Powerweb Energy, Inc. v. Hubbell Lighting, Inc. et al

Filing 312

DISCOVERY RULING re: expert discovery issues. See attached ruling. Signed by Judge Holly B. Fitzsimmons on 2/20/2014.(Katz, Samantha)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
POWERWEB ENERGY, INC.

:
:
:
v.
:
CIV. NO. 3:12CV220 (WWE)
:
HUBBELL LIGHTING, INC. AND
:
HUBBELL BUILDING AUTOMATION, :
INC.
:
DISCOVERY RULING
In this action, the plaintiff, Powerweb Energy, Inc.,
accuses defendants, Hubbell Lighting, Inc. and Hubbell Building
Automation Inc., of breaching licensing contracts and of
misappropriating trade secrets and confidential information in
connection with wireless lighting controls. [Doc. #1]. On
October 1, 2013, the Court held a telephonic conference to
discuss pending discovery motions. [Doc. #211].

Prior to the

telephone conference, defendants submitted a letter dated
September 30, 2013 outlining various pending discovery disputes.
The Court heard argument on these disputes and requested
additional briefing on limited issues.

On October 16, 2013,

defendants submitted a second letter brief with additional
argument and authority in support of their September 30, 2013
letter.

On October 22, 2013, plaintiffs provided a letter in

opposition.
Background
The current dispute between the parties centers on
plaintiff‟s experts, and their communications.

In pertinent

part, plaintiff‟s Rule 26(a)(2) disclosures identify Rod P.
Burkert and Lothar E.S. Budike, Jr. as expert witnesses.

Mr.

Burkert is a specially retained expert on the issue of
plaintiff‟s damages.
primary fact witness.

Mr. Budike is the plaintiff‟s CEO and
He is also identified in the Rule

26(a)(2) disclosure as a witness who is not required to provide
a written report because he has “not been retained or specially
employed to provide expert testimony.”

Plaintiff further

submits that Mr. Budike is “a witness with technical knowledge
who may provide opinions” under Federal Rule of Evidence 702.
Mr. Budike also provided information to Mr. Burkert, which is
incorporated in Mr. Burkert‟s expert report.
Applicable Law
The issues raised by the parties warrant a brief overview
of the applicable law governing the work product doctrine and
expert discovery.

“The work-product rule shields from

disclosure materials prepared „in anticipation of litigation‟ by
a party, or the party's representative, absent a showing of
substantial need.

United States v. Adlman, 68 F.3d 1495, 1501

(2d Cir. 1995); Fed. R. Civ. P. 26(b)(3).

The doctrine

establishes a zone of privacy for strategic litigation planning
and prevention of one party piggybacking on the adversary's
preparation.

See United States v. Nobles, 422 U.S. 225, 238, 95

S.Ct. 2160, 2170, 45 L.Ed.2d 141 (1975) (“At its core, the workproduct doctrine shelters the mental processes of the attorney,
providing a privileged area within which he can analyze and
prepare his client's case.”). “The initial burden of justifying
the work product doctrine is on the asserting party, and the
burden is a heavy one because privileges are neither lightly
2

created nor expansively construed.” In re Methyl Tertiary Butyl
Ether (MBTE) Prod. Liab. Litig., No. 1:00-1898, 2013 WL 3326799,
at *3 (S.D.N.Y. June 28, 2013) (citations omitted).
The Federal Rules of Civil Procedure contemplate expansive
expert discovery. In re MTBE, 2013 WL 3326799, at *6.

Federal

Rule of Civil Procedure 26(b)(4)(B) provides work product
protection for “drafts of any report or disclosure required
under Rule 26(a)(2), regardless of the form in which the draft
is recorded.”

Work product protection is also afforded to

communications between a party‟s attorney and an expert witness
required to provide a report under Rule 26(a)(2)(B), unless the
communications: “(i) relate to compensation for the expert‟s
study or testimony; (ii) identify facts or data that the party‟s
attorney provided and that the expert considered in forming the
opinions to be expressed; or (iii) identify assumptions that the
party‟s attorney provided and that the expert relied on in
forming the opinions to be expressed.” Fed. R. Civ. P.
26(b)(4)(C)(i)-(iii).

The Advisory Committee Note to the 2010

Amendment to Rule 26 further explains that the protection
provided by Rule 26(b)(4)(C) “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, including any „preliminary‟
expert opinions.”

However, the Advisory Committee Note further

states that Rule 26(b)(4)(C) “does not exclude protection under
other doctrines such as privilege or independent development of
the work-product doctrine.” Fed. R. Civ. P. 2010 Advisory
3

Committee Note.

Nevertheless, “Rules 26(b)(4)(B) and (C) do not

impede discovery about the opinions to be offered by the expert
or the development, foundation, or basis of those opinions[…]
[I]nquiry about communications the expert had with anyone other
than the party‟s counsel about the opinions expressed is
unaffected by this rule.” Id.
As the Advisory Committee Note to the 2010 Amendment
clarifies, Rule 26 “require[s] disclosure of any
material considered by [a] [testifying] expert, from
whatever source, that contains factual ingredients.”
Moreover, the amended Rule 26 protects only the
communications of counsel: “[work product] protection
does not extend to an expert‟s own development of the
opinions to be presented; those are subject to probing
in deposition or at trial.”
In re MTBE, 2013 WL 3326799, at *6 (citation omitted;
emphasis in original).
Consulting experts, i.e., those not retained to provide an
opinion at trial, are subject to more stringent discovery rules.
Rule 26(b)(4)(D) provides that, “[o]rdinarily, 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.” Fed. R. Civ. P. 26(b)(4)(D).

A party may

only do so as provided in Rule 35(b), or “on showing 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)(i-ii).

Nevertheless, courts in this

circuit have recognized that “factual materials considered by
testifying experts in forming their opinions are not protected
4

work product.

For this reason, tendering materials generated by

a consulting expert to a testifying expert may waive that
protection.”

In re MBTE, 2013 WL 3326799, at *4 (citations

omitted).
Discussion
1. Items 1 and 2 of Defendants‟ September 30 Letter
The first two items in the defendants‟ September 30, 2013
letter are now the subject of formal motions, one of which
remains pending. [See Doc. ##215, 217].

The Court will issue a

separate ruling for the pending motion to strike.
2. Item 3: Communications Between Testifying Experts
Defendants seek communications between plaintiff‟s
testifying experts, Lothar E.S. Budike, Jr. and Rod P. Burkert.
Defendants claim that these communications are not protected by
Rule 26(b)(4) because communications between testifying experts
are not protected and, likewise, communications between a client
representative and a testifying expert are not protected.
Plaintiff in turn argues that the communications between Mr.
Budike and Mr. Burkert are protected work product under Rule
26(b)(3).1
The Court agrees that the work-product protection afforded
by Rule 26(b)(4)(C) does not attach to communications between
Mr. Burkert and Mr. Budike.

It is clear from the language of

the rule, and the 2010 Advisory Committee Notes, that Rule
26(b)(4)(C) only protects communications between retained
experts and counsel, except to the extent that the
1

Specifically, defendants seek documents responsive to requests 22,23, and 33
of the Budike Subpoena, and requests 3 through 9 of the Burkert subpoena.
5

communications fall within one of the three exceptions
proscribed by 26(b)(4)(C)(i)-(iii).
However, plaintiffs do not solely rely on Rule 26(b)(4)(C)
to protect Mr. Budike and Mr. Burkert‟s communications.

Rather,

plaintiffs claim that Rule 26(b)(3) work product protection
applies to “documents authored by a party by itself or by its
representative, who may or may not be an attorney.

This

includes both Mr. Budike and Mr. Burkert[…]” [Pl. Ltr. Oct. 22,
2013, at 2].

The Court disagrees. Although the parties fail to

expressly address the interplay between Rule 26(b)(3) and (4), a
recent opinion from the Tenth Circuit lends sound instruction on
this issue.

See In re Application of the Republic of Ecuador,

735 F.3d 1179 (10th Cir. 2013).

As an initial matter, the Court

rejects plaintiff‟s assertion that Mr. Burkert is a “party
representative” as contemplated by Rule 26(b)(3). “The phrase
„party or its representatives,‟ implies agency, and each of the
six listed examples [in Rule 26(b)(3)(A)]2 connotes someone
acting in either an agency or fiduciary capacity for the „party
or its representative.‟”

Id. at 1184.

Because no showing has

been made that Mr. Burkert would have capacity to act on behalf
of plaintiff, the broad work product protection afforded by Rule
26(b)(3) is inapplicable to Mr. Burkert‟s expert materials.

See

also In re Application of the Republic of Ecuador, 735 F.3d at
1182 (“The 1970 revisers made clear that Rule 26(b)(3)‟s workproduct doctrine extends past attorneys to a party or any
2

Rule 26(b)(3)(A) provides that a party‟s representative includes “the other
party‟s attorney, consultant, surety, indemnitor, insurer, or agent.” Fed. R.
Civ. P. 26(b)(3)(A).
6

representative acting on its behalf. At the same time, however,
they made plainly clear that this protection did not bring
expert information within the work-product doctrine.”) (internal
citations and quotations omitted).

However, because Mr. Budike

is also a party representative, the Court must now determine
whether Mr. Budike‟s communications with Mr. Burkert are subject
to the work-product protections provided in Rule 26(b)(3).

The

Tenth Circuit‟s opinion referenced above is again instructive.
In In re Application of the Republic of Ecuador, the Tenth
Circuit affirmed a district court‟s adoption of a magistrate
judge‟s ruling concerning the production of expert materials in
response to a 28 U.S.C. §1782 application.

735 F.3d at 1181.

There, the issues involved an expert retained by Chevron for a
previous trial, who prepared and received documents and
communications “created in anticipation of litigation with the
intent that they would be kept confidential.

These documents

and communications came from a variety of sources in Chevron‟s
litigation team, including lawyers, in-house scientists,
consultants, and expert witnesses.”

Id.

At the district court

level, Chevron argued that the 2010 revisions to Rule 26 brought
materials prepared or provided to their expert under the
protection of the work-product doctrine.

Id.

The magistrate

judge rejected this argument, and noted that “Rule 26 does not
preclude the disclosure of information constituting the basis
for a report, even though prepared for use in trial.”

In re

Application of the Republic of Ecuador, 735 F.3d at 1181.

In

response to this order, Chevron produced “all of the facts and
7

data [the expert] considered in forming his expert opinions”,
but still withheld thousands of documents that it believed fell
under Rule 26‟s work product doctrine.

Id.

Applicants then

filed a motion to compel further production, which the
magistrate judge partially granted. Id.

In so ruling, the

magistrate held:
(1)

Chevron may properly withhold drafts of expert
reports and disclosures, in whatever form, under
Rule 26(b)(4)(b);

(2)

Chevron may properly withhold documents containing
communications between [the expert] and Chevron‟s
attorneys under Rule 26(b)(4)(C), however, Chevron
may not withhold communications between [the
expert] and non-attorneys; and

(3)

Rule 26(b)(3) did not provide work-product
protection to all documents in the hands of a
reporting expert, only those documents specifically
covered by Rules 26(b)(4)(B) and (C) were so
protected.

Id. at 1181-82 (citing Republic of Ecuador v. Bjorkman, No. 11cv-01740, 2012 WL 12755, at *4-6 (D. Colo. Jan. 4, 2012)).

The

magistrate further reasoned that “the intention of Rule 26 is to
protect the mental impressions and legal theories of a party‟s
attorney, not its expert” and therefore held, “Chevron may not
withhold any documents or information based upon the „work
product doctrine‟ set forth in Rule 26(b)(3), except those
specifically protected by Rules 26(b)(4)(B) and (C).” Id. at
1182.

The district court affirmed and adopted the magistrate‟s

ruling in full. Id.
The Tenth Circuit ultimately affirmed the lower court‟s
rulings, and pertinent to the present issue noted that
[…]the comments reinforce the strong preference for
broad discovery of expert materials: “[T]he intention
8

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.” Fed. R. Civ. P. 26(a)(2)(B) (2010
Comments). This indifference as to the source of
material refutes Chevron's contention that documents
provided to an expert by a party are protected under
Rule 26(b)(3).
In re Application of the Republic of Ecuador, 735 F.3d at 1187
(emphasis added).

The Court agrees with the Tenth Circuit‟s

reasoning that documents provided to an expert by a party are
not protected under Rule 26(b)(3).

Therefore, plaintiff shall

produce documents responsive to the subject document requests3,
unless they fall within the purview of Rule 26(b)(4)(B)-(D)
and/or the attorney-client privilege.4

Plaintiff shall produce

such documents within fourteen (14) days from the date of this
ruling.
3. Item 4: Mr. Burkert‟s Communications with Counsel About
Facts and Assumptions
During the October 1, 2013 telephone conference, the Court
ordered plaintiff to produce Mr. Burkert‟s communications with
plaintiff‟s counsel that disclosed facts or data considered or
assumptions relied on in Mr. Burkert‟s analysis. [Doc. #222].
The Court permitted plaintiff to produce versions of these
documents that redacted content that did not identify facts or
data considered or assumptions relied on by Mr. Burkert.

On

October 25, 2013, defendants submitted a letter brief and
3

See footnote 1, supra
As set forth below, defendants are not entitled to information concerning
Mr. Burkert‟s prior work for plaintiff as a consulting expert. Accordingly,
plaintiff shall not be required to produce communications between Mr. Budike
and Mr. Burkert that reference any of Mr. Burkert‟s prior work as a
consulting expert.
9
4

requested in camera review of sixteen (16) redacted emails
produced by plaintiff pursuant to the Court‟s October 1 Order.
Defendants contend that the redactions “raise serious concerns
about whether the opinions offered by Mr. Burkert are in fact
his own[…]” Defendants further argue that communications between
Mr. Burkert and Mr. Budike are wholly discoverable, and the
redactions are generally improper.
Although the rules contemplate expansive expert discovery,
“the discovery permitted by the exceptions [to Rule 26(b)(4)(C)]
does not extend beyond those specific topics.” Dongguk Univ. v.
Yale Univ., No.3:08-CV-00441(TLM), 2011 WL 1935865, at *2 (D.
Conn. May 19, 2011)(citing 2010 Advisory Committee Notes); see
also Rule 26 2010 Advisory Committee Notes (“Under the amended
rule, discovery regarding attorney-expert communications on
subjects outside the three exceptions in Rule 26(b)(4)(C), or
regarding draft expert reports or disclosures, is permitted only
in limited circumstances and by court order.”).

As an initial

matter, the Court rejects plaintiff‟s position that the redacted
emails constitute “draft reports” as contemplated by Rule
26(b)(4)(B).

The plain language of the rule, and the advisory

committee notes, do not contemplate such a broad interpretation
of the term “draft report”.

See 2010 Advisory Committee Notes

(“Rule 26(b)(4)(B) is added to provide work-product protection
under Rule 26(b)(3)(A) and (B) for drafts of expert reports or
disclosures […] It applies regardless of the form in which the
draft is recorded, whether written, electronic or otherwise.”).
Therefore, the challenged emails are not on a general level
10

protected by Rule 26(b)(4)(B).

Bearing this in mind, the Court

finds as follows.
The redacted statements on the following documents do not
fall under any of the three Rule 26(b)(4)(C) exceptions –
compensation, facts, and assumptions, which require disclosure,
and therefore are protected: PE-00047232; PE-00047243; PE00047245; PE-00047251; PE-00047254; and PE-00047266.

See

Dongguk Univ., 2011 WL 1935865, at *2 (statements properly
redacted, and therefore protected from disclosure, where the
statements did not fall under any of the three Rule 26(b)(4)(C)
exceptions).
The redacted statements on the following documents reflect
mental impressions, conclusions, opinions and/or legal theories
of plaintiff‟s counsel and are therefore protected: PE-00047242;
PE-00047246; PE-00047253; PE-00047255-56; PE-000472585; PE00047260; and PE-00047261.
The redaction set forth on document PE-00047250 obscures
the name of a document attachment.

The Court finds that this

redaction is not proper because this attachment was sent to Mr.
Burkert and, under the broad construction of the term
“considered”, the attachment was ostensibly considered by him.
Moreover, nothing indicates that this document is a draft expert
report.

Accordingly, plaintiff shall produce an un-redacted

version of document PE-00047250.
The redactions on documents PE-00047263, PE-0047264, PE0047265, and PE-0047267 are also improper in light of the above
5

Although this document says it is from Mr. Budike, it actually appears to
have been authored by plaintiff‟s counsel.
11

ruling that plaintiff turn over communications between Mr.
Budike and Mr. Burkert.

Although Mr. Garcia is copied on the

emails, this is not enough to afford the document protection
where the emails are not directed to him, and do not seek legal
advice. See, e.g., U.S. Postal Serv. v. Phelps Dodge Refining
Corp., 852 F. Supp. 156, 160 (E.D.N.Y. 1994) (“[T]he mere fact a
communication is made directly to an attorney, or an attorney is
copied on a memorandum does not mean that the communication is
necessarily privileged.”).

Accordingly, plaintiff shall produce

un-redacted copies of PE-00047263, PE-00047264, and PE-00047265,
and PE-0047267.6
Defendants moreover seek that any properly redacted
documents be turned over as a result of defendants‟ substantial
need.

To overcome work product protection, the party seeking

disclosure must demonstrate that “that it 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).

Defendants claim a substantial

need for the redacted documents “to prepare a fair crossexamination of Mr. Burkert”. [Defs. Oct. 25, 2013 Ltr., at 3].
Preparing for cross examination is not a sufficient “substantial
need” to overcome work-product protection.

If it were, every

party could compel documents properly withheld by claiming a
need to prepare for cross-examination.

This is especially true

where defendants had the opportunity to test the bases of Mr.
6

As to document PE-00047264, the statement following the comma on the first
item number 4, and the statement following the comma on item number 6, are
both properly redacted, and should remain so.
12

Burkert‟s opinions through deposition testimony.

See, e.g.,

Tribune Co. v. Purcigliotti, No. 93 CIV 7222, 1998 WL 175933, at
*4 (S.D.N.Y. April 14, 1998) (citation omitted) (“„Substantial
need‟ cannot be shown where persons with equivalent information
are available for deposition.”).

Accordingly, the Court will

not order the production of the properly redacted emails on the
basis of defendants‟ substantial need.
4. Item 5: Mr. Budike‟s Communications with Dr. Kursh
Defendants next seek communications between Mr. Budike and
Dr. Samuel J. Kursh.7

Plaintiff objected to this request on the

basis of privilege and work product grounds.

Defendants argue

the communications sought are not protected because Mr. Budike
is not an attorney, and because the disclosure of Mr. Budike as
an expert regarding Powerweb‟s damages waived work product
protection. Defendants also contend that Mr. Budike cannot
escape the waiver argument by contending that he did not
consider his communications with Dr. Kursh in rendering his
opinions regarding plaintiff‟s damages. Plaintiff submits that
Dr. Kursh is a damages expert, who consulted with plaintiff‟s
counsel but is not expected to testify at trial.

Accordingly,

plaintiffs argue that Rule 26(b)(4)(D) precludes substantive
discovery about Dr. Kursh. Plaintiff further argues that Mr.
Budike did not rely on any information provided by Dr. Kursh.
Although plaintiff disclosed Mr. Budike as an expert, and
listed “damages” as an area of Mr. Budike‟s expected testimony,
7

Request 34 of the Budike Subpoena seeks “[a]ll communications, and documents
concerning such communications, made between You and Dr. Samuel Kursh, or
individuals at BLDS, in connection with this Matter.”
13

plaintiff now submits that Mr. Budike is not plaintiff‟s damages
expert, and only provided Mr. Burkert with technical and
industry calculations.

It is unclear in what capacity Mr.

Budike may have considered Dr. Kursh‟s communications,
especially in light of the fact that Mr. Budike provided limited
testimony concerning Dr. Kursh at his expert deposition. See
Budike Depo. Tr., Aug. 27, 2013, 362:1-3, 362:5-9.

Given this

ambiguity, and the fact that Mr. Budike‟s expert disclosure
lists damages as an area he is expected to testify, the Court
finds that plaintiff should produce any of Mr. Budike‟s
communications with Dr. Kursh that Mr. Budike considered in
forming his expert opinion.

See In re MBTE, 2013 WL 3326799, at

*4 (“factual materials considered by testifying experts in
forming their opinions are not protected work product.

For this

reason, tendering materials generated by a consulting expert to
a testifying expert may waive that protection.”).

Although Mr.

Budike testified that Dr. Kursh did not provide him any
information that he relied on, Budike Depo. Tr., Aug. 27, 2013,
362:1-3, (“Mr. Kirsch (sic) provide me – provided me no
information that I relied on.”), such statements are not
dispositive in light of the broad definition given by many
district courts to the word “considered”.

See, e.g., In re

Commercial Money Ctr., Inc., Equip. Leasing Litig., 248 F.R.D.
532, 537 (N.D. Ohio 2008) (“[A] testifying expert has
„considered‟ data or information if the expert has read or
reviewed the privileged materials before or in connection with
formulating his or her opinion.”)(internal citations and
14

quotation marks omitted); Yeda Research & Dev. Co., Ltd. v.
Abbott GmbH & Co. KG, No. 10-CV-1836, 2013 WL 2995924, at *20
(D.D.C. June 7, 2013) (“[M]aterials reviewed or generated by an
expert must be disclosed, regardless of whether the expert
actually relies on the material as a basis for his or her
opinions.”).

Alternatively, if Mr. Budike did not consider any

of Dr. Kursh‟s communications, he may provide a sworn statement
to defendants stating that he never read, reviewed or considered
the subject documents in forming his opinions.
5. Item 6: Mr. Burkert‟s Prior Work for Powerweb
Finally, defendants contend that they are entitled to
discovery about Mr. Burkert‟s work in a 2010 arbitration between
plaintiff and General Electric (“GE”). Defendants “believe[]”
plaintiff hired Mr. Burkert to act as a consultant.

Plaintiff

instructed Mr. Burkert not to answer any questions about his
prior consulting expert work for plaintiff on work product
grounds, and has refused to produce documents.8

Defendants

contend they are entitled to certain information as it relates
to Mr. Burkert‟s bias, and also submit that the facts and
opinions known by Mr. Burkert in his prior engagement are
discoverable if they relate to the subject matter on which he
has been disclosed as a testifying expert. Plaintiff argues that
the discovery should not be had because Mr. Burkert was a nontestifying expert in a previous matter, and even assuming Mr.
Burkert served as a consultant in the GE matter, that matter
8

Burkert subpoena requests 15-17 address plaintiff‟s 2010 arbitration against
G.E. Requests 18-21 address Mr. Burkert‟s prior work for plaintiff regarding
wireless lighting control and energy management products. Requests 1-2 and 69 encompass any prior work that relates to technology in this case.
15

involved a different project, product, and party.
As discussed above, “[w]hen an expert is retained as a
litigation consultant [], materials reviewed or generated by the
expert are generally privileged and immune from disclosure.”
Employees Committed for Justice v. Eastman Kodak Co., 251 F.R.D.
101, 104 (W.D.N.Y. 2008).

However, under the set of

circumstances here, the Court is “forced to grapple with what
must be disclosed when an expert alternately dons and doffs the
privileged hat of a litigation consultant and the non-privileged
hat of the testifying witness.” Id. (quoting S.E.C. v. Reyes,
No. C 06-04435 CRB, 2007 WL 963422, at *1 (N.D. Cal. March 30,
2007)) (internal quotations omitted).

The question then becomes

[D]oes a litigant forfeit the privilege that would
otherwise attach to a litigation consultant‟s work
when he offers that expert as a testifying witness?
Every court to address this “multiple hats” problem
has concluded that an expert‟s proponent may still
assert a privilege over such materials, but only
over those materials generated or considered
uniquely in the expert‟s role as a consultant.
Id. “Any ambiguity as to the role played by the expert when
reviewing or generating documents should be resolved in favor of
the party seeking disclosure.”

Eastman Kodak, 251 F.R.D. at 104

(quoting B.C.V. Oil Ref., Inc. v. Consol. Edison co. of N.Y.,
171 F.R.D. 57, 62 (S.D.N.Y. 1997)).
The issue that the Court must consider is whether Mr.
Burkert‟s current expert opinion relates to the same subject
matter as his alleged consulting opinion in the GE arbitration.
Defendants state that “[i]t appears likely that Mr. Burkert
conducted a financial analysis in connection with Powerweb‟s
16

claim that GE Lighting misappropriated Powerweb‟s confidential
and trade secret information in the course of developing a
wireless control and energy management product.” [Def. Ltr. Oct.
16, 2013, at 7] (emphasis added). Defendants go onto reference
Mr. Budike‟s deposition testimony that allegedly “establishes
the close relationship between the Light WAV product at issue
[in the GE arbitration] and the Wi-Con product at issue here.”
[Id.]. Defendants‟ assertion that Mr. Burkert served as a
consulting expert in the GE arbitration appears wholly
speculative in light of Mr. Burkert‟s deposition testimony,
which indicates only that he may have served as a consulting
expert for Powerweb in a previous case.

See Burkert Depo. Tr.,

Sept. 4, 2013, at 148:2-149:13; 150:11-14 (testifying that aside
from litigation consulting engagements, he has never been
retained to provide services to plaintiff, and he never prepared
an expert report that was produced in a case involving
plaintiff).

Quite frankly, the record before the Court is

completely devoid of facts to support an inference that Mr.
Burkert worked as a consulting expert on the GE matter.
Although the Court recognizes that this may in part result from
counsel instructing Mr. Burkert not to answer certain questions
at his deposition, defendants nevertheless should present
something more than a mere “belief” before requesting relief
from the Court.

To the extent that defendants believe

plaintiff‟s counsel improperly instructed Mr. Burkert not to
answer during his deposition, defendants should have contacted
the Court during Mr. Burkert‟s deposition for guidance on this
17

issue.
Even assuming that Mr. Burkert was engaged as a consulting
expert in the GE arbitration, the Court is not convinced that
the subject matter of Mr. Burkert‟s alleged work on the GE
arbitration “directly relates to the opinion” he has offered
here.

As plaintiff represents, the GE arbitration “involved a

different project with a different party regarding a different
product, called GEWEMS.” [Pl. Ltr. Oct. 22, 2013, at 4-5].
Defendants contend that because Wi-Con is a “descendent” of
Light WAV, the subject matter of Mr. Burkert‟s alleged work on
the GE matter directly relates to the opinions he has offered
here.

The Court disagrees and credits Mr. Budike‟s sworn

deposition testimony that GEWEMS “was totally different – it
wasn‟t a wireless control lighting fixture system at all.”
Budike Depo Tr., May 10, 2013, at 995:14-24; see also id. at
1079:12-1080:13 (testifying that during the GE timeframe, “we
certainly didn‟t sell anything that resembled or operated such
as Wi-Con[…]”).

Finally, although the Court appreciates

defendants‟ need to test Mr. Burkert‟s bias, this may be
addressed through cross-examination at trial.

Therefore, and on

the record currently before it, the Court will not require the
production of documents related to Mr. Burkert‟s prior
consulting work for plaintiff.
Conclusion
Accordingly, defendants‟ requests are GRANTED in part and
DENIED in part, as set forth above.

Plaintiff shall produce any

documents ordered by this ruling within fourteen (14) days.
18

This is not a Recommended Ruling. This is a discovery
ruling or order which is reviewable pursuant to the “clearly
erroneous” statutory standard of review. 28 U.S.C. §
636(b)(1)(A); Fed. R. .Civ. P. 72(a); and D. Conn. L. Civ. R.
72.2. As such, it is an order of the Court unless reversed or
modified by the district judge upon motion timely made.
SO ORDERED at Bridgeport this 20th day of February 2013.

_______/s/______________
HOLLY B. FITZSIMMONS
UNITED STATES MAGISTRATE JUDGE

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