoena on Claudia Medina and the cancellation fees charged in conjunction with her scheduled deposition. Under Rule 26(a)(1)(a)(i) of the Federal Rules of Civil Procedure, plaintiff had a duty to provide an accurate address and phone number for Claudia Medina. By mistake, plaintiff’s counsel failed to do so. That mistake forced Gonzalez to incur unnecessary expenses and the consequence of this mistake shall be borne by the responsible party. Gonzalez’s counsel shall provide plaintiff’s counsel with the receipts for these expenses and plaintiff’s counsel shall pay these expenses to Gonzalez’s counsel on or before June 25, 2012.

3. The motion to compel as it relates to Mark Lanterman is GRANTED in part and DENIED in part as set forth in the Memorandum below. Lanterman shall produce the documents ordered by this Court on or before June 25, 2012. Plaintiff and Lanterman shall provide a privilege log consistent with this Order to Gonzalez on or before June 25, 2012.

MEMORANDUM

I. FACTUAL BACKGROUND

Plaintiff Leticia Zuniga Escamilla (“Zuniga”) initially hired Mark Lanterman as a non-testifying, consulting expert to assist her in determining whether defendants in this action had spoliated evidence. See Affidavit of Jull Gaulding [Docket No. 511], ¶ 8. As of October 29, 2010, this Court had found that “because Lanterman is an ESI expert assisting plaintiff with discovery, and thus a consultant expert as opposed to a trial expert, plaintiff had no duty to identify him as an expert.” October 29, 2010 Order [Docket No. 271], p. 6; see generally, June 28, 2011 Order [Docket No. 419], p. 72 (“According to Zuniga’s computer forensic consultant Mark Lanterman ....”).

On April 6, 2012, the Court granted Zuniga’s Motion to Extend the Deadline to Disclose Testifying Experts [Docket No. 525] as follows:

April 6, 2012 Order [Docket No. 574], ¶ 2(a)-(c).

On February 14, 2012, defendant Marco Gonzalez served a subpoena along with a Notice of Taking Deposition on Lanterman requiring him to submit to a deposition and produce documents pertaining to the following topics:

See Declaration of Sofia Andersson-Stern [Docket No. 512] (“Andersson-Stern Decl.”), Ex. 7.

On February 16, 2012, Gonzalez served an Amended Notice of Taking Deposition along with a new subpoena on Lanterman. Id., Ex. 8. The February 16, 2012 subpoena was virtually identical to the February 14, 2012 subpoena. The only major difference was that the first phrase in paragraphs 2-4 was changed from “[e]xcluding information and documentation ordered not produced by the Court’s June 28, 2011 Order” to the phrase “[e]xcluding privileged documents and information of SMS” in the February 16, 2012 subpoena.

On February 17, 2012, Zuniga served objections to Gonzalez’s subpoena, however, she responded to the language in the February 14, 2012 subpoena, as opposed to the language in the February 16, 2012 subpoena. Id., Ex. 10. Zuniga’s counsel explained: “I mistakenly used the language from the first subpoena in Plaintiff’s objections to the subpoena duce tecum served on Mark Lanterman. However, whether I had used the language from the first subpoena or the second, the wording of the objections would have been the same.” Id., ¶ 5. Zuniga objected to the topics on the basis that they were overly broad, and not reasonably calculated to lead to the discovery of admissible evidence to the extent the requested topics exceeded the scope of Rule 26(a)(2) of the Federal Rules of Civil Procedure. Id., Ex. 10. In addition, Zuniga objected to the topics because they sought information that was protected by Rule 24(b)(4)(D) and the attorney work-product doctrine. Id.

Since that time, Zuniga has withdrawn all of her objections to the requests for information and documents made to Lanterman, including all documents bearing on his role as a testifying expert to which Gonzalez is entitled under Rule 26, except for communications between Lanterman and her counsel and the documents related to those communications, which are protected by the current Federal Rules of Civil Procedure. Id., ¶ 7.

Gonzalez asserts that he is entitled to all of Lanterman’s notes and draft expert reports to the extent they relate to Zuniga, Gonzalez and SMS, as well as all of Lanterman’s communications with counsel, especially those notes, drafts and communications that occurred prior to December 2010. See Defendant Marco Gonzalez’s Memorandum of Law in Support of Motion to Compel Discovery [Docket No. 506], p. 6. In support, Gonzalez first argued that Zuniga waived any objections to Lanterman’s subpoena because she failed to interpose any objections to the second subpoena. Id., pp. 6-7. Second, although acknowledging that on December 1, 2010, an amendment went into effect that changed the expert disclosure requirements under Rule 26, Gonzalez submitted that the amendment should not be interpreted to create an injustice, and consequently he should be allowed to receive all documents and communications that were created before December 1, 2010 as not being privileged. Id., p. 7. Third, as to matters generated after December 1, 2010, Gonzalez argued that to the extent they are related to nonprivileged information, such these matters must be non-privileged and Zuniga has waived any right to withhold such documents or information. Id. Gonzalez also claimed that he has a substantial need to obtain this information to defend himself regarding Zuniga’s claim that he spoliated evidence. Id., p. 8. In the alternative, Gonzalez asked this Court to order Zuniga to produce a privilege log for communications that are being withheld on grounds of privilege and to order an in camera inspection of these documents. Id.

*4 Zuniga countered that while she erroneously used language in her objections from the first subpoena duces tecum served on Lanterman, instead of the second subpoena, because the first subpoena and the second subpoena seek the exact same information, it is fair to interpret Zuniga’s objections as valid objections to both the first and second subpoenas. See Plaintiff’s Memorandum in Opposition to Defendant Marco Gonzalez’s Motion to Compel Discovery [Docket No. 510], p. 8. Zuniga also argued that as set forth in Rule 26(b)(4)(D), Gonzalez is not entitled to any discovery generated prior to December 1, 2010, as Lanterman had been retained as a non-testifying expert during this period, and Gonzalez has not set forth any exceptional circumstances that would allow him to obtain any of this information from Lanterman. Id., pp. 8-9. As to those instances where Lanterman is a testifying expert, Zuniga claimed that the information sought by Gonzalez is governed by Rule 26(b)(4)(C). Id., p. 10. To this end Zuniga, represented:

Id., p. 9. Further, because the information sought by Gonzalez undiscoverable pursuant Rule 26(b)(4) renders, Zuniga maintained that Gonzalez is not entitled to a privilege log or an in camera inspection. Id., p. 11.

In reply, Gonzalez argued that Zuniga’s objections to Lanterman’s subpoena have been waived under Rule 45(c)(3)(A)(iii) because she failed to notice a motion for a protective order based on a subpoena before the production was scheduled to take place in February 2012.[1]See Defendant Marco Gonzalez’s Reply Memorandum in Support of Motion to Compel Discovery [Docket No. 513], pp. 4-5. Gonzalez also reiterated his request for privilege log for communications that are being withheld and an in camera inspection of those documents. Id., p. 5. Although the 2010 amendments to Rule 26(b) added a privilege between counsel and expert where none existed before, Gonzalez asserted that Zuniga has not shown any reliance on the forthcoming 2010 amendments prior to December 2010. Id., pp. 5-6. As such, Gonzalez contended that he is entitled to all communications with and between Lanterman and counsel through at least December 1, 2010, and to all communications after December 1, 2010 that are related to Lanterman’s August 2010 Affidavit and his February 2011 Declaration (which incorporates the August 2010 Affidavit). Id., p. 6. Finally, Gonzalez complained that Lanterman had not even produced all non-privileged documents as evidenced by his refusal to provide his own computer program, which eliminates pop-ups and other false leads like spyware, upon which he based his testimony regarding pornography. Id.

II. ANALYSIS[2]

*5 In 1993, Rule 26(a)(2)(B) of the Federal Rules of Civil Procedure, pertaining to discovery relating to testifying experts, was amended

Sara Lee Corp. v. Kraft Foods, Inc., 273 F.R.D. 416, 419 (N.D. Ill. 2011) (citations and marks omitted); see also Fed. R. Civ. P. 26 advisory committee’s note (2010 Amendments) (“Many courts read the disclosure provision to authorize discovery of all communications between counsel and expert witnesses and all draft reports.”).

According the 2010 advisory committee, the 1993 version

Fed. R. Civ. P. 26 advisory committee’s note (2010 Amendments).

On December 1, 2010, amendments to Rule 26(b) bearing on expert disclosure became effective. Rule 26(a)(2)(B)(ii) was revised from requiring a trial expert to disclose all “data or other information” considered in rendering his or her witness opinions, to requiring a disclosure of all “facts or data considered by the witness in forming” the opinions to be offered. Fed. R. Civ. P. 26 advisory committee’s note (2010 Amendments). This amendment was made to “alter the outcome in cases that have relied on the 1993 formulation in requiring disclosure of all attorney-expert communications and draft reports.” Id. According to the advisory committee:

Fed. R. Civ. P. 26 advisory committee’s note (2010 Amendments).

In addition, Rule 26(b)(4) was modified and provided in relevant part as follows:

Fed. R. Civ. P. 26(b)(4). Rule 26(b)(4) was “amended to provide work-product protection against discovery regarding draft expert disclosures or reports and--with three specific exceptions--communications between expert witnesses and counsel.” Fed. R. Civ. P. 26advisory committee’s note (2010 Amendments). However, Rule 26(b)(3)(A)(ii) remained the same – communications constituting work-product under the amendment are not discoverable unless the party seeking the discovery “has substantial need for the materials to prepare its case and cannot, without undue hardship, obtain their substantial equivalent by other means.” Fed. R. Civ. P. 26(b)(3)(A)(ii).

A. Lanterman’s Role as a Testifying Expert

Before this Court analyzes the scope of any production of any attorney work product provided to, considered or relied upon by Lanterman in his capacity as a testifying and trial expert, the Court must first address the applicability of the 2010 amendments to Rule 26(a)(2)(B)(ii) and Rule 26(b)(4) as they relate to the Lanterman’s services as an expert before December 1, 2010, the effective date of the amendment for Rule 26. In this regard, while Zuniga did not disclose Lanterman as a trial expert until April, 2012, Lanterman did provide expert testimony in support of her claims bearing on spoliation of evidence in an affidavit in August, 2010 and in a declaration in February, 2012 (which incorporated his August 2012 affidavit). Thus, to the extent that Lanterman had taken on the role of an expert providing testimony prior to Zuniga’s formal disclosure of him as trial expert, the question is whether this Court should apply Rule 26(a)(2)(B) and Rule 26(b)(4) as it existed prior to December 1, 2010, to any communications between counsel and Lanterman which occurred before this date.

Rule 86 dictates that amendments to the Federal Rules of Civil Procedure “take effect at the time specified by the Supreme Court” and govern “(1) proceedings in an action commenced after their effective date; and (2) proceedings after that date in an action then pending unless: (A) the Supreme Court specifies otherwise; or (B) the court determines that applying them in a particular action would be infeasible or work an injustice.” Fed. R. Civ. P. 86. By its Order of April 28, 2010, the Supreme Court provided “[t]hat the foregoing amendments to the Federal Rules of Civil Procedure shall take effect on December 1, 2010, and shall govern in all proceedings thereafter commenced and, insofar as just and practicable, all proceedings then pending.”

This case was pending when the amendments to Rule 26 took effect and Lanterman’s work as a testifying expert straddled the change in the law. Prior to the amendments on December 1, 2010, there was clearly a split among the courts around the country as to whether attorney work product that had been shared with and considered a trial expert was discoverable. Compare Regional Airport Authority of Louisville v. LFG, LLC, 460 F.3d 697, 714 (6th Cir. 2006) (concluding that Rule 26 creates a bright-line rule requiring disclosure of all information provided to testifying experts, including attorney opinion work product); Fid. Nat’l Title Ins. Co. of N.Y. v. Intercounty Nat’l Title Ins. Co., 412 F.3d 745, 750 (7th Cir. 2005) (“A litigant is required to disclose to his opponent any information “considered” by the litigant’s testifying expert.”); In re Pioneer Hi-Bred Int’l, Inc., 238 F.3d 1370, 1375-76 (Fed. Cir. 2001) (“[B]ecause any disclosure to a testifying expert in connection with his testimony assumes that privileged or protected material will be made public [ ], there is a waiver to the same extent as with any other disclosure....”) (citing United States v. Cote, 456 F.2d 142, 144-45 & n. 4 (8th Cir. 1972)); South Yuba River Citizens League v. National Marine Fisheries Service, 257 F.R.D. 607, 610 (E.D. Cal. 2009) (explaining that “the work product rule does not protect materials, including attorney opinion, considered by a testifying expert in formation of his opinions”); Pioneer Hi-Bred International, Inc. v. Ottawa Plant Food, Inc. 2003 U.S. Dist. LEXIS 13963 at *4-8 (N.D. Iowa, July 25, 2003) (concluding that Eighth Circuit would order production of all work product materials sent to defendant’s experts by defendant’s attorneys and permit questioning of defendant’s expert witnesses regarding their communications with their counsel), with Estate of Chopper v. R.J. Reynolds Tobacco Co., 195 F.R.D. 648, 650 (N.D. Iowa 2000)(finding that opinion work-product privilege not waived by disclosure to testifying expert); Estate of Moore v. R.J. Reynolds Tobacco Co., 194 F.R.D. 659, 663-64 (S.D. Iowa 2000) (same); Nexxus Products Co. v. CVS New York, Inc., 188 F.R.D. 7, 9-11 (D. Mass. 1999) (same); Magee v. Paul Revere Life Ins. Co., 172 F.R.D. 627, 642-43 (E.D.N.Y. 1997) (same); Haworth, Inc. v. Herman Miller, Inc., 162 F.R.D. 289, 294-96 (W.D. Mich. 1995) (same). That is to say, it was not a “given” that attorney work product disclosed to and considered by a trial expert was discoverable. On the other hand, the law has not deviated from the prohibition of requiring a consulting expert to divulge his opinions to his opponent, much less the information that was provided by counsel to and considered by him, including attorney work product.

*7 In light of Lanterman’s disclosure as a trial expert in April, 2012, and his dual role as a consulting expert and testifying expert prior to this date, the Court concludes that no injustice would occur if this Court were to honor the amendments and prohibit Gonzalez from obtaining attorney work product that under the current version of Rule 26 he would have no right to obtain. The Court finds that the rationale articulated by the advisory committee in connection with the amendments reflects not only the current thinking regarding the pros and cons of permitting exploration into attorney’s work product through the retention of a trial expert, but it represents the better rule of law about the appropriate boundaries for discovery of such information. Consequently, the Court will only consider the amended Rule 26 to resolve this motion.

B. Lanterman’s Role as a Trial Expert

With respect to Lanterman’s trial expert opinions disclosed in April of 2012, as Zuniga has already agreed to do, Gonzalez is entitled under Rule 26(a)(2)(B)(ii) and 26(b)(4)(C) to receive from Lanterman documents containing and testimony regarding all “facts or data” considered by Lanterman in forming his opinions, excluding theories or mental impressions of counsel or communications between Lanterman and Zuniga’s legal counsel. Gonzalez has not satisfied the substantial need and undue burden test under Rule 26(b)(3)(A)(ii) in order to overcome the protections afforded by the work product doctrine.[3] However, to the extent that such documents contain facts or data communicated to Lanterman by counsel that he considered[4] in forming his opinions, or any assumptions provided to him by counsel that he relied upon in forming his opinions, Lanterman shall provide those documents (and shall provide testimony regarding this information) to Gonzalez, subject to any redactions for attorney work product or communications that do not to provide facts, data or any assumptions provided to Lanterman. In other words, the placing of facts, data or assumptions in a communication between an expert and legal counsel will not shield the discovery of this material, as such a finding would eviscerate the exception from protection set forth in Rule 26(a)(2)(B)(C)(ii).

Similarly, while under Rule 26(b)(4)(B) Gonzalez is generally not entitled to any draft of an expert report prepared by Lanterman, to the extent that Zuniga’s counsel marked up a draft report or provided additional facts or data in these drafts that were considered by Lanterman in forming his final opinions, or to extent these draft reports reflect assumptions provided by counsel upon which Lanterman relied in forming his final opinions, Zuniga shall provide to Gonzalez those parts of the draft expert reports which set forth the additional facts, data or assumptions. See In re Asbestos Products Liability Litigation (No. VI), Civil Action No. MDL 875, 2011 WL 6181334 at *7 n.10 (E.D. Pa. Dec. 13, 2011) (“As the Amendment has been recently codified, it remains to be determined how courts will interpret its provisions. As one commentator notes, an ‘unanswered question is whether counsel will be able to use Rule 26(b)(4)(B) to trump Rule 26(b)(4)(C) (ii-iii)—can counsel protect from discovery facts or data considered by or assumptions relied upon by a retained expert by providing some in a draft report.’ See George Lieberman, ‘Experts and the Discovery/Disclosure of Protected Communication,’ 78 Defense Counsel Journal 220, 227 (Apr. 2011). As this defense counsel commentator surmises, ‘[c]ourts would not seem to be receptive to such an obvious loophole, and caution dictates against embarking upon such a course without the support of new case law in support of such a practice.’ Id. We endorse this view.”).

*8 As to Gonzalez’s complaint that Lanterman has not provided to Gonzalez his own computer program (that eliminates pop-ups and other false leads like spyware), upon which he based his testimony regarding pornography on Gonzalez’s work computer, Zuniga represented at the hearing that both Lanterman’s program and a commercially available program were used to search for relevant information and that both programs came up with the same results. Given that the results were the same, and Gonzalez has not provided evidence to the contrary, Lanterman need only identify the commercial program he used and will not be required to provide Gonzalez with his proprietary software.

C. Lanterman’s Previous Role as Consulting Expert

The remaining issue to address is the level of protection to be afforded Lanterman’s work as a consulting expert of behalf of Zuniga, given that she now has disclosed him as a trial expert. Rule 26(b)(4)(D) governs discovery from consulting expert that has been “retained or specially employed by another party in anticipation of litigation or to prepare for trial and who is not expected to be called as a witness at trial.” Under this Rule, a party may not discover “facts known or opinions held” by consulting experts unless it shows “exceptional circumstances under which it is impracticable for the party to obtain facts or opinions on the same subject by other means.” Fed. R. Civ. P. 26(b)(4)(D)(ii). However, when an expert wears “two hats” by serving as both a non-testifying consultant and a testifying expert, the majority of courts “have held that a single expert may serve in both roles but that the broader discovery for testifying experts applies to everything except ‘materials generated or considered uniquely in the expert’s role as consultant.’ ” Sara Lee Corp., 273 F.R.D. at 419-20 (quoting In re Commercial Money Ctr., Inc., Equip. Lease Litig., 248 F.R.D. 532, 537 (N.D. Ohio 2008), citing SEC v. Reyes, No. C 06–04435 CRB, 2007 WL 963422, at *2 (N.D. Cal. March 30, 2007)); see also Employees Committed for Justice v. Eastman Kodak Co., 251 F.R.D. 101, 104 (W.D.N.Y. 2008) (“Every court to address this “multiple hats” problem has concluded that an expert’s proponent still may assert a privilege over such materials, but only over those materials generated or considered uniquely in the expert’s role as consultant.”) (citation and marks omitted). “In light of Rule 26(a)(2)(B)’s broad disclosure requirements, courts have concluded ‘any ambiguity as to the role played by the expert when reviewing or generating documents should be resolved in favor of the party seeking discovery.’ ” Sara Lee Corp., 273 F.R.D. at 420 (quoting B.C.F. Oil Refining, Inc. v. Consol. Edison Co. of N.Y., Inc., 171 F.R.D. 57, 62 (S.D.N.Y. 1997)); see also M.A.R. ex rel. Reisz v. U.S., NO. 09 CIV. 1727 LTS KNF, 2010 WL 5094311 at *1 (S.D.N.Y. Nov. 18, 2010) (same); In re Commercial Money Ctr., 248 F.R.D. at 538(“If the line between consultant and witness is blurred, the dispute should be resolved in favor of the party seeking discovery.”).

Zuniga initially retained Lanterman to address her concerns of spoliation of computer evidence and to retrieve discoverable evidence from the relevant electronic media. Lanterman has now been allowed by this Court to testify regarding what was and was not found on electronically stored information from SMS’s file and print server, backup tapes, and the computers of key employees, as well as the internet history on the work computer purportedly assigned to Gonzalez and how he discovered this information. There is no real difference between the work that Lanterman was performing on behalf of Zuniga as a consultant, and the topics on which this Court has allowed Lanterman to provide expert testimony concerning electronically stored information from SMS and Gonzalez’s internet history on his work computer.

*9 Lanterman’s role as a consultant and trial witness are blurred, if not one and the same. Consequently, as Zuniga has already agreed to do, for all opinions rendered by Lanterman in his August 2010 affidavit and February 2012 declaration, Lanterman shall disclose all facts or data provided by counsel and considered by him, along with all assumptions provided by counsel and relied upon by him, in connection with the formation of these opinions, regardless of when he received this information in conjunction with the services he provided to Zuniga.

Finally, Zuniga shall provide Gonzalez with a privilege log consistent with Rule 26(b)(5)(A)[5] setting forth any documents withheld in their entirety or in part from production that were provided to Lanterman. As for Gonzalez’s request for an in camera inspection of these withheld documents, the Court finds that there is no grounds for expending judicial resources on such an endeavor where there is no indication that Lanterman will not comply with this Order. Thus, the request for an in camera inspection is denied at this time. However, after receiving the privilege log, Gonzalez believes he has a basis for challenging the withholding of any documents, he may renew his request for an incamera inspection at that time.

III. CONCLUSION

In summary, Lanterman will only be required to disclose to Gonzalez the facts or data provided by Zuniga’s counsel and considered by Lanterman, along with all assumptions provided by counsel to Lanterman and relied upon by him, in the formation of the opinions rendered in his August 2010 affidavit, February 2012 declaration and trial expert disclosures, without regard to the date that such facts, data or assumptions were provided. Likewise, Zuniga will only be required to produce to Gonzalez those portions of documents containing attorney work product and draft expert reports bearing on the opinions rendered by Lanterman in his August 2010 affidavit, February 2012 declaration and trial expert disclosures, that set forth facts or data provided by counsel and considered by Lanterman, along with all assumptions provided to Lanterman and relied upon by him, in forming these opinions.

While the Court will not conduct an in camera inspection of documents withheld by Lanterman based on privilege or the work-product doctrine, Zuniga will be required to provide a privilege log of documents withheld in their entirety or in part, consistent with Rule 26(b)(5)(A).