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District Court Orders Production of Bills from Expert Witnesses But Permits Redaction of Narrative Statements in Bills

In this patent infringement action, the defendant, Ericsson moved to compel the plaintiff, TCL, to produce bills and invoices for worked performed by TCL’s expert witnesses. TCL sought to redact the bills and invoices to eliminate statements and narratives from the bills that do not reflect compensation.

Fed.R.Civ.P. 26(b)(4)(C) provides that “Rule 26(b)(3)(A) and (B) protect communications between the party’s attorney and any witness required to provide a report under Rule 26(a)(2)(B), regardless of the form of the communications, except to the extent that the communications . . . relate to compensation for the expert’s study or testimony.” Fed. R. Civ. P. 26(b)(4)(C).

The district court agreed that the narrative statements could be redacted as they “reflect communications between TCL’s attorney and its experts may be redacted. For example, a narrative in an invoice that an hour of the expert’s time was spent ‘conferring with Mr. Holder about X theory’ would reveal the topic of a communication between the expert and Mr. Holder.”

The district court concluded that “[r]edacting such a narrative would not diminish the objective of the exception, which is to permit a ‘full inquiry into such [compensation-related] sources of bias.’ Fed. R. Civ. P. 26 advisory committee’s note (2010 Amendments).

Accordingly, the district court permitted TCL “to make limited and judicious redactions to its expert’s bills and invoices to the extent that such redactions are necessary to prevent disclosure of communications that are not related to compensation.”

TCL Communication Technology Holdings, Ltd. v. Telefonaktiebolaget LM Ericsson et al., Case No. SA CV 14-00341-JVS (DFMx) (C.D. Cal. July 1, 2016)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or