CODA Development s.r.o. v. Goodyear Tire & Rubber Company

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF OHIO

EASTERN DIVISION

CODA DEVELOPMENT, S.R.O., et al., ) CASE NO. 5:15-cv-1572

)

)

PLAINTIFFS, ) JUDGE SARA LIOI

)

vs. )

) MEMORANDUM OPINION

GOODYEAR TIRE & RUBBER CO., et al., ) AND ORDER

)

)

DEFENDANTS. )

Before the Court are Doc. Nos. 169 and 196—defendants’ objections to and request for

reconsideration of the Magistrate Judge’s Orders resolving certain discovery disputes. (See Doc.

Nos. 139, 160, 178 and 190.) Plaintiffs filed responses (Doc. Nos. 185 and 199) and defendants

filed replies (Doc. Nos. 194 and 204).1 Pursuant to 28 U.S.C. § 636(b)(1)(A) and Fed. R. Civ. P.

72(a), the Court has conducted its review and, for the reasons discussed herein, defendants’

objections are overruled in part and sustained in part.

I. Standard of Review

When [as here] a magistrate judge determines a non-excepted, pending

pretrial matter, the district court has the authority to “reconsider” the

determination, but under a limited standard of review. 28 U.S.C. § 636(b)(1)(A).

Under this standard, the magistrate judge’s determination may be overturned by

the district court only if it is “clearly erroneous or contrary to law.” Id. Rule 72(a)

of the Federal Rules of Civil Procedure implements Section 636(b)(1)(A).

Massey v. City of Ferndale, 7 F.3d 506, 509 (6th Cir. 1993).

1 Due to the number of documents, for ease of reference herein the Court will cite to all documents using the document

number assigned by CMECF.

“The ‘clearly erroneous’ standard of review is a limited one.” Burghardt v. Ryan, No. 5:19-

cv-325, 2020 WL 4350049, at *2 (N.D. Ohio July 29, 2020). “A court may not overturn a ruling

just because, if it were the original fact-finder, it would have decided the evidence differently. If

there are two plausible views of a matter, then a decision cannot be ‘clearly erroneous.’” Id. (citing

Anderson v. City of Bessemer City, N.C., 470 U.S. 564, 573–74, 105 S. Ct. 1504, 84 L. Ed. 2d 518

(1985)). “In reviewing a magistrate judge’s decision to determine whether it is ‘contrary to law,’

a district court is to apply the same standard the Sixth Circuit employs to review a district court’s

ruling on an evidentiary question, which is an ‘abuse of discretion’ standard.” Champion

Foodservice, LLC v. Vista Food Exch., Inc., No. 1:13-cv-1195, 2015 WL 7251307, at *1 (N.D.

Ohio Nov. 16, 2015).

“Under this deferential standard, ‘[t]he party seeking to reverse a Magistrate Judge’s ruling

concerning discovery bears a heavy burden, in part, because the Magistrate Judge is afforded broad

discretion in these matters.’” Burghardt, 2020 WL 4350049, at *2 (quoting Am. Rock Salt Co.,

LLC v. Norfolk S. Corp., 371 F. Supp. 2d 358, 360 (W.D.N.Y. 2005)).

II. Discussion

A. Background

In this lawsuit, plaintiffs Coda Development s.r.o., Coda Innovations s.r.o., and Frantisek

Hrabal (collectively, “plaintiffs” or “Coda”) claim that, during two conversations in 2009, Coda

orally disclosed certain trade secrets to defendants The Goodyear Tire & Rubber Company, Robert

Benedict, and Robert Losey (collectively, “defendants” or “Goodyear”), which Goodyear, in turn,

subsequently disclosed in certain of Goodyear’s patents, claiming Coda’s trade secrets as

Goodyear’s own original ideas.

During the course of discovery, Coda has withheld as privileged or work-product-protected

over 13,000 documents originating from the time before this lawsuit was filed in 2015, while

producing around 38,000 documents. Goodyear asserts (and Coda does not deny) that, prior to this

lawsuit, Coda was attempting to attract investors by, among other things, informing them of its

plan to bring a patent infringement case against Goodyear. As part of this effort, Coda explained

to potential investors its belief that its published patents and patent applications describe and claim

features in Goodyear’s AMT tire designs, and Coda disclosed its attorneys’ advice on these

subjects, never characterizing these features as trade secrets.

Goodyear claims it is entitled to discover the withheld documents because they “show that

Coda previously admitted that its own patent filings and other publications disclose what it now

claims were trade secrets.” (Doc. No. 169 at 6470.)2

B. Goodyear’s First and Second Notices of Discovery Dispute

Goodyear filed its First Notice of Discovery Dispute (Doc. No. 103 [“First Notice”]) on

July 13, 2020, seeking production of (1) the legal opinion of Coda’s patent lawyer, Harry Brown

(the “Brown Opinion”3), and (2) thirty communications—withheld on privilege and work product

grounds—between Coda and Alliacense, a well-known patent licensing firm described by Coda as

a “potential investor.” Coda withdrew its privilege claim over twenty-nine of the communications

and the Alliacense Claim Chart I, and produced them on the condition that such production was

“not construed as a broader waiver of privilege over any other documents.” (Doc. No. 127 at 4473;

2 All page number references are to the page identification number generated by the Court’s electronic docketing

system.

3 The Brown Opinion is also referred to in the briefing as the “WRB-IP patent analysis.”

see also Doc. No. 109, Minute Order, at 2926–27.) Coda maintained its privilege claim over the

Brown Opinion.

On September 15, 2020, the Magistrate Judge resolved the portion of the First Notice

relating to the Brown Opinion, ordering that it be produced, after concluding that Coda could not

claim privilege over the opinion because Coda had shared the opinion with potential investor Dan

Jackson. (Doc. No. 139 at 4674.) On September 28, 2020, the Magistrate Judge cursorily denied

“[t]he remainder of Goodyear’s [First] Notice of Discovery Dispute[.]” (Doc. No. 160 at 5520.)

On July 29, 2020, while its First Notice was still under advisement, Goodyear filed its

Second Notice of Discovery Dispute (Doc. No. 110 [“Second Notice”]) challenging (1) Coda’s

attempts to claw back Coda-produced documents that Goodyear used as exhibits in the depositions

of Coda’s witnesses, and (2) Coda’s “serious and systemic abuse of privilege and work-product

protections.” (Id. at 2928.) At the Magistrate Judge’s direction, the Second Notice was

subsequently supplemented. (Doc. No. 144.)

In Section II of the Second Notice, Goodyear challenged Coda’s claw back of Daniel

Jackson’s November 2015 notes in two Excel spreadsheets (the “Jackson Excel Notes”), a January

2015 email from Jackson to Jan Martinek (the “Jackson Email”), a claim chart authored by plaintiff

Frantisek Hrabal in September 2013 (the “FH Claim Chart”), the June 2016 MacMaster

Presentation (the “MacMaster Presentation”), an August 2018 presentation given to Josef Broz

(the “Broz Presentation”), a December 2014 email chain and attachment (the “Luptak Email”),

portions of a December 2014 email chain between Hrabal and third-party Innovation Partners

(“Equity Terms Email”), and portions of an October 2017 email chain between Hrabal and Coda’s

investors (“Valuation Email”). During a conference with the Magistrate Judge on September 3,

2020, Goodyear identified “a new discovery dispute regarding late produced pages from Mr.

Jackson’s personal notebooks.” (Doc. No. 178 at 6583.) In Goodyear’s subsequent supplement to

the Second Notice, Goodyear sought production of those notebooks (the “Jackson Notebooks”)

(or, at least, an in camera inspection) and permission to re-depose Hrabal and Jackson. (Doc. No.

144 at 4735–36.)4

In Section III of the Second Notice, Goodyear argued that Coda had overbroadly and

arbitrarily claimed attorney-client privilege and work-product protections. (Doc. No. 110 at 2936–

37.) Goodyear claimed that Coda’s recklessness in this regard operated as a waiver of these

protections. (Id. at 2937.)

On October 21, 2020 and October 30, 2020, the Magistrate Judge issued two orders that

resolved the remainder of Goodyear’s Second Notice. In Doc. No. 178, the Magistrate Judge

denied Goodyear’s request for production of the Jackson Excel Notes, the FH Claim Chart, and

the Jackson notebooks, but granted the request with respect to the Jackson Email; the magistrate

Judge also denied the request to re-depose Hrabal and Jackson. In Doc. No. 190, the Magistrate

Judge ruled that Coda did not waive privilege as to the FH Claim Chart by inadvertently disclosing

it to Dr. Shirley Webster.

C. Goodyear’s Objections Generally

With respect to its First Notice of Discovery Dispute, Goodyear claims that the Order of

September 15, 2020 (Doc. No. 139) addressed only the Brown Opinion and failed to address other

matters raised in the various briefs,5 in particular, Coda’s refusal to produce other Alliacense-

4 Goodyear was granted leave to supplement only as to one issue newly-raised during a phone conference (see Doc.

No. 136 at 4662–63), but its supplement improperly re-argued matters raised in Doc. No. 110, sometimes broadening

the arguments and the general relief sought. The record does not reflect any disapproval by the Magistrate Judge of

Goodyear’s strategy.

5 It is inaccurate to consider Doc. No. 103 as the sole document setting out this discovery challenge. Issues relating to

Goodyear’s First Notice were detailed in many additional filings. (See Doc. Nos. 111, 116, 119, 124, 127, 131, 145,

related documents and the scope of Coda’s subject matter waiver as to the Brown Opinion and

Alliacense-related documents. (Doc. No. 169 at 6471–72.)

Because Goodyear had raised in its First Notice reply brief a new dispute over the

Alliacense Claim Chart II (see Doc. No. 131), the Magistrate Judge ordered separate briefing on

that. On September 28, 2020, in the Minute Order now challenged by Goodyear, the Magistrate

Judge succinctly, and without any analysis or citation to authority, ruled that “[t]he remainder of

Goodyear’s Notice of Discovery Dispute at [Doc.] No. 103 and 131 is DENIED.” (See Doc. No.

160.)

With respect to this First Notice, Goodyear now objects to the Magistrate Judge’s denial

of its motion to compel production of (1) the Alliacense Claim Chart II, (2) other communications

and documents shared with Alliacense, and (3) documents having the same subject matter as the

intentionally-waived Brown Opinion or Alliacense documents. (Doc. No. 169 at 6473.)

In opposition, Coda first argues that Goodyear’s challenge, except as to the Alliacense

Claim Chart II, is untimely because the Magistrate Judge’s decision as to the other matters was

issued on September 15, 2020. The Court rejects Coda’s argument. Goodyear was entitled to wait

until there was a final and complete resolution of its First Notice, which did not occur until

September 28, 2020.

With respect to its Second Notice of Discovery Dispute, Goodyear objects to the Magistrate

Judge’s denial of its motion to compel production or to have some form of in camera review of

(1) the 5,500 documents on Coda’s privilege logs for which no attorney is associated, (2) several

hundred communications and documents described as being shared with potential investors

146, 156, and 159.) This undisciplined multiplicity of filings, followed by piecemeal orders, is an unfortunate (and

uncontrolled) pattern in this case, adding layer upon layer of argument and confusion.

(besides Alliacense, addressed above), and (3) three clawed-back documents provided to Coda’s

expert. (Doc. No. 169 at 6478–79.) In a separate filing, Goodyear also objects to the Magistrate

Judge’s rulings that Coda had neither waived privilege with respect to the Jackson Excel Notes or

the FH Claim Chart nor shown a substantial need for the information contained therein that cannot

be obtained by other means. (Doc. No. 196 at 6739.)

D. Specific Pending Objections Now Before the Court

As required, the Court now turns to its de novo review of the specific objections raised by

Goodyear.

In Doc. No. 169, Goodyear objects to the Magistrate Judge’s resolution of the following

issues:

(1) whether Coda waived privilege as to all communications and documents shared

with third-party Alliacense Limited, LLC (“Alliacense”), and the extent of Coda’s

subject matter waiver as to those materials;

(2) the extent of Coda’s subject matter waiver as to a legal opinion (the “Brown

Opinion”) for which the Court has already ruled Coda intentionally waived

privilege;

(3) whether Coda is entitled to assert privilege over about 5,500 documents listed in its

privilege logs with which Coda identified no associated attorney or attorney agent;

(4) whether Coda may assert privilege over documents and communications it shared

with third-party potential investors; and

(5) whether three documents provided to Coda’s expert must be produced.

In Doc. No. 196, Goodyear objects to the Magistrate Judge’s resolution of the following

additional issues, which the Court will number consecutively with the above list:

(6) whether Coda waived any work product or other protections over Mr. Jackson’s

Notes by failing to promptly claw them back and failing to take reasonable

precautions to prevent inadvertent disclosure;

(7) whether Coda waived any attorney-client privilege or attorney work product

protection over the FH Claim Chart by sharing it with third parties; and

(8) whether Goodyear has a substantial need for Mr. Jackson’s Notes and the FH Claim

Chart and cannot obtain their substantial equivalents by other means.

The Court will separately address each of these eight issues, although there may be some

overlap among them.

(1) Alliacense Claim Chart II and Documents Shared

Goodyear argues that, because the subject matter of the two Alliacense Claim Charts is the

same,6 Coda waived privilege as to Alliacense Claim Chart II when it voluntarily waived privilege

as to Alliacense Claim Chart I by permitting it to be used as a deposition exhibit and by allowing

substantive questions about it during Frantisek Hrabal’s deposition.

In opposition, Coda does not dispute that the two charts have related subject matter. Rather,

it claims that, “in the spirit of good faith and compromise” (Doc. No. 185 at 6628), Coda agreed

to produce Chart I upon realizing that it was a duplicate of a document Coda had allowed Mr.

Hrabal to be questioned on—on the mistaken belief that it was not privileged (and failing to

succeed in its attempted claw-back). In so doing, Coda emphasized that: (1) the chart did contain

privileged information; (2) privilege was not waived by way of the voluntary production; and, (3)

withdrawal of privilege as to Chart I should not be construed as a broader waiver of privilege over

any other documents. (Doc. No. 127 at 4472–73.) Therefore, Coda argues in opposition to

Goodyear’s objections that it did not waive privilege over Chart II or over the subject matter of

Chart I. (Doc. No. 185 at 6627.)

6 Compare Doc. No. 131-11 (Alliacense Claim Chart I) with Doc. No. 131-7 (Alliacense Claim Chart II), both filed

under seal as are most documents in this case. Goodyear points out that even Coda acknowledged the similar subject

matter when it initially refused to produce Chart II until there was a ruling on Chart I, which Coda believed would be

“instructive” as to whether Chart II should be produced. (Doc. No. 131-6 at 4610–11.) After Coda voluntarily produced

Chart I, it began to argue that the two charts were unrelated. (See Doc. No. 146 at 4781.)

There was no need for the Magistrate Judge to issue any ruling with respect to Alliacense

Claim Chart I given Coda’s voluntary production of the chart. That said, it is clear that Coda, by

allowing the use of Chart I at Hrabal’s deposition and by failing to subsequently take the necessary

steps to protect it, had already waived privilege with respect to Chart I. See Luna Gaming-San

Diego, LLC v. Dorsey & Whitney, LLP, No. 06-cv-2804, 2010 WL 275083, at *5–6 (S.D. Cal. Jan.

13, 2010) (discussing Fed. R. Evid. 502(b) governing disclosure of privileged documents). All of

Coda’s attempted disclaimers regarding not waiving privilege and/or limiting the scope when it

subsequently voluntarily produced the Chart are unavailing.

The Magistrate Judge’s denial of Goodyear’s request for production of Chart II is not

explained in her Minute Order and so there is no basis upon which this Court can review the

decision. As such, the Court has independently reviewed the two charts contained in Doc. No. 131

and concludes that, although they are formatted differently, they do address the same subject

matter—namely, the scope and content of Coda’s patent filings and their applicability to

Goodyear’s AMT tire designs. Further, although Coda denies in this litigation that these ideas were

previously published (even though they were admittedly shared with numerous potential

investors), in these documents, Coda arguably admits that its published patent documents describe

and even claim the same ideas that Coda now asserts are trade secrets. As a result, Coda’s waiver

of privilege as to the Alliacense Claim Chart I extends to Alliacense Claim Chart II. Luna Gaming,

2010 WL 275083, at *7 (finding that the privilege over four documents—two used at depositions

and in court filings, and two never used but having related subject matter—was waived); see also

In re United Shore Fin. Servs., LLC, No. 17-2280, 2018 WL 2283893, at *2 (6th Cir. Jan. 3, 2018)

(“Litigants . . . cannot use the privilege as ‘a shield and a sword.’”) (quoting In re Lott, 424 F.3d

446, 454 (6th Cir. 2005)). “‘Thus, the privilege may be implicitly waived when [a party] asserts a

claim that in fairness requires examination of the protected communications.’” Id. (quoting United

States v. Bilzerian, 926 F.2d 1285, 1292 (2d Cir. 1991)).

Coda must produce Alliacense Claim Chart II. To that extent, Goodyear’s objection is

sustained.

Goodyear also argues that Coda failed to prove that it shared a common legal interest with

Alliacense that would have protected its disclosure to Alliacense of various privileged documents.

(See Doc. No. 169 at 6474–76, citing cases.)

As near as the Court can tell, the “other” documents Goodyear claims entitlement to refers

to the thirty communications with Alliacense that were initially withheld by Coda. (See Doc. No.

103 at 2852 (referencing five documents) and note 4 (referencing an additional twenty-five).) It

appears that, of these, only one—the Alliacense Claim Chart II—is still being withheld and has

been addressed above.

The Court is unable to ascertain what Goodyear refers to when claiming that Order No.

139 failed to address “other Alliacense-related documents,” and the Magistrate Judge’s decision

sheds no light on this issue. All but one of the documents Goodyear’s First Notice sought have

already been produced (or have been ordered produced). Goodyear’s instant objections identify no

additional documents and, therefore, have no underlying substance.

This portion of Goodyear’s objections to the Magistrate Judge’s Orders is overruled.

(2) Scope of Coda’s Subject Matter Waiver

This portion of the objections seems to refer to Goodyear’s assertion, raised in its First

Notice reply brief, that any waiver of privilege by Coda (due to its having disclosed certain

documents to potential third-party investors) would extend to all documents involving the same

subject matter as the Brown Opinion and the Alliacense documents. (See Doc. No. 131 at 4540.)

Goodyear argues that the Magistrate Judge’s Orders failed to address this.

Once again, although setting forth case law that Goodyear believes is relevant to the issue,

the objections fail to identify what documents Goodyear seeks (in addition to those already

obtained or ordered), merely stating in conclusory fashion: “Having intentionally waived

protection for the Brown Opinion and the First Alliacense Claim Chart, Coda must produce its

other communications and documents on the same subject matter.” (Doc. No. 169 at 6477.) Nor

does Goodyear make any effort to identify what that purportedly waived “subject matter” is.

Coda has already produced most of the documents it originally withheld under a claim of

privilege, including the Alliacense Claim Chart I, and it has been ordered to produce the Brown

Opinion and the Alliacense Claim Chart II. The Court is unable to ascertain any additional

documents that fall into the category of the “same subject matter” and Goodyear’s objections shed

no further light.

Goodyear’s objection relating to subject matter waiver is overruled.

(3) Abuse of Privilege Logs

In Section III of its Second Notice, Goodyear argued that “Coda has overused privilege

and work product protections[]” by “claim[ing] that nearly 25% of all of its pre-lawsuit documents

included attorney advice or work product.” (Doc. No. 110 at 2936.) Goodyear also cataloged

“[o]ther facts [that] confirm that Coda has recklessly failed to take reasonable precautions in

reviewing, logging, and producing its documents” and that “show that Coda’s assertions of

privilege and work product are overly broad and arbitrary.” (Id. at 2936–37.) To underscore that

point, Goodyear supplied a 1255-page compilation of Coda’s privilege logs as an exhibit to its

Second Notice. (See Doc. No. 110-9.)

Goodyear quoted Fed. R. Civ. P. 26(b)(5)(A) for the proposition that,

when a party withholds information otherwise discoverable by claiming that the

information is privileged … the party must: (i) expressly make the claim; and (ii)

describe the nature of the documents … in a manner that …will enable other parties

to assess the claim.

(Doc. No. 110 at 2937.) Goodyear claimed that Coda has failed to meet the threshold burden of

establishing privilege, at the very least with respect to all the documents in its log for which no

attorney is identified, and/or has waived any privilege by virtue of its recklessness in both

indiscriminately claiming privilege as to an extraordinary number of documents and in failing to

exhibit any urgency with respect to attempts to claw back documents flagged by Goodyear as

possibly having been inadvertently produced by Coda. (Id.)

Goodyear now objects to the Magistrate Judge’s cursory denial of its requests in Section

III of its Second Notice, again arguing that Coda may not claim privilege or work-product for

documents without identifying an attorney as a sender or recipient. (Doc. No. 169 at 6479.) In

response, Coda correctly asserts that it is well-settled law that the attorney-client privilege does

not require an attorney to have authored or received the document to maintain the privilege, that

Goodyear’s own authority recognizes this principle, and that Goodyear itself applied the principle

to its own log. (Doc. No. 185 at 6634–35, citing cases.)

Goodyear also asserts that Coda has failed to meet its substantial burden of proving that it

is entitled to privilege and work product protections. (Doc. No. 169 at 6481.) But, as properly

pointed out by Coda, the Magistrate Judge issued her ruling without requiring Coda to respond to

Goodyear’s arguments. (Doc. No. 185 at 6634, n.6.)

Coda claims it is not surprising that the Magistrate Judge rejected Goodyear’s “omnibus

waiver argument” given that it failed to present “‘sufficient evidence upon which a reasonable

person may find that the privilege has been waived.’” (Id., quoting Shumaker, Loop & Kendrick,

LLP v. Zaremba, 403 B.R. 480, 484 (N.D. Ohio 2009).) Coda argues that Goodyear’s conclusory

and unsupported arguments regarding a total waiver of privilege did not meet this standard. (Id.)

Although the Magistrate Judge’s Order includes nothing substantial for review, since

Goodyear’s primary argument—that all documents not attributed to an attorney are unprotected

by either work-product or privilege—is not supported by the case law, Goodyear fails to meet its

heavy burden of showing that the Magistrate Judge’s ruling, though cursory, was clearly

erroneous.7

This objection is overruled.

(4) Documents Shared With “Potential Investors” (Other than Alliacense)

Goodyear objects to the denial by the Magistrate Judge of its request that Coda be ordered

to produce the estimated 200 documents in its privilege log that are described as having been

shared with at least twenty-eight different “potential investors[,]” as well as at least another 600

documents involving Dan Jackson as a third-party potential investor. (Doc. No. 169 at 6480.)

Goodyear argues that, since the Court has already determined that “by sharing the Brown Opinion

with potential investor Dan Jackson, Coda cannot properly claim privilege over [it][,]” (id., quoting

Doc. No. 139), Coda has “likewise waived by sharing privileged communications with other

potential investors as part of Coda’s sales pitch to bring them in as equity investors—a commercial,

not legal, interest.” (Id., citing Libbey Glass, Inc. v. Oneida, Ltd., 197 F.R.D. 342, 348 (N.D. Ohio

1999) (adopting the “narrower view” in which “the parties must have ‘a common legal, as opposed

to commercial, interest’” and “more than ‘merely concurrent legal interests’”) (emphases in

original) (further citations omitted).)

7 Goodyear’s argument with respect to its substantial need for this discovery, which more particularly addresses only

the Jackson Excel Notes and the FH Claim chart, is addressed below.

In opposition, Coda argues that Goodyear ignores the record in challenging the Magistrate

Judge’s ruling. In particular, in its briefing on the issue, Coda had pointed specifically to excerpts

of Jackson’s deposition where it was established that Jackson had created the relevant documents

at the direction of counsel in November 2015, after this lawsuit was filed and while Goodyear’s

motion to dismiss was pending. (Doc. No. 199 at 6767, citing record documents.) At the time,

Jackson was a consultant to Coda (pursuant to a consulting agreement under which Jackson agreed

to advise and assist in protection of Coda’s intellectual property) and was already a substantial

investor in Coda. (Id.) Counsel also assisted Jackson in the production of some of the documents

Goodyear seeks. (Id. at 6767–68.)

The Magistrate Judge conducted an in camera review of the relevant documents and,

thereafter, accepted Coda’s position with respect to their protection by privilege and/or work-

product. This Court finds no clear error in that ruling.

Accordingly, Goodyear’s objection with respect to the Magistrate Judge’s ruling as to these

particular documents is overruled.

(5) Clawed-Back Documents Shared With Expert

Goodyear notes in its objections that, on January 29, 2020, it notified Coda of a potential

inadvertent production of 30 documents, three of which Goodyear seeks here: the “Master IP

Presentation,” the “'586 Co-Invention Discussion,” and the “DPJ Patents Review.” (Doc. No. 169

at 6482, citing Doc. No. 110-2; Doc. No. 144.) Coda clawed these documents back in August 2020,

and Goodyear argues that the belatedness of this claw-back operated as a waiver. (Id.) According

to Goodyear, Coda further waived protection by providing these documents to its expert, Dr.

Coughlin, who reviewed them. (Id. at 6482–83, citing Reg’l Airport Auth. of Louisville v. LFG,

LLC, 460 F.3d 697, 717 (6th Cir. 2006) (citing cases for the proposition that Rule 26 requires

disclosure of all documents, including attorney opinion work product, given to testifying experts).)

Although Coda’s opposition does not appear to address these three documents specifically,

Coda is correct that, after the 2010 amendments to Rule 26, there is no longer a bright-line rule

mandating disclosure of all documents given to testifying experts. See, e.g., Picken v. Louisville

Ladder, Inc., Case No. 11-13044, 2013 WL 12182395, at *2 (E.D. Mich. Sept. 26, 2013). The

controlling law cited by the Magistrate Judge’s ruling relating to another document requires that

the key inquiry is whether the expert “considered” the inadvertently provided document in forming

an opinion. (Doc. No. 199 at 6775, citing Doc. No. 190 at 6672.8) If the expert never read,

reviewed, or considered the inadvertently provided document, there is no waiver, and disclosure

is not required. (Id.)

Goodyear has not established that any expert “read, reviewed, or considered” the relevant

documents.

Finding no clear error in the Magistrate Judge’s ruling, the Court overrules Goodyear’s

objection with respect to these three documents.

(6), (7) and (8) The Jackson Excel Notes, the FH Claim Chart, and Substantial Need

Goodyear argues that, “‘[b]ecause work product protection may hinder an investigation

into the true facts, it is narrowly construed.’” (Doc. No. 196 at 6748, quoting Clear Cast Grp., Inc.

v. Ritrama, Inc., No. 1:09-cv-169, 2011 WL 13334451, at *6 (N.D. Ohio Sept. 15, 2011 (collecting

cases).) “‘The work product doctrine does not protect from disclosure the underlying facts known

8 The Magistrate Judge correctly quoted from the 2010 Advisory Committee note indicating that “[t]he refocus [of the

Rule] on ‘facts or data’ is meant to limit disclosure to material of a factual nature by excluding theories or mental

impressions of counsel[,]” while also intending that “‘facts or data’ be interpreted broadly to require disclosure of any

material considered by the expert, from whatever source, that contains factual ingredients.”

to the party or her counsel, even if acquired in anticipation of litigation.’” (Id., quoting Clear Cast

Grp.) Goodyear argues that the Magistrate Judge’s in camera review of the documents showed

that they contain purely factual information. (Id. at 6748–49, listing the particular facts.)

Goodyear further argues that Coda has failed to even try to show that anything in either of

these documents reflects an “‘attorney’s mental impressions, opinions, conclusions, judgments or

legal theories.’” (Id. at 6749, quoting In re Antitrust Grand Jury, 805 F.2d 155, 163 (6th Cir.

1986).) According to Goodyear, Coda has taken an “all or nothing” approach without proving the

documents are entitled to protection.

Moreover, and importantly, Goodyear argues that both of these documents are unique

impeachment evidence for which Goodyear has a substantial need. “‘Substantial need’ requires a

showing that the materials sought bear on a material fact at issue and the ability of the discovering

party to prepare its case.” (Id. at 6749–50, citing Linetsky v. City of Solon, No. 1:16-cv-52, 2016

WL 5402615, at *3–4 (N.D. Ohio Sept. 28, 2016) (substantial need for material that is “highly

relevant” to a “pivotal issue”); Mantell v. Health Prof. Ltd., No. 5:11-cv-1034, 2012 WL

12892199, at * 2 (N.D. Ohio Feb. 3, 2012) (substantial need for notes which “include recordings

of conversations held much closer in time to the event than any discovery depositions” and noting

it is “possible that the notes may also contain party admissions”).)

Following an in camera inspection, the Magistrate Judge concluded that the Jackson Excel

Notes were work product “as they were prepared at the direction of counsel in anticipation of

litigation[.]” (Doc. No. 178 at 6581.) Pointing out that, under Rule 26(b)(3), work-product

documents may be discovered only if they are otherwise discoverable under Rule 26(b)(1) and the

party shows that it has substantial need for the materials to prepare its case and cannot, without

undue hardship, obtain their substantial equivalent by other means, the Magistrate Judge concluded

that the first requirement was not met because the Jackson Excel Notes are protected by attorney-

client privilege. The Magistrate Judge further found no waiver by Coda because she credited as

“truthful” Coda’s assertion that it believed it had responded to Goodyear’s January 2020 email

warning of a possible inadvertent production by Coda. (Id.)

The Magistrate Judge also concluded that the FH Claim Chart was work product and that

“Rule 26(b)(3) was not met because Goodyear has already been supplied the underlying

discoverable facts by other means and therefore does not have a substantial need.” (Id. at 6582.)

The Court concludes that the Magistrate Judge’s findings with respect to substantial need

are clearly erroneous. First, even assuming that the Jackson Excel Notes are work-product, the

Court perceives no reason for assigning attorney-client privilege to the Notes and the Magistrate

Judge’s Order throws no specific light on this conclusion. Therefore the Court rejects as clearly

erroneous the finding that the Jackson Excel Notes are not otherwise discoverable. In addition, the

Court rejects as clearly erroneous the finding that Goodyear has been supplied by other means the

underlying discoverable facts in the FH Claim Chart; neither the Magistrate Judge nor Coda give

any support for this finding.

Rather, the Court finds compelling the following very specific arguments made by

Goodyear regarding its substantial need for these two documents:

(1) they are the only documentary evidence of what Mr. Hrabal recalls (and does

not recall) saying to Goodyear in 2009; (2) they are the only internal Coda

documents identifying any alleged trade secrets; (3) they were created at a time

closer to the events in question; and (4) they are unique impeachment evidence.

(Doc. No. 196 at 6751.)

As pointed out by Goodyear, Coda has always contended that its alleged trade secrets were

orally disclosed to Goodyear during two critical meetings in 2009. In resolving an earlier discovery

dispute in this case, this Court ruled, over Coda’s objection:

Under the peculiar circumstances of this case, where the alleged disclosure of trade

secrets was entirely oral, the danger of plaintiffs “molding” their claims by way of

subsequent supplementation of their original recollection of those two 2009

conversations is of particular concern. Plaintiffs claim they told defendants their

trade secrets and defendants thereafter misappropriated them. Under that scenario,

it is entirely reasonable for defendants to request, by way of Interrogatory No. 1

[asking Coda to set forth in detail everything that was said during the two 2009

meetings, as best that Coda could recall], that plaintiffs supply a “closed” recital of

their recollection of what was orally imparted in the two meetings of limited

duration in 2009.

(Doc. No. 82 at 2671.) Goodyear argues that Coda’s “closed” response to Interrogatory No. 19 is

entirely at odds with the Jackson Excel Notes10 and the FH Claim Chart,11 and there is no other

reliable source for such impeachment evidence. (Doc. No. 196 at 6751.) Goodyear’s position is

correct in the particular context of this case, the underlying factual allegations, the case law, and

the federal rules regarding discovery.

9 A copy of Coda’s response can be found at Doc. No. 204-1, beginning at page ID# 6854.

10 For example, in a letter to Coda’s counsel from Goodyear’s counsel dated July 10, 2020 wherein Goodyear disputed

Coda’s attempted belated claw-back of the Jackson Excel Notes, Goodyear identifies several inconsistencies and

unique impeachment information as follows:

Mr. Jackson’s Notes memorialize facts concerning Coda’s alleged trade secrets as of

November 2015. Generally, Mr. Jackson’s Notes record facts relating to whether Mr. Hrabal

(Coda’s C.E.O.) recalled disclosing alleged trade secrets to Goodyear, how Goodyear allegedly used

them, and public disclosure issues associated with each of them. Mr. Jackson’s Notes also reflect

his interview of Mr. Hrabal concerning what Mr. Hrabal could recall of the two meetings with

Goodyear in 2009, and state that Mr. Hrabal could not recall whether he discussed with Goodyear

several of Coda’s alleged trade secrets. Mr. Jackson divided Coda’s alleged trade secrets into two

categories: those for which Coda had “some hope” of arguing secrecy and those that were almost

certainly published by Coda. The substance of this document impeaches Coda’s claims in this case,

directly contradicts Coda’s interrogatory responses regarding what Mr. Hrabal recalled disclosing

to Goodyear, and suggests that Coda brought and maintains its trade secrets claims against Goodyear

in bad faith.

(Doc. No. 110-1 at 2942–43.)

11 In the same letter cited in n. 10, Goodyear states in relevant part as to the FH Claim Chart: “The metadata in the

document produced to Goodyear indicated that its author was Frantisek Hrabal and that its creation date was in

September 2013. The FH Claim Chart generally analyzes the claims of certain Goodyear patents at issue in this case

vis-à-vis Coda’s prior patent filings and other public disclosures. The document substantially impeaches Coda’s claims

that Goodyear’s patents disclose Coda’s alleged trade secrets.” (Doc. No. 110-1 at 2944.)

Goodyear’s objections to the Magistrate Judge’s discovery orders with respect to the

Jackson Excel Notes and the FH Claim Chart are sustained. Both documents must be produced by

Coda.

iI. Conclusion

For the reasons set forth herein, Goodyear’s objections (Doc. No. 169 and 196) in so far as

they relate to its discovery requests in Doc. No. 103 and Doc. No. 110, as supplemented by Doc.

No. 144, are overruled in part and sustained in part.

In particular, all objections are overruled except as to the Alliacense Chart II (for which

privilege was waived) and the Jackson Excel Notes and FH Claim Chart (for which production is

warranted under the “substantial need”’ doctrine).

IT IS SO ORDERED.

Dated: February 4, 2021 2

HONORABLE SARA LIOI

UNITED STATES DISTRICT JUDGE

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