The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.
The case involved an earlier patent dispute between the parties that resulted in a settlement agreement. The plaintiff filed the instant case alleging inter alia patent infringement and breach of contract. The plaintiff alleged that an expert’s measurements showed that defendant’s product contained a silica particle size that was in a range prohibited by the settlement agreement. In particular, the complaint averred:
[Plaintiff] has had [Defendant]’s Ultrafinish 1L product tested and the Ultrafinish 1L contained a quantity of amorphous silica wherein the average particle size of the amorphous silica was in the range of from about 1 to about 55 nanometers.
The defendant moved to compel the plaintiff to produce the test results referenced in the plaintiff’s complaint and initial disclosures. The plaintiff opposed, stating that the documents were protected work product prepared in anticipation of litigation and that they were further protected from disclosure under Federal Rule of Civil Procedure 26(b)(4)(D) because they were prepared by a non-testifying expert. Defendant argued that the test results are discoverable because they are factual data, not expert opinion, and therefore are not privileged. The defendant further argued that the plaintiff has waived any privilege that may have attached by relying on the test results in its complaint.
The district court denied the defendant’s motion. After reviewing the disputed documents in camera, the court agreed with plaintiff, finding that the test results “are not facts but rather are opinions” and therefore “fall squarely within the work-product doctrine and Rule 26(b)(4)(D),” which generally exempts discovery of facts known or opinions held by a non-testifying expert. The court further found that the plaintiff did not waive any privilege “by using the test results to assist in the filing” of its complaint. Importantly, the plaintiff represented that it intended to rely only on opinions and results from other expert testing as evidence in the case. Because the defendant could seek discovery on that testing and those opinions, defendant was not prejudiced.
Practice Tip: If a party must plead statements that rely on expert work product it wants to keep confidential, such work should be performed by a non-testifying expert specifically in anticipation of litigation and should be kept separate from the opinions that will be used as evidence in the case. On the other hand, a party seeking to compel discovery should emphasize its need to discover the facts that underlie the allegation and highlight any prejudice or harm it suffers from the lack of discovery.
E5 Inc. vs. Premiere Concrete Admixtures LLC, Case No. 3:25 CV 51 (N.D. Ohio May 9, 2025)