UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
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`Before Ddbert R. Terrill, Jr.
`Administrative Law Judge
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`In the Matter of
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`__ -
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`CERTAIN PERSONAL WATERCRAFT
`AND COMPONENTS THEREOF
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`Investigation No. 337-TA-452
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`RESPONSE OF COMMISSION INVESTIGATIVE STAFF
`TO COMPLAINANTS’ MOTION TO COMPEL PRODUCTION OF DOCUMENTS
`PROVIDED TO TESTIFYING ESPERTS AND TESTIMONY REGARDING
`INFORMATION PROVIDED T O TESTIFYING EXPERTS
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`At issue in the Motion to Compel’ filed by Complainants Yainaha Hatsudoki Kabushiki
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`Kaisha and Sanshin Kogyo Kabushiki Kaisha (collectively “Yamaha”) are documents that were
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`reviewed by five individuals who will testify at the hearing as experts on bchalf of Respondents
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`Bombardier, Inc. and Bombardier Motor Corporation of America (collectively “Bombardier”).
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`Bombardier claims that these documents a x protected by the attorney work product doctrine
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`because they contain the thoughts, opinions and impressions of Bombardier’s counsel.2
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`I.
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`All Documents Submitted for Review toJxperts Other Than Jean
`Daunais Should Be Produced
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`With respect to the documents shon n to experts that are not Bombardier employees (ie.,
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`all except Jean Daunais), the controlling d e of law was recently set forth by the Federal Circuit
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`I
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`Motion Docket No. 452-65.
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`This additional briefing was directed by thi. Administrativc Law Judge in the motion hearing on October 2,
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`2001 (Tr. at 70).
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`in In re Pioneer Hi-Bred hit ’1. Iizc., 238 F.7d 1370 (Fed Cir. 2001). In Pioneer Hi-Bred, the
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`plaintiff sought information related to an ailalysis performed by the defendant’s in-house counsel
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`concerning the tax consequences and validjty of a patent license Following a merger between the
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`defendant and a third party. 238 F.3d. at 1. 72. When deposed, the in-house attorney objected to
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`supplying this information on grounds of tke attorney-client privilege. Id. The court held that
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`“because any disclosures to a testifying expert in connection with his testimony assumes that
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`privileged or protected material will be made public [citation omitted] there is a waiver to the
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`same extent as with any other disclosure.” 238 F.3d at 1375-76 (emphasis added). The rule
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`applies to all reviewed documents includin;! those that an expert does not rely upon to form his
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`opinion. Id. at 1375.3
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`In reaching its conclusion, the Piont Ser Hi-Bred court Found particularly persuasive the
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`Advisory Committee Note explaining the 1.193 Amendments to Rule 26 of the Federal Rules of
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`Civil Procedure, which states that “[gliven his obligation [under Rule 26(a)(2)] of disclosure,
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`litigants should no longer be able to argue that materials fimished to their cxperts to be used in
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`forming their opinions - whether or not ulti rnately relied upon by the expert - are privileged or
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`otherwise protected from disclosure when such persons are testifying or being deposed.” Thus,
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`under Pioneer Hi-Bred, all documents show n to Bombardier’s non-employee experts should be
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`produced in this case.‘
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`3
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`Although the Pioneer. Hz-Bred court decidc d the case under the law of the Eighth Cil cult. the court
`held that it would reach the same result applying Fetleral C’ircuit law 238 F 3d at 1374 n.3.
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`The Pioneer Hi-Bred court acknowledged but found unpeisuasive a line of cases froin the federal
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`district courts holding that otherwise piivileged Info, niation that is opinioii rather than fact is piotected fioni
`disclosure. 238 F.3d at 1375 These include the caczs relied on by Bonibardier Another ruhng consistent with that
`(continued.. .)
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`11.
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`Documents Shown @Mr. Dapnais Oeb in Connection with His
`Capacity as Director of Intellectual Property Should Be Produced
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`With respect to certain documents shown to Jean Daunais, Director of Intellectual
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`Property-Engineering at Bombardier, Piortrw Hi-Bred does not end the matter since it does not
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`address the fact that an employee expert witness will have seen many documents in his or her
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`capacity as an employee that relate to the smie subject matter as the expert testimony. However,
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`there is an opinion in a Section 337 case that is nearly on all fours with the work product claims
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`here as they apply to Mr. Daunais. In Certciin HSP Morlerws, Sufivaw nnci Hwclware
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`Components ThereoJ and Products Contcriwng the Suine, Inv. N o . 337-TA-439, Notice of
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`Issuance of Order No. 37, 2001 WL 422810, 2001 ITC LEXIS 261 (April 23,2001) (“Moden~s”),
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`the complainant sought otherwise privileged information given to a corporate ofticer of the
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`respondent who was also a testifying exper’ in the case. Id. at 1. The Judge stated that this
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`situation “raised issues not directly addressdd in Pioneer Hi-Bred. ” Id.
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`The Judge in Moderns ruled that all documents supplied to the corporate officer must be
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`disclosed except those that the respondent t o d d prove “were not supplied ui connection with his
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`expert opinion, reports or testimony.” Id. at 2 (emphasis added). To help cletcrniine what
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`documents should be considered supplied ‘ in connection with” an expert’s opinion, reports, or
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`(...continued)
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`line of cases that should no longer be considered prrtincnt is Cer/nin Mcchnnicd Liimbrrr Szpports, Inv. No. 337-
`TA-4 1.5, 1999 ITC LEXIS 96 (March 3, I999), whish was decided prior to Piowel- Hi-Bi-cd. In fact, the Judge that
`made the niliiig regarding Order No. 37 in Modcin~ discussed below, which came out after /’io/zcer Hi-Bred, is the
`same Judge that decided Lumbar Supports. The fa t that the Judge did not cite Luinbm Sirpports in the HSP
`Modeins case but relied exclusively on Pioneer- Mi Bred 1s strong support for the notion that she no longer
`considered Lumbar Support to be controlling on ttii.. issue after Pioneer Hi-Bred.
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`4
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`testimony, the Judge stated: “GencwLfj*, I deem any document supplied to the expert that refers
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`or relates to his reports, expert opinion or tcstirnony, or that refers or relates to the subject matter
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`of his reports, opinion or testimony to have been supplied i n conncction with his expert opinion,
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`reports or testimony.” Id. (emphasis added). However, there clearly will be documents seen by
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`the witness that will not have been supplied to him or her for that purpose.
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`There is no doubt that the thirty opinion letters written by Bombardier’s outside counsel
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`and relatcd documents that were supplied to Mr. Daunajs can be considct-ed “to refer or relate to
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`the subjcct matter” of his reports, testimonj, opinions. It is important to note, however, that the
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`Judge in Modems did not go so far as to sa5 that documents “that refer or rclate to the subject
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`matter of the expert’s reports, opinion or tectiniony” woiild be conclusively presumed to be “in
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`connection with” the expert’s reports, opinion or testimony. Indccd, Modcms states that a
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`respondent could properly withhold docummts if it provided a valid explanation, for each
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`withheld document, as to “why the document should not be deemed to havc been supplied to the
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`expert in connection with his expert opinion, reports or testimony.” Id (emphasis in original).
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`The evidence indicates that Mr. Datinais’s review of the opinion letters and related
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`material was prior to his designation as an cxpert in the case. Mr. Daunais rei iewed the opinions
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`in February of this year. Daunais Depo. Rtlugh Transcript at 10. He submitted a technical
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`affidavit in support of Bombardier’s Opposition to Summary Deterniination on June 1, 2001, and
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`was designated an expert by unopposed morion on June 6,2001. Thus, these events relating to
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`Mr. Daunais’s designation as an expert occtu-red more than three months after his review of the
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`opinion letters in question. It seems most likely, therefnre, that at that time Mr. Daunais
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`reviewed this material, it was solely in connection with his dutics as Director of Intellectual
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`Property.
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`Mr. Daunais’s deposition testimony supports this interpretation. He testified that “I got
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`those opinions early. And 1 read them to irsform myself, to get insrolvcd in thc case,” and that the
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`opinions served as an “introduction” to “leiim about the case.” Daunais Dcpo. Rough Transcript
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`at 10, 12. These statements indicate that his review was in his capacity as Director of Intellectual
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`Property and not as an expert witness. Thus, the documents that Mr. Daunais reviewed during
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`this time frame remain privileged under the Modems rationale and should not be ordered
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`produced.
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`111.
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`Conclusion
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`For the foregoing reasons, the Staff submits that all documents providcd to Bombardier’s
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`experts for review should be produced excrpt those documents Mr. Daunais roviewed solely in
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`connection with his capacity as Director of Iiitellectual Property. which include the opinion
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`letters and related documents prepared by cutside counsel.
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`Respc*ctfully submitted,
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`T. Spmce Chubb, Sup&sory Attorney
`Anne Goalwin, Investigative Attorney
`Rett Snotherly, Investigative Attorney
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`OFFICE OF UNFAIR IMPORT INVESTIGATIONS
`U.S. 1 nternational Trade Commission
`500 F Street, S.W., Suite 401
`Washington, D.C. 20436
`(202) 205-2574
`(202) 205-2158 (Facsimile)
`
`October 5,20001
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`

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`CERTAIN PERSONAL WATERCRAFT AND C! IMPONENTS THEREOF
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`Int. No. 337-TA-452
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on October 5,200 1. Lopies of the foregoing RESPONSE OF COMMISSION
`INVESTIGATIVE STAFF TO COMPLAINAN r s MOTION TO COMPEL PRODUCTION OF
`DOCUMENTS PROVIDED TO TESTIFYING EXPERTS AND TESTIMONY REGARDING
`INFORMATION PROVIDED TO TESTIFYING EXPERTS were served upon the Hoporable Delbert R.
`Terrill, Jr. by hand (two copies) and the following parties as indicated below:
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`For Complainants Yamaha Hatsudoki Kabushiki K.i&a-dba
`Kabushiki Kaisha, dba Sanshin Industries Cornpap:Jtd
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`Yamaha Motor Company, Ltd., and Sanshin Kowo
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`By Facsimile and U.S. Mail:
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`By Facsimile and U.S. Mail:
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`By Facsimile and U.S. Mail:
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`James F. Lesniak
`John B. Sganga, Jr.
`Craig S. Summers
`Sheila N. Swaroop
`Knobbe, Martens, Olson, & Bear, LLP
`620 Newport Center Drive, 16th Floor
`Newport Beach, CA 92660
`(949) 760-0404
`FAX (949) 760-9502
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`Charks F. Schill
`Larry 1,. Shatzer, I1
`Georg,. C. Beck
`Foley & Lardner
`3000 1.; Street, N.W., Suite 500
`Washjn@on, D.C. 20007-5 109
`(202) 672-5300
`FAX L202) 572-5399
`
`Theodore C. Whitehouse
`Willkie Farr & Gallager
`Three Lafayette Centre
`1155 21st Street,N.W.
`Washington, D.C. 20036-3384
`(202) 328-8000
`FAX (202) 887-8979
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`For Respondents Bombardier Inc. and Bombardiq Mgtgr Corporation of America
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`By Facsimile and U.S. Mail:
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`By Facsimile and US. Mail:
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`Philippe M. Bruno
`Mark L. Hogge
`Aldo Noto
`Robert A. Schwartzbauer
`Dorsey & Whitney, LLP
`100 1 Pennsylvania Avenue, N. W.
`Suite 300 South
`Washington, D.C. 20004
`(202) 824-8800
`FAX (202) 824-8999
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`Harry C. Marcus
`John 1 . Sweeney
`Michael Dougherty
`Morgm & Finnegan
`345 Park Avenue
`New York, NY IO154
`(212) 758-4800
`FAX 2 12) 75 1-6849
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`Rett Snotherly
`OFFICE OF UNFAIR IMPORT INVESTIGATIONS
`IJ.S. International Trade Commission
`500 E Street, S.W., Suite 401
`Washington, D.C. 20436
`(202) 205-2599
`FAX (202) 205-2158