*1 Plaintiff filed a motion to compel discovery regarding Defendants' non-retained expert witness, Defendant Ilan Hofmann. (Dkt. No. 255.) Defendants I-Med Pharma USA Inc., I-Med Pharma Inc., and Ilan Hofmann filed an opposition. (Dkt. No. 258.) Plaintiff filed a reply. (Dkt. No. 263-264.) The matter came on for hearing.

“[A] party must disclose to the other parties the identity of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 703, or 705” governing expert witnesses. Fed. R. Civ. P. 26(a)(2)(A).

Defendant Ilan Hofmann is the Chairman and Chief Scientific Officer of Defendant I-Med Pharma Inc., and the Chief Executive Officer (“CEO”), Chairman of the Board and Chief Scientific Officer of Biocia, Inc. (Dkt. No. 254-2 at 21.)[1]

On October 11, 2023, Defendants served a disclosure of Defendant Ilan Hofmann as a “non-retained expert witness” “under Federal Rule of Civil Procedure 26(a)(2)(C).” (Exh. 5 to Kachner Decl., Dkt. No. 254-2 at 3.) A non-retained expert witness is not required to provide a written report. Rather, the party's disclosure “must state: (i) the subject matter on which the witness is expected to present evidence under Federal Rule of Evidence 702, 703, or 705; and (ii) a summary of the facts and opinions to which the witness is expected to testify.” Fed. R. Civ. P. 26(a)(2)(C)(i)-(ii). Defendants' Rule 26(a)(2)(C) disclosure for Hofmann described seven topics (a) through (g) on which he is expected to present expert evidence and a summary of the facts and opinions for each topic. (Dkt. No. 254-2 at 8-17.)

Plaintiff requested that Defendants produce, by seven days before the close of expert discovery, all documents and communications that Hofmann “considered, generated, saw, read, reviewed, and/or reflected upon in connection with the analysis contained in his disclosure or the subjects listed in his disclosure,” including communications with counsel. (Exh. 6 to Kachner Decl., Dkt No. 255-9 at 2.) Defendants requested and received an extension of time to respond.

On November 20, 2023, Defendants produced documents bearing bates stamp numbers DE 1-198, which consist of drafts of Hofmann's expert disclosure exchanged between counsel and Hofmann (Exh. 8 to Kachner Decl., Dkt. No. 254-3), and identified 14 previously produced documents for Topic (g) and one public website for Topic (b). The production and identification was made without waiving attorney work product or attorney client privilege. (Exh. 7 to Kachner Decl., Dkt. No. 255-10.)

Plaintiff objected to the deficient production and deposed Hofmann on December 14, 2023 under Rule 26(b)(4)(A). (Exh. 11 to Kachner Decl., Dkt. No. 254-5.) Defense counsel instructed the witness not to answer certain questions regarding communications with counsel about the subject matters of his expert testimony.

*2 It is undisputed that Hofmann is a non-retained expert under Fed. R. Civ. P. 26(a)(2)(C). He is a named defendant and an employee of Defendant I-Med Pharma Inc. There is no indication in the record before the court that Hofmann is expected to provide expert testimony based on facts or data beyond his percipient knowledge.

The Ninth Circuit has not specifically addressed the scope of disclosure for non-retained experts. The Ninth Circuit observed that the 1993 Amendment to Rule 26 “coupled with the implication in Rule 26(b)(3) that the work product protection was ‘[s]ubject to’ provisions requiring expert depositions led many courts to conclude that ‘any material given by an attorney to an expert [w]as discoverable,’ including opinion work product.” Republic of Ecuador v. Mackay, 742 F.3d 860, 869 (9th Cir. 2014) (citation omitted); Advisory Comm. Note, 1993 Amendment (“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.”).

Against that backdrop, the Ninth Circuit observed, the Advisory Committee explained the impetus of the 2010 Amendment: “Many courts read [the 1993 version of] the disclosure provision to authorize discovery of all communications between counsel and expert witnesses and all draft reports. The Committee has been told repeatedly that routine discovery into attorney-expert and draft reports has had undesirable effects.” Ecuador, 742 F.3d at 869 (quoting Advisory Comm. Notes, 2010 Amendment). The undesirable effects included increased costs, counsel hiring separate consulting and testifying experts to avoid disclosure of sensitive case analyses, and guarded communications between counsel and testifying experts that interfere with the experts' work. Id.

Rule 26(b)(4)(C) was added in 2010 to govern the scope of disclosure of communications between counsel and retained experts. “The protection is limited to communications between an expert witness required to provide a report under Rule 26(a)(2)(B) and the attorney for the party on whose behalf the witness will be testifying.” Advisory Comm. Note, 2010 Amendment. Rule 26(b)(4)(C) protects from discovery communications between counsel and a retained expert except to the extent that the communications:

Fed. R. Civ. P. 26(b)(4)(C). The Advisory Committee explained that the “facts or data” terminology “is meant to limit disclosure to material of a factual nature by excluding theories or mental impressions of counsel. At the same time, the intention is that ‘facts or data’ be interpreted broadly to require disclosure of any material considered by the expert, from whatever source, that contains factual ingredients. The disclosure obligation extends to any facts or data ‘considered’ by the expert in forming the opinions to be expressed, not only those relied upon by the expert.” Advisory Comm. Note, 2010 Amendment to Subdivision (a)(2)(B).

*3 With respect to non-retained experts, however, Rule 26(b)(4)(C) “does not itself protect communications between counsel and other expert witnesses, such as those for whom disclosure is required under Rule 26(a)(2)(C). The rule does not exclude protection under other doctrines, such as privilege or independent development of the work-product doctrine.” Advisory Comm. Notes, 2010 Amendment. “The (a)(2)(C) disclosure obligation does not include facts unrelated to the expert opinions the witness will present.” Id.

The court in United States v. Sierra Pac. Indus., 2011 U.S. Dist. LEXIS 60372 (E.D. Cal. May 26, 2011), reviewed the minutes of the Civil Rules Advisory Committee meetings. Id. at *20-*24. In summary, the minutes reveal that the committee discussed various considerations but ultimately concluded that “the time has not yet come to extend the protection for attorney expert communications beyond experts required to give an (a)(2)(B) report.” Id. at *23 (quoting Report of the Civil Rules Advisory Committee (May 8, 2009, amended June 15, 2009) at 4). As to experts who are party employees, the minutes reflect the following discussion: “Drafting an extension that applies only to expert employees of a party might be tricky, and might seem to favor parties large enough to have on the regular payroll experts qualified to give testimony. Still more troubling, employee experts often will also be ‘fact’ witnesses by virtue of involvement in the events giving rise to the litigation. An employee expert, for example, may have participated in designing the product now claimed to embody a design defect. Discovery limited to attorney-expert communications falling within the enumerated exceptions might not be adequate to show the ways in which the expert's fact testimony may have been influenced.” Id. at *23-*24 (quoting Report of the Civil Rules Advisory Committee (May 8, 2009, amended June 15, 2009) at 4-5.).

Defendants urge the court to follow the decision in Advanced Magnesium Alloys Corp. v. Dery, 2022 U.S. Dist. LEXIS 202058 (S.D. Ind. Nov. 7, 2022). In that case, the court held that a party does not waive the attorney client privilege or work product doctrine by naming a party or party representative as a non-retained expert. Id. at *21. The court reasoned that privilege would protect counsel's communications with a party or party employee “had the witnesses in question not been designated as testifying experts.” Id. at *12. In contrast to a reporting expert, a non-retained expert “need only provide ‘a summary of the facts and opinions to which the witness is expected to testify.’ ” Id. at *16 (quoting Fed. R. Civ. P. 26(a)(2)(C)(ii)). “Therefore, it is not the case that all of the information provided by counsel to a non-reporting expert is provided with the expectation that it will become public. The basis for finding a waiver of privilege and work product protection simply does not apply in the case of a non-reporting expert.” Id. at *16-*17. The court dismissed concern about attorney-caused bias. “But, of course, the same can be said for any fact witness who prepares with counsel prior to testifying, and a client does not waive the attorney-client privilege simply by testifying.” Id. at *18-*19 (emphasis in original). The court denied a motion to compel communications between counsel and a non-retained expert concerning the subject matter of the non-retained expert testimony. Id. at *5, *21.[2]

*4 This court is not persuaded. The scope of discovery of a non-retained expert is not limited to the disclosure described in Fed. R. Civ. P. 26(a)(2)(C). A non-retained expert may be deposed under Fed. R. Civ. P. 26(b)(4)(A) and may be subject to a document request under Fed. R. Civ. P. 34 or subpoena duces tecum under Fed. R. Civ. P. 45. Rule 26(a)(2)(C) does not answer the question regarding the scope of discovery.

More importantly, a non-retained expert is not analogous to a fact witness. As the Advisory Committee noted, “[a] witness who is not required to provide a report under Rule 26(a)(2)(B) may both testify as a fact witness and also provide expert testimony under Evidence Rule 702, 703 or 705.” Advisory Comm. Note, 2010 Amendment.

Unlike a fact witness, a non-retained expert may testify in the form of opinion or otherwise “if the proponent demonstrates to the court that it is more likely than not that: (a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert's opinion reflects a reliable application of the principles and methods to the facts of the case.” Fed. R. Evid. 702. “An expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed. If experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted.” Fed. R. Evid. 703. “Unless the court orders otherwise, an expert may state an opinion–and give the reasons for it–without first testifying to the underlying facts or data. But the expert may be required to disclose those facts or data on cross-examination.” Fed. R. Evid. 705. This procedure in Rule 705 “assumes that the cross-examiner has the advance knowledge which is essential for effective cross-examination” about the underlying facts or data. Advisory Comm. Note, 1972 Amendment. At the time, the advance knowledge was afforded by the “traditional foundation requirement,” and Fed. R. Civ. P. 26(b)(4). “These safeguards are reinforced by the discretionary power of the court to require preliminary disclosure in any event.” Id.

Thus, the basis for waiver of the attorney-client privilege or work product doctrine is not the requirement of a report under Rule 26(a)(2)(B) but rather the requirements of expert testimony under Fed. R. Evid. 702, 703, or 705. A party who designates itself or one of its employees as a non-retained expert necessarily contemplates that the expert will satisfy the requirements of Fed. R. Evid. 702, 703 or 705 such that the expert testimony will be admissible at trial. This court is reluctant to interpret Fed. R. Civ. P. 26 in a way that would result in surprise and/or eleventh-hour disclosure in proceedings on the admissibility of non-retained expert testimony under Fed. R. Evid. 702, 703 or 705 on the eve of, or during, trial.[3]

*5 The majority of cases, including district court cases in this circuit, find an implicit waiver for the subject matters of a non-retained expert's proposed expert testimony. For example, in PacificCorp v. Northwest Pipeline GP, 879 F. Supp. 2d 1171 (D. Or. 2012), the plaintiff filed a motion to compel 76 communications “authored by, received by, or copied to GTN non-retained experts on topics about which they intend to testify,” including communications with counsel. Id. at 1212. The five GTN non-retained experts were “hybrid” fact and expert witnesses who had percipient knowledge of disputed facts in the litigation. The court concluded that the designation of such witnesses to provide expert testimony at trial “serves to waive all applicable privileges and protections for items they considered that relate to the topic of their testimony.” Id. at 1213. Moreover, non-retained experts could not avoid such discovery simply by testifying at deposition that they did not consider the withheld communications in reaching their respective opinions. Non-retained experts “consider” documents and communications that they “ ‘generated, saw, read, reviewed, and/or reflected upon, regardless of whether the documents ultimately affected their analysis.’ ” Id. at 1213 (quoting Sierra Pacific, 2011 U.S. Dist. LEXIS 60372, at *36); see also Verinata Health, Inc. v. Sequenom, Inc., 2014 U.S. Dist. LEXIS 80575, *13 (N.D. Cal. June 10, 2014) (compelling production of defense counsel's communications with non-retained expert (former Chief Science Officer) that relate to his analysis of patents-in-suit; “several courts within the Ninth Circuit have held that where a party seeks to rely on the testimony of a hybrid fact and expert witness, such as an expert employee, that party waives all applicable privileges and protections for items the witness considered that relate to the topics of his testimony, including communications between the witness and counsel.”); Sierra Pac., 2011 U.S. Dist. LEXIS 60372, at *36.

This court finds the majority view persuasive. This approach ensures that the parties have discovery of the information for non-retained experts contemplated by Fed. R. Evid. 702, 703 or 705, and allows for completion of such discovery during the period for expert discovery rather than for the first time during a Daubert motion or other proceeding on the eve of, or during, trial.

Defendants alternatively argue that California law should apply because state law supplies the rule of decision in this case. Fed. R. Evid. 501. The court does not discern a material difference in California law. A party may designate a party or party's employee as an expert witness and must provide an expert disclosure under California law. Cal. Civ. Proc. Code §§ 2034.210(b)-(c), 2034.260(c). The opposing party may take the expert's deposition, subpoena documents and move to compel production of documents. Id. § 2034.410; Id. § 2025.480. The trial court retains discretion to order production of information not otherwise required by statute. See Carpenter v. Superior Court, 141 Cal. App. 4th 249, 271-72 (2006).

The California Supreme Court has acknowledged that the need for discovery may be greater for expert witnesses than for fact witnesses because the opposing party “ ‘must prepare to cope with witnesses possessed of specialized knowledge in some scientific or technical field,’ ” “ ‘must gear up to cross-examine them effectively, and [ ] must marshal the evidence to rebut their opinions.’ ” Bonds v. Roy, 20 Cal. 4th 140, 147 (1999) (citation omitted). Although the court has not located any cases on point, California principles are consistent with federal law. “As a general rule, neither the attorney-client privilege nor the work product protection will prevent the disclosure of statements to, or reports from, a testifying expert.” DeLuca v. State Fish Co., 217 Cal. App. 671, 689 (2013). “Once a testifying expert is designated as a witness, the attorney-client privilege no longer applies, ‘because the decision to use the expert as a witness manifests the client's consent to disclosure of the information.’ ” Id. (citation omitted). In a case in which a party designated himself as an expert, the court allowed the party to withdraw the expert designation without waiving the privilege before he testified. “If the designation is withdrawn before the party discloses a significant part of a privileged communication ... or before it is known with reasonable certainty that the party will actually testify as an expert, the privilege is secure; if the party provides privileged documents or testifies as an expert (such as by stating his opinion in a declaration or at a deposition) the privilege is waived.” Shooker v. Superior Court, 111 Cal. App. 4th 923, 930 (2003). Having found that Shooker timely withdrew his expert designation, the court found it “unnecessary to consider any issues about the scope of a waiver when disclosure occurs.” Id. at 930 n.3; see Cal. Evid. Code § 912(a); Woods v. Superior Court, 25 Cal. App. 4th 178, 187 (1994).

*6 For the reasons set forth above, the court would order Defendants to produce documents and communications that non-retained expert Ilan Hofmann generated, saw, read, reviewed, and/or reflected upon, and that relate to the subject matters of his proposed expert testimony in Exhibit 5, Dkt. No. 254-2, regardless of whether such documents or communications were generated during this litigation. Because Defendants have already produced the drafts of Hofmann's expert disclosure, the court addresses separately below the issue of waiver as to those drafts.

The court is concerned that there is not sufficient time left in the expert discovery period, which ends on April 1, 2024, to complete production of documents. Therefore, Plaintiff must seek first seek relief from the District Judge before this court will set a firm deadline for production.

Defendants request the opportunity to redesignate Ilan Hofmann as a reporting expert. The request is denied as untimely. The deadline for designation of experts was set by the District Judge and has long passed.

Defendants further request that the court limit the scope of production to documents that Hofmann saw during the few days it took for him to edit his written disclosure (which was initially drafted by counsel). The court rejects this approach. As discussed above, the scope of discovery encompasses the requirements under Fed. R. Evid. 702, 703 or 705, and is not limited to the documents a non-retained expert actually used in editing the disclosure.

Plaintiff states that it does not request production of every document Ilan Hofmann ever saw in his career. Defendants suggest that the court may conduct an in camera review of 120 privilege log entries that Plaintiff identified as being within the scope of discovery of the non-retained expert. The court has reviewed the privilege log and requires additional argument from counsel as to the relevance of the entries.

Defendants seek to claw back the production of draft expert disclosures for Ilan Hofmann on the grounds that the production was “an honest mistake of law.” (Opp. at 24.) Defendants apparently made the first claw-back request to Plaintiff on December 1, 2023, 10 days after production of the drafts. (Exh. 3 to Kachner Decl.; see also Protective Order ¶ 11.)

Defendants were not obligated to produce the drafts. “Rule 26(b)(3)(A) and (B) protect drafts of any report or disclosure required under Rule 26(a)(2), regardless of the form in which the draft is recorded.” Fed. R. Civ. P. 26(b)(4)(B). A party seeking discovery of “draft expert reports or disclosures” “must make the showing specified in Rule 26(b)(3)(A)(ii) –that the party has a substantial need for the discovery and cannot obtain the substantial equivalent without undue hardship.” Advisory Comm. Note, 2010 Amendment.

Hofmann testified at his deposition that he did not write the initial draft of his expert disclosure but rather received it from counsel. Hofmann edited the disclosure for accuracy and content, and communicated with counsel. (Hofmann Dep. Tr. 17:5-15, 18:3-14, 19:14-16.) Counsel's initial transmission to Hofmann occurred on October 9, 2023. (Dkt. No. 254-3 at 2.) Hofmann and counsel then communicated back and forth, and the disclosure was served on October 11, 2023.

Defendants have not shown that production of the draft reports was inadvertent. Defendants made a separate production of the drafts (DE 1-198) on November 20, 2023. (Kachner Decl. ¶ 5; Exh. 2, Dkt. No. 255-5 at 6.) During the process of conferring over the production of documents, Defendants noted on November 29 that they produced the documents that Hofmann considered with respect to his expert disclosure and “communications specific to that disclosure, in compliance with Rule 26.” (Id. at 3.) Defendants disclosed “attorney-client privileged and work product documents as appropriate.” (Motion at 4 (quoting Exh. 2).) That counsel may have later changed his mind about the production does not make the initial production inadvertent. See Century Aluminum Co. v. AGCS Marine Ins. Co., 285 F.R.D. 468, 472 (N.D. Cal. 2012). Moreover, Hofmann has already testified that counsel provided the initial draft. Defense counsel has at times referenced the communications in arguing that Hofmann, as distinguished from counsel, was the source of the substantive content of the expert disclosure. The court is concerned that Defendants cannot rely on the drafts and at the same time claw back the drafts from disclosure.

*7 Defendants are correct that the disclosure in this federal proceeding goes no further than the drafts themselves. There is no showing that any waiver extends to any undisclosed communications or information. Fed. R. Evid. 502(a).

IT IS ORDERED that Plaintiff's motion to compel is GRANTED IN PART AND DENIED IN PART as follows: