Nutramax Laboratories, Inc. v. Twin Laboratories Inc.
1998 U.S. Dist. LEXIS 19394, 51 Fed. R. Serv. 3d 35, 183 F.R.D. 458 (1998)
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Rule of Law:
Using attorney work-product materials to refresh a witness's recollection prior to deposition testimony may constitute a testimonial use, resulting in an implied waiver of work product protection, requiring disclosure under Federal Rule of Evidence 612 if a court, through a multi-factor balancing test, determines disclosure is necessary in the interests of justice.
Facts:
- Nutramax Laboratories, Inc. (Nutramax) held patents for a product named Cosamin.
- Nutramax sued more than twenty defendants for patent infringement.
- The defendants asserted an "on sale bar" defense, claiming Nutramax sold Cosamin more than one year before applying for the patent, which would invalidate it. The critical date for this defense was March 31, 1992.
- In 1994 and again in 1998 (after litigation began), officials at Nutramax destroyed company records, some of which were relevant to the "on sale bar" defense.
- To prepare for depositions regarding the defense, counsel for Nutramax selected and reviewed a small number of documents with several key witnesses, including company co-owners Edgar Sharbaugh and Dr. Robert Henderson.
- During their depositions, the witnesses' testimony about events prior to the critical 1992 date was vague.
- When defendants' counsel asked the witnesses to identify the documents they had reviewed to prepare for their testimony, Nutramax's counsel instructed them not to answer, asserting the attorney work-product doctrine.
Procedural Posture:
- Nutramax Laboratories, Inc. filed six patent infringement lawsuits, which were consolidated for discovery purposes.
- The court assigned the case to a U.S. Magistrate Judge for resolution of discovery disputes.
- The court permitted the defendants to take limited depositions during the initial phase of discovery, focused on their 'on sale bar' affirmative defense.
- During depositions, Nutramax's counsel instructed several witnesses not to answer questions about which documents they reviewed with counsel to prepare, asserting the work-product doctrine.
- The defendants filed a motion to compel the production of the documents used to prepare the Nutramax witnesses for their depositions.
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Issue:
Does Federal Rule of Evidence 612 require the disclosure of documents protected by the attorney work-product doctrine when those documents are selected by counsel and used to prepare a witness for a deposition?
Opinions:
Majority - Grimm, United States Magistrate Judge.
Yes, in part. Federal Rule of Evidence 612 may require disclosure of attorney-selected documents used to prepare a witness for a deposition, even if they are protected as work product. This occurs when the documents are put to a 'testimonial use,' creating a limited, implied waiver of the work product protection. To determine if disclosure is required, the court must balance the competing interests by analyzing whether disclosure is 'necessary in the interests of justice.' This case establishes a nine-factor test to guide that discretionary balancing analysis. Applying this test, the court found disclosure was necessary for the key designee witnesses (Sharbaugh and Henderson) due to their status, the centrality of the issue, the passage of time, and concerns over evidence destruction, but was not necessary for other fact witnesses where the movant failed to meet the foundational requirements of Rule 612 or the balance of factors favored non-disclosure.
Analysis:
This decision provides a crucial framework for resolving the inherent conflict between the discovery protection for attorney work product under FRCP 26(b)(3) and the evidence rule promoting effective cross-examination, FRE 612. By establishing a detailed, multi-factor balancing test, the court offers clear guidance to practitioners on the risks of waiving work product protection during witness preparation. The ruling underscores that while an attorney's mental impressions are highly protected, that protection is not absolute and can be implicitly waived when those impressions (manifested through the selection of documents) are used to shape testimony, thereby becoming part of the evidence in the case.
