                     UNITED STATES DISTRICT COURT
                     FOR THE DISTRICT OF COLUMBIA


                                  )
EIDOS DISPLAY, LLC,               )
EIDOS III, LLC, GARY RUBLOFF,     )
                                  )
                Petitioners,      )
                                  ) Misc. Action No. 12-625 (EGS)
                v.                )
                                  )
CHUNGHWA PICTURE TUBES, LTD.,     )
                                  )
                Respondent.       )
                                  )


                          MEMORANDUM OPINION

     Pending before the Court is a Motion by Eidos Display LLC,

Eidos III, LLC, and Gary Rubloff (collectively, “Eidos” or

“Plaintiffs”) for an Order Precluding Discovery Sought in a Third

Party Subpoena or, in the Alternative, Limiting Discovery

(hereinafter “Eidos’ Mot.”); Defendant Chunghwa Picture Tubes,

Ltd.’s (hereinafter “CPT” or “Defendant”) Opposition to the

Motion; and Plaintiffs’ Reply to the Opposition.    Plaintiffs

filed this motion to prevent the deposition of Dr. Gary Rubloff,

who they contend is a non-testifying expert not subject to

discovery pursuant to Federal Rule of Civil Procedure

26(b)(4)(D).   The motion arises out of an underlying patent

infringement action regarding U.S. Patent No. 5,879,958

(hereinafter the “‘958 Patent”) filed in April 2011 in the United

States District Court for the Eastern District of Texas by Eidos


                                  1
against seven defendants, including CPT.       For the reasons

explained below, the motion will be GRANTED.

I.    Background

      In April 2011, Eidos filed the underlying patent

infringement suit in Texas.       See Eidos’ Mot. at 1.   Two months

later, in June 2011, a Reexamination Proceeding regarding the

‘958 Patent was initiated at the U.S. Patent and Trademark Office

(hereinafter “USPTO”) with an ex parte request asserting that

certain prior art references rendered the ‘958 Patent not

patentable.   Id. at 3.      Dr. Rubloff acted as an expert witness

for Eidos in the Reexamination Proceeding.       Id. at 4.   On

February 24, 2012, Eidos submitted a declaration by Dr. Rubloff

in the Reexamination Proceeding regarding his opinions

“concerning ‘certain technical aspects of manufacturing liquid

crystal displays.’”        Id. (quoting Eidos’ Mot., Exhibit H, Rubloff

Declaration, at      2).

      As part of the underlying patent case in Texas the parties

were to identify extrinsic evidence they intended to use in claim

construction proceedings by September 14, 2012, including expert

declarations.      Id. at 2.   Eidos did not identify any extrinsic

evidence, nor did it submit any expert declarations at that time.

Id.   On September 28, 2012, the parties disclosed intrinsic

evidence to be presented in claim construction proceedings in a

Joint Claim Construction Statement (hereinafter “JCCS”),


                                      2
including the prosecution history of the ‘958 Patent.      Id.    Eidos

identified sections of the patent in the JCCS, as well Dr.

Rubloff’s Declaration from the Reexamination Proceeding.       Eidos

also made one reference to Dr. Rubloff’s Declaration in the

Reexamination Proceeding in its opening claim construction brief

as a “see also” citation to a background issue.1      Id. at 5.

Unlike the one background citation to the Declaration in Eidos’

brief, CPT included multiple citations to Dr. Rubloff’s

Declaration in its claim construction brief.      See Eidos’ Reply at

13-14.   Finally, on January 31, 2013, the parties were required

to identify any experts who would testify at the claim

construction hearing - no party identified any experts.       Id. at

3.   The parties were not required to identify testifying experts

(except for the purposes of the claim construction proceedings)

until April 1, 2013.   Id.

     On October 15, 2012, CPT informed Eidos that it intended to

depose Dr. Rubloff despite the fact that he had not been

identified as a claim construction expert.     To that end, CPT

served Dr. Rubloff with a subpoena on October 18, 2012.       The


     1
       Eidos’ claim construction brief cites to Figure 169 of the ‘958
Patent and then cites to one paragraph of Dr. Rubloff’s Declaration
from the Reexamination Proceeding, which confirms what is in Figure
169. See Eidos’ Mot. at 5. Specifically, in that paragraph, “Dr.
Rubloff discusses: (1) that one of ordinary skill in the art would
understand that the gate wiring connection terminal is used for an
electrical connection between the gate wiring and the scanning
circuit, as shown in Figure 169 of the ‘958 Patent; and (2) the use of
distinct contact holes for gate wiring and gate wiring connection
terminals.” Id. at 5, n. 1.

                                  3
subpoena also called for the production of a wide variety of

documents, including drafts of Dr. Rubloff’s Declaration.      Id.

After noting that Dr. Rubloff was not available on October 30,

the date CPT had proposed for his deposition, Eidos explained

that it was not relying on claim construction experts and “agreed

that it would not rely . . . upon the intrinsic evidence in the

Rubloff declaration [] to avoid unnecessary disputes regarding

expert discovery.”     Id. at 6.   CPT did not agree to this

proposal.    The parties went back and forth several times

regarding the scheduling and scope of Dr. Rubloff’s deposition,

eventually settling on November 29, 2012 in Washington, D.C.       Id.

at 7; CPT Opposition to Eidos’ Motion (hereinafter “CPT Opp’n”)

at 5-6.    Ultimately, Eidos and CPT were unable to resolve their

issues and Eidos filed the instant motion.       See Eidos’ Mot. at

8-9; CPT Opp’n at 5-6.     As of the filing of the instant motion,

Dr. Rubloff had not yet been deposed.

II.   Legal Standard

      A.    Motion for a Protective Order

      Pursuant to Rule 26(c), a “party or any person from whom

discovery is sought may move for a protective order . . . on

matters relating to a deposition, in the court for the district

where the deposition may be taken.”      Upon such a motion, the

“court may, for good cause, issue an order to protect a party or

person from annoyance, embarrassment, oppression, or undue burden


                                    4
or expense, including . . . forbidding inquiry into certain

matters, or limiting the scope of disclosure or discovery to

certain matters.”   Fed. R. Civ. P. 26(c).   If the court decides

to grant a protective order, it may “limit the conditions, time,

place, or topics of discovery.”   Burka v. U.S. Dep’t of Health

and Human Servs., 87 F.3d 508, 518 (D.C. Cir. 1996).

     The party requesting the protective order bears the burden

of demonstrating that good cause for such an order exists. See

United States v. Kellogg Brown & Root Servs., Inc., 285 F.R.D.

133, 134 (D.D.C. 2012); Alexander v. F.B.I., 186 F.R.D. 71, 75

(D.D.C. 1998).   Indeed, the moving party “has a heavy burden of

showing extraordinary circumstances based on ‘specific facts’

that would justify an order.”   Kellogg Brown, 285 F.R.D. at 135

(internal citations omitted).   In determining whether a discovery

request imposes an undue burden, the court must “balance the

party’s need for the discovery against the potential hardship to

the subject of the subpoena.”   Achte/Neunte Boll Kino

Beteiligungs GmbH & Co. KG v. Doe, 736 F. Supp. 2d. 212, 214

(D.D.C. 2010) (citing Alexander, 186 F.R.D. at 75); see also Doe

v. Provident Life & Accident Ins. Co., 247 F.R.D. 218, 221

(D.D.C. 2008).   The Court must then weigh the burden to the

moving party against the requestor’s need for, and relevance of,

the information sought.   See Doe, 247 F.R.D. at 221.




                                  5
     B.    Consulting Expert Immunity

     Rule 26(b)(4)(D) provides that “a party may not, by

interrogatories or deposition, discover facts known or opinions

held by an expert who 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.”   There are four commonly stated policy considerations

underlying the rule:

     (1) the interest in allowing counsel to obtain the expert

     advice they need in order [to] properly evaluate and present

     their clients’ positions without fear . . . ; (2) the view

     that each side should prepare its own case at its own

     expense; (3) the concern that it would be unfair to the

     expert to compel its testimony and also the concern that

     experts might become unwilling to serve as consultants if

     they suspected their testimony would be compelled; and (4)

     the risk of prejudice to the party who retained the expert

     as a result of the mere fact of retention.

United States ex rel. Westrick v. Second Chance Body Armor, Inc.,

288 F.R.D. 222, 227-28 (D.D.C. 2012) (quoting Long Term Capital

Holdings, L.P. v. United States, No. 01-CV-1290, 2003 U.S. Dist.

LEXIS 14579, at * 2 (D. Conn. May 6, 2003)).

     To bypass the protection afforded by Rule 26(b)(4)(D), a

party must demonstrate “exceptional circumstances under which it


                                 6
is impracticable for [it] to obtain facts or opinions on the same

subject by any other means.”   Rule 26(b)(4)(D)(ii).   Such

exceptional circumstances may exist “when a non-testifying

expert’s report is used by a testifying expert as the basis for

an expert opinion, or where there is evidence of substantial

collaborative work between a testifying expert and a

non-testifying expert.”   Westrick, 288 F.R.D. at 228 (internal

citations omitted).   A party may also demonstrate that

exceptional circumstances warrant discovery from a non-testifying

expert when “(1) the object or condition observed by the

non-testifying expert is no longer observable by an expert of the

party seeking discovery or (2) although it is possible to

replicate expert discovery on a contested issue, the cost of

doing so is justifiably prohibitive.”   Fast Memory Erase LLC v.

Spansion, Inc., No. 3-08-CV-0977-M, 2009 U.S. Dist. LEXIS 117462,

at *9 (N.D. Tex. Dec. 16, 2009) (internal citations omitted).

III. Discussion

     In its motion, Eidos sets forth in detail its argument that

it has good cause for seeking a protective order in this case.

Eidos argues that Dr. Rubloff has been retained in the underlying

patent action as a non-testifying expert; therefore, he is not

subject to a deposition pursuant to Rule 26(b)(4)(D).     See Eidos’

Mot. at 10.   Eidos contends that there are no “exceptional

circumstances” that would warrant an exception to the rule in


                                 7
this particular case.    In seeking to depose Dr. Rubloff, Eidos

claims that CPT is attempting to circumvent the immunity afforded

by the rule to “pursue issues for later arguments concerning

invalidity or non-infringement defenses.”    Id. at 13.   Indeed,

Eidos argues that Dr. Rubloff did not even apply claim

construction standards in coming to any conclusions stated in his

Declaration and instead assumed “that in the context of the

Reexamination, the claim will be given its broadest reasonable

interpretation.”   Id. at 4.   Eidos suggests that a deposition and

document production at this time “would be extremely prejudicial

. . . as CPT might attempt to use the undiscoverable consulting

opinions against Eidos to manufacture arguments regarding the

merits or defenses.”    Id. at 13.

     In opposition, CPT argues that it has the “right to depose

Dr. Rubloff because Eidos put his declaration at issue in the

Patent Case” and that “Dr. Rubloff is no different than any other

declarant who would be subject to deposition.”    CPT Opp’n at 7.

Specifically, CPT claims that by identifying and attaching the

declaration that Dr. Rubloff made in the Reexamination Proceeding

as support for its claim construction position in the JCCS, and

then later to its opening claim construction brief, Eidos has

waived the protections of Rule 26(b)(4)(D).    Id. at 7-8.   Nowhere

in its opposition does CPT acknowledge that it also cited to Dr.

Rubloff’s Declaration in its claim construction brief.     CPT


                                     8
maintains that any issues that may arise from its subpoena are

premature because it has already agreed to limit the scope of Dr.

Rubloff’s deposition to claim construction issues.2     CPT Opp’n at

10-11.   Finally, CPT suggests with respect to any remaining

issues, the Court should transfer this action to the Eastern

District of Texas, where the underlying patent action is pending.

Id. at 13.

     The Court finds that Eidos has established good cause for

seeking a protective order because as it contends, and as CPT

does not dispute, Dr. Rubloff is a non-testifying expert in the

patent suit.   The Court does not agree with CPT’s argument that

Eidos has waived immunity, and that Dr. Rubloff is therefore

subject to a deposition and document discovery.     Specifically,

the Court finds that while it is unclear whether Rule 26(b)(4)(D)

is even subject to waiver, the general trend in other districts

has been to find that it is not.3     For example, in Fast Memory

Erase, LLC v. Spansion, Inc., the court found that plaintiff had


     2
       Prior to the filing of the instant motion, the parties engaged
in extensive discussions regarding the scope of any potential
deposition of Dr. Rubloff. Though they were ultimately unable to
reach an agreement, the parties narrowed the scope of the deposition
and provisionally agreed that any questioning would be limited to
claim construction issues only. They were not able to agree as to the
extent of any privilege that Eidos could assert during the deposition
or the extent to which the deposition would be applicable to issues
other than claim construction. See Eidos’ Mot. at 14-15; CPT Opp’n.,
Ex. 2.
     3
       Many of the cases cited herein reference Rule 26(b)(4)(B),
which was later renumbered “(D)” and “(E).” See Fed. R. Civ. P. 26
(2010 Amendments).

                                  9
not waived the protections of the rule by relying on and

attaching selected portions of an expert report as background

materials to a claim construction brief.     2009 U.S. Dist. LEXIS

117462, at *11-13.    Though plaintiff, like Eidos, had attached

the materials to its preliminary contentions, the court held that

plaintiff had not actually relied on them for any proposed claim

construction.    The contentions were preliminary and meant to

provide notice to the accused party, and as such they were “not

evidence,” no matter how detailed.     Id. at 12.    Moreover, even

though plaintiff had used the same materials at a claim

construction hearing, they were used as demonstrative aids, and

thus had no probative value.    Id.

     Several other courts that have confronted the issue have

held the same.    In Plymovent Corp. v. Air Tech. Solutions, the

court affirmed the decision of a magistrate judge finding that

even though plaintiff had submitted a video of an interview with

an expert and the expert’s report in support of a preliminary

injunction application, it had not waived non-testifying expert

immunity.   243 F.R.D. 139, 146 (D.N.J. 2007).      At the preliminary

injunction hearing, plaintiff decided to withdraw the expert

report and subsequently relayed to defendant that it did not

intend for the expert to testify.     Id. at 142.    Nevertheless,

defendant served plaintiff with a subpoena requesting several

types of documents prepared by the expert.     Id.    The magistrate


                                 10
judge ruled, and the district court affirmed, that there had been

no waiver because plaintiff’s expert had not testified at the

preliminary injunction hearing, and therefore, the court did not

give the expert report and interview “any weight” in ruling on

the preliminary injunction.   Id. at 144.   Under those

circumstances, the court affirmed the holding that there had been

no waiver, and absent any showing of exceptional circumstances,

the expert was immune from discovery.   Id. 146-147.   See also

Hansen Bev. Co. v. Innovation Ventures, LLC, No. 08-CV-1166-IEG,

2010 U.S. Dist. LEXIS 38635, at *6-8 (S.D. Cal. April 20, 2010)

(upholding order of a magistrate judge denying a request to

depose a non-testifying expert where defendant attached the

expert’s declaration to an opposition to a motion for preliminary

injunction because plaintiff had failed to make a showing of

exceptional circumstances to warrant discovery); Intervet, Inc.

v. Merial Ltd., No. 8:07CV194, 2007 U.S. Dist. LEXIS 44970, at

*4-5 (D. Neb. June 20, 2007) (holding that there had been no

waiver where plaintiff filed the non-testifying expert’s

declaration in a separate, but related, action in another

jurisdiction with the same parties).    The Court elects to follow

this line of cases in the instant matter, especially given the

limited extent of Eidos’ reliance on Dr. Rubloff’s Declaration in

its preliminary claim construction brief.

     Notably, CPT does not cite to any cases to support its


                                11
argument that Eidos has waived the protections of Rule

26(b)(4)(D).   While there is contrary authority that suggests

that the protections afforded by Rule 26(b)(4)(D) are subject to

waiver, the Court finds that these cases do not call for waiver

in the precise circumstances presented here.       For instance, in

Atari Corp. v. Sega of America, the court held that by

voluntarily providing a videotape of a non-testifying expert’s

interview to the opposing party during a settlement negotiation,

the producing party had waived the protections of Rule

26(b)(4)(B).   161 F.R.D. 417, 418-20 (N.D. Cal. 1994).      After it

disclosed the interview during settlement talks, defendant

repeatedly agreed that the videotape was a “product of discovery”

in the case.   Id. at 419-420.    Additionally, the expert in

question was the inventor of the patent and a former employee of

the plaintiff, who the defendant retained after the suit

commenced.   Id. at 419.   The court held that there had been

waiver, but limited the deposition to topics covered in the

interview, or to facts or opinions that the expert held prior to

being retained by defendant.     Id. at 420-422.    See also United

States v. Hooker Chemicals & Plastics Corp., 112 F.R.D. 333, 339

(W.D.N.Y. 1986) (noting that “when a party offers an affidavit of

an expert witness in opposition to, or in support of a motion for

summary judgment, it waives its right not to have the deposition

of said expert taken”); Hartford Fire Ins. Co. v. Pure Air, 154


                                  12
F.R.D. 202, 211-12 (N.D. Ind. 1993) (finding generally that the

rule is subject to waiver even while holding that in the case

presented defendant had not waived non-testifying expert immunity

by issuing a press release concerning conclusions reached by a

non-testifying expert).

     Given the uncertain state of the law with respect to waiver

and Rule 26(b)(4)(D), the Court finds that to the extent that

Eidos has waived anything, it has only waived Dr. Rubloff’s

Declaration itself.   See Hartford Fire, 154 F.R.D. at 211

(finding that only the information disclosed was waived). As

Eidos argues in its motion, it believes that CPT intends to use

Dr. Rubloff’s deposition as an avenue to question him regarding

merits defenses rather than strictly for claim construction

purposes.   It would be improper for the Court to allow CPT to

reap the benefit of Eidos’ work with its own non-testifying

expert to that extent, especially where CPT is the party that has

primarily brought that expert’s work into the case at this stage.

See Eidos’ Reply at 13-14.   CPT could easily have retained its

own expert for the claim construction proceedings.   Indeed,

protecting the trial preparation work of each party is one of the

main justifications for the rule prohibiting depositions of

non-testifying experts.   See, e.g., Westrick, 288 F.R.D. at

227-28.   And, because Dr. Rubloff is not testifying at trial,

barring his deposition at this time will not prejudice CPT as it


                                13
does not have to prepare for his eventual cross examination.    See

Hansen Bev. Co., 2010 U.S. Dist. LEXIS 38635, at *8-9 (“The Court

also agrees with the finding that Hansen will not be prejudiced

by the Court’s disallowance of [the non-testifying expert’s]

deposition . . . [because she] will not testify at trial, and

therefore there is no need to depose her in preparation for cross

examination.”).

     Upon learning that CPT intended to depose Dr. Rubloff on

claim construction issues, Eidos offered to delete the citation

to his Declaration and delete the attachment from its opening

brief.   See Eidos’ Mot. at 6; Eidos’ Reply at 8-9, 15.   That CPT

refused to agree to that compromise suggests that its purpose in

seeking to depose Dr. Rubloff at this juncture has more to do

with probing him on invalidity and non-infringement issues than

with claim construction, as those issues are what his Declaration

largely concerns.   See Eidos’ Reply at 17-18.   Because the Court

finds that to the extent that there has been any waiver, it is

very limited, and because CPT has failed to make a showing of

exceptional circumstances, the Court grants Eidos’ motion and

orders that CPT cannot depose Dr. Rubloff at this time.   The

Court also finds that CPT’s document requests are overbroad, and

grants Eidos’ motion with respect to them.   See Plymovent Corp.,

243 F.R.D. at 146 (holding that because plaintiff had not waived

non-testifying expert immunity, defendant could not discover


                                14
documents absent a showing of exceptional circumstances, which it

had failed to make).   CPT cannot circumvent non-testifying expert

immunity by attempting to expand the waiver argument

unreasonably, especially where it has made no effort to establish

exceptional circumstances to justify the discovery it seeks.

IV.   Conclusion

      For the reasons explained herein, Eidos’ motion is GRANTED.

An appropriate order accompanies this Memorandum Opinion.

      SO ORDERED.

Signed:    EMMET G. SULLIVAN
           UNITED STATES DISTRICT JUDGE
           JULY 25, 2013




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