Lexington Luminance LLC v. Feit Electric Company, Inc Case No. CV 18-10513-PSG (KSx) United States District Court, C.D. California Filed June 12, 2020 Counsel Uleses Columbus Henderson, Jr, One LLP, Beverly Hills, CA, Robert David Katz, Pro Hac Vice, Katz PLLC, Dallas, TX, for Plaintiffs. Judy Man-Ling Lam, Maynard Cooper and Gale LLP, Los Angeles, CA, Christopher J. Harnett, Pro Hac Vice, John M. Hintz, Maynard Cooper and Gale PC, New York, NY, for Defendants. Stevenson, Karen L., United States Magistrate Judge Proceedings: (IN CHAMBERS) ORDER RE: FEIT MOTION TO COMPEL [DKT No. 94] *1 Before the Court for decision is Defendant Feit Electric Company, Inc.'s (“Defendant” or “Feit”) Motion to Compel, filed on April 20, 2020 in the joint stipulation format pursuant to Local Rule 37-2 (the “Motion”). (Dkt. No. 94.) On May 15, 2020, the Court deemed the Motion suitable for decision without oral argument and took the matter under submission. (Dt. No. 111.) For the reasons outlined below the Motion is GRANTED in part and DENIED in part. RELEVANT BACKGROUND I. The Allegations in the Complaint Plaintiff Lexington Luminance LLC (“Plaintiff” or “Lexington”) commenced this patent infringement action on December 19, 2018. (Dkt. No. 1.) Lexington filed its First Amended Complaint for Patent Infringement (“FAC”) on May 13, 2019. (Dkt. No. 38.) The operative pleading alleges that, by assignment, Lexington is “the owner of all right, title, and interest” in and to U.S. Patent No. 6,936,851 B2, entitled “Semiconductor Light-Emitting Device and Method for Manufacturing the Same,” issued on August 30, 2005 (“the ‘851 Patent.”)[1] (FAC ¶ 7.) Plaintiff alleges that Defendant has infringed and continues to infringe “one or more of the claims of the ‘851 Patent ... by making, using, offering for sale, selling, and/or importing lighting productions and other electronic devices including forty-four (44) different FEIT Electronic LED light bulb products and “other similar products, which perform substantial the same function as the devices embodied in one or more claims of the ‘851 Patent in substantially the same way to achieve the same result.” (Id. at ¶ 12.) The FAC lists each of the 44 allegedly infringing Feit products by its product description and unique SKU number. (Id.) Lexington collectively identifies these products as the “Accused Products.” (Id. at ¶ 13.) According to the FAC, the Accused Products “use Light-Emitting Diodes (‘LEDs’) that infringe one or more claims of the ‘851 Patent[.]” (Id. at ¶ 14.) Plaintiff further alleges that “[t]he LEDs used in the Accused Products are semiconductor light-emitting devices.” (Id. at ¶ 16 (emphasis in original)). The FAC also incorporates color photographs depicting: • “the LEDs found inside of the exemplary Feit Electric A19 6W 450 Lumen Medium-Base Non-Dimmable LED Bulb 4PK A450/827/10KLED/4 SKU 46665645” (id. at ¶ 17); • “the LED chip inside, showing the electrode pattern of the LEDs found inside of the exemplary Feit Electric A19 6W 450 Lumen Medium-Base Non-Dimmable LED Bulb 4PK A450/827/10KLED/4 SKU 46665645” (id. at ¶ 18); and • “a scanning electron microscope (SEM) image of LED cross-section for the exemplary Feit Electric A19 6W 450 Lumen Medium-Base Non-Dimmable LED Bulb 4PK A450/827/10KLED/4 SKU 46665645” (id. at 19). The FAC explains that “[t]he LEDs used in the Accused Products contain a substrate” with a “textured district defined on the surface of said substrate comprising a plurality of etched trenches[.]” (Id. at 21.) Lexington alleges that “[t]he LEDs used in the Accused Products use a gallium nitride first layer and includes as an example, the SEM image of the LED cross-section identifying the location of the energy-dispersive X-ray (EDX) measurement of the first layer used in one of the Accused Products.” (Id. at ¶ 23.) The FAC states that “[t]he EDX analysis of the first layer [of the substrate] confirms that the first layer used in the LEDs found in one of the Accused Products” is comprised of gallium nitride and includes a graph reflecting the results of the EDX analysis. (Id. at ¶ 24.) Lexington also incorporates in the FAC “the SEM image of the LED cross-section identifying the location of the [EDX] measurement of the substrate use in the LEDs found in” another of the Accused Products. (Id. at ¶ 25.) *2 Lexington alleges that the Accused Products are not licensed under the ‘851 Patent and seeks to recover damages sustained as a result of Defendant's infringing conduct. (Id. at ¶¶ 30-31.) The FAC also alleges willful infringement. (Id. at ¶¶ 32-35.) The instant Motion concerns Defendant's Requests for Production Nos. 45 and 46, which demand that Lexington disclose “all documents related to or comprising” the SEM photographs and EDX analyses, as alleged in the FAC, for all 44 of the Accused Products. II. Disputed Discovery Requests Feit's RFP No. 45 All documents related to or comprising scanning electron microscope photographs or images of any Feit Electric product listed in Paragraph 12 of Plaintiff's “First Amended Complaint for Patent Infringement” dated May 13, 2019, filed in the Litigation (Docket Entry #38). Lexington's Objections and Response to RFP No. 45 In addition to the General Objections stated above, Lexington objects to this request, and specifically to the request for “All documents related to or comprising scanning electron microscope photographs or images of the Feit Electric product” as overly broad, unduly burdensome, seeks documents not relevant to a claim or defense asserted in this action, not reasonably calculated to lead to the discovery of admissible evidence, and is not proportional to the needs of the case. In particular, the request to produce “all documents related to or comprising” is not proportional to the needs of this case, considering the importance of the discovery in resolving any issues, the parties' resources, and whether the burden or expense of the requested discovery outweighs its likely benefit. Further, certain responsive material described in this request appears to be contained in the referenced complaint itself. The documents are publicly-filed, and are equally available to defendant. Defendant's burden to obtain the information is substantially the same as Lexington's. Lexington further objects to this request to the extent that it seeks documents protected from disclosure by the attorney client privilege or the attorney work-product doctrine. Lexington further objects to this request on the basis that it seeks information protected from disclosure by Fed. R. Civ. P. 26(b)(3)(A) or 26(b)(4). To the extent Lexington has retained or specially employed an expert in anticipation of litigation or to prepare for trial and who is not expected to be called as a witness at trial, all such information is not discoverable. Accordingly, Lexington will not produce documents in response to this request that are not relevant to this litigation, not related to this litigation, protected from disclosure by Fed. R. Civ. P. 26(b)(3)(A) or 26(b)(4), or equally available to Defendant. Otherwise, Lexington will produce or has produced responsive and relevant non-privileged and non-work-product-protected documents within its possession, custody, or control that are located after a reasonably diligent search. Feit's RFP No. 46 All documents related to or comprising energy-dispersive X-ray analysis or testing of any Feit Electric product listed in Paragraph 12 of Plaintiff's “First Amended Complaint for Patent Infringement” dated May 13, 2019, filed in the Litigation (Docket Entry #38). *3 Lexington's Objections and Response to RFP No. 46 Lexington objects to the terms “analysis” and “testing” as vague and ambiguous. In addition to the General Objections stated above, Lexington objects to this request, and specifically to the request for “All documents related to or comprising energy-dispersive X-ray analysis or testing of the Feit Electric product” as overly broad, unduly burdensome, seeks documents not relevant to a claim or defense asserted in this action, not reasonably calculated to lead to the discovery of admissible evidence, and is not proportional to the needs of the case. In particular, the request to produce “all documents related to or comprising” is not proportional to the needs of this case, considering the importance of the discovery in resolving any issues, the parties' resources, and whether the burden or expense of the requested discovery outweighs its likely benefit. Further, certain responsive material described in this request appears to be contained in the referenced complaint itself. The documents are publicly-filed, and are equally available to defendant. Defendant's burden to obtain the information is substantially the same as Lexington's. Lexington further objects to this request to the extent that it seeks documents protected from disclosure by the attorney client privilege or the attorney work-product doctrine. Lexington further objects to this request on the basis that it seeks information protected from disclosure by Fed. R. Civ. P. 26(b)(3)(A) or 26(b)(4). To the extent Lexington has retained or specially employed an expert in anticipation of litigation or to prepare for trial and who is not expected to be called as a witness at trial, all such information is not discoverable. Accordingly, Lexington will not produce documents in response to this request that are not relevant to this litigation, not related to this litigation, protected from disclosure by Fed. R. Civ. P. 26(b)(3)(A) or 26(b)(4), or equally available to Defendant. Otherwise, Lexington will produce or has produced responsive and relevant non-privileged and non-work-product-protected documents within its possession, custody, or control that are located after a reasonably diligent search. III. The Motion A. Feit's Positions[2] Feit describes its business as primarily “buying lighting fixtures and light bulbs from contract manufacturers in Asia for resale in the United States.” (Joint Stipulation (“Joint Stip.”) at 2.) Feit represents that every light bulb it purchases has a “numerical ‘lot code’ assigned by the factory that indicates the factory and the month and year of manufacture of the light bulb” and while “its factories can use those lot codes to identify the LED packages that the factory uses in specific models of Feit Electric's products ... Feit Electric cannot.” (Id. at 2-3.) Feit also states that it “does not maintain a database that matches lot codes to any particular product, LED package, or LED die.” (Id. at 3.) Against this backdrop, Feit argues that Lexington should be compelled to disclose the pre-litigation SEM photographs and EDX analyses that Lexington's non-testifying expert prepared because Lexington's objections to disclosure are improper and exceptional circumstances warrant an order requiring these disclosures. *4 Feit points out that the FAC identifies 44 Feit LEC light bulbs by name and model number as the bases for Lexington's infringement allegations and the FAC contains SEM photographs and the results of EDX measurements “of only one of the forty-four Accused Products.” (Id. at 8.) Feit insists Lexington “had to have tested all forty-four Accused Products if Lexington conducted a proper presuit investigation under Fed. R. Civ. P. 11[.]” (Id.) Feit also notes that “[o]n April 3, Lexington served infringement contentions in which Lexington provided what appear to be SEM photographs and EDX measurements for sixteen of the forty-four Accused Products.” (Id.) Feit maintains that because Lexington has put the SEM photographs and EDX analysis for some of the Accused Products “at issue” by disclosing them in the FAC and in infringement contentions, Lexington should now be compelled to produce all documents related to the SEM photographs and/or EDX measurements for the remaining twenty-eight Accused Products in response to RFP Nos. 45 and 46. (Id.) Feit argues that Lexington's objections that the RFPs are overbroad and unduly burdensome are without merit because the “requests relate only to the forty-four Accused Products at issue in this lawsuit and require Lexington to produce documents that are of the same type as documents Lexington has affirmatively used in its Amended Complaint and its infringement contentions.” (Id. at 9.) Feit further argues that Lexington's objection that the requests seek documents that are not relevant should be overruled because the materials are plainly relevant given that some SEM photographs and EDX measurements are included in the FAC and disclosed in Lexington's infringement contentions. (Id.) Feit also rejects Lexington's contention that because some of the responsive information is contained in the complaint, it is, therefore, equally available to the parties. (Id.) Feit also challenges Lexington's objections based on assertions of attorney client privilege and/or the work product doctrine. (Id. at 10.) Feit argues that the SEM photographs and EDX measurements cannot be subject to attorney-client privilege “because they are not communications to or from a client (Lexington) for the purpose of obtaining or receiving legal advice.” (Id. at 11.) Feit urges that even if the documents are privileged or work product, “Lexington waived any claim of privilege or work product immunity by publicly disclosing the SEM photographs and EDX measurements for one Accused Product in the Amended Complaint and by producing SEM photographs as part of Lexington's infringement contentions.” (Id.) Thus, Feit contends, Lexington waived any privilege or work product immunity by its voluntary disclosure of the materials at issue. (Id.) Feit argues that the “at issue waiver” doctrine forms a separate basis for finding Lexington waived any claim of privilege or work product immunity for the SEM photographs and EDX measurements. (Id. at 12.) According to Feit, by disclosing the information in the complaint and in its infringement contentions, Lexington relied upon the information, and “[a]llowing Lexington to assert privilege and work product as a ‘sword’ and a ‘shield’ would deny Feit Electric information that is vital to its defense – apparent actual scientific measurements of the Accused Products.” (Id. at 13.) Finally, Feit contends that an objection based on the fact that the information was generated by Lexington's non-testifying expert in anticipation of litigation should be overruled. (Id. at 14.) It argues that the materials may be discovered based on exceptions expressly provided in Federal Rule of Civil Procedure 26(b)(3)(A), where a party shows “substantial need for the materials to prepare its case and cannot, without undue hardship, obtain their substantial equivalent by other means.” (Id. (citing FED. R. CIV. P. 26(b)(3)(A)).) Feit maintains that it cannot conduct its own third-party analysis to produce equivalent SEM photographs and EDX measurements of the LED dies inside the Accused Products without substantial hardship because it “could not be certain that it will find each Accused Product having the same lot code that Lexington has in its possession and on which Lexington is basing its infringement allegations.” (Id. at 15.) Feit claims that since it “does not know if the LED dies used in a given LED package have the same structure,” the only way to make an “apples-to-apples” comparison with the data Lexington relies upon, “is for Lexington to provide the SEM photographs and EDX measurements that it has for each Accused Product.” (Id. at 15-16.) *5 In response to Lexington's objection that Rule 26(b)(4) precludes the discovery of the SEM photographs and EDX analyses as material prepared by a non-testifying expert, Feit asserts that “the rule does not bar discovery through requests for documents.” (Id. at 16.) B. Lexington's Opposition As an initial matter, Lexington responds that its relevancy objections should be sustained. Lexington emphasizes that to the extent Feit's requests seek “all documents related to” the SEM photographs and not just the photographs themselves, the requests are overbroad and seek information not relevant to the claims and defense at issue in the case. (Joint Stip. at 18.) Specifically, Lexington points out that Request No. 45, as drafted, “would include numerous documents having no relevance to the case, potentially including, for example, correspondence of any kind with any and all consulting experts that were contacted regarding any of the analyses. Such communication would identify Lexington's non-testifying expert witnesses ... [and] the opinions and identities of Lexington's non-testifying experts are not relevant to the claims and defenses at issue in the case.” (Id.) As to information attached to the complaint or infringement contentions being “equally available to both parties,” Lexington notes that Rule 26(b)(2)(C) permits a party to object to discovery demands that seek information that can be obtained from “some other source that is more convenient.” (Id. at 19-20.) Next, Lexington argues that the persons who performed the scanning electron microscope spectroscopy that produced the SEM photographs are non-testifying consulting experts retained by Lexington's counsel “to perform analysis in anticipation of litigation against Feit.” (Id. at 19.) Lexington also emphasizes that the SEM “images at issue have not been used by a testifying expert as the basis for an expert opinion and are therefore not ‘at issue’ in the case.” (Id.) Lexington maintains that because RFP No. 45 demands not only the “actual scanning electron microscope images,” but communications between Lexington counsel and the non-testifying consultant, and the identity of the non-testifying consultants, the request is impermissibly overbroad. (Id. at 20-21.) Lexington also contends that the information sought is shielded from disclosure under the attorney client-privilege because the SEM photographs “were undisputedly prepared in anticipation of the instant litigation and for the purpose of pursuing the litigation.” (Id. at 22.) Lexington points out that to the extent Feit bases its waiver argument on the disclosures in the FAC and infringement contentions, even if applicable, Feit's argument only applies to the SEM images themselves and not to any communications between Lexington counsel and the non-testifying consultant or the identify of those consultant. (Id.) Lexington emphasizes that the SEM images and EDX analyses are protected work product and contrary to Feit's assertion, the protections afforded to materials prepared by non-testifying experts under Rule 26(b)(4)(D) also apply to document requests. (Id. at 22-25.) Lexington argues that no waiver—voluntary or otherwise — of any privilege or work product immunity occurred by virtue of disclosure of some of this material in the complaint and infringement contentions because neither the complaint nor the infringement contentions are evidence. (Id. at 26.) Lexington argues that because “sufficient information must be disclosed in a patent infringement complaint to avoid dismissal,” any disclosures in the complaint were not voluntary but required. (Id. at 27.) In addition, Lexington notes that the Standing Patent Rules of presiding District Judge “require Lexington to disclose its infringement contentions” and these “judicially required” disclosures were neither voluntary nor tactical. (Id. at 27.) LEGAL STANDARD *6 Under Rule 26, a party may obtain discovery concerning any nonprivileged matter that is relevant to any party's claim or defense and is proportional to the needs of the case. FED. R. CIV. P. 26(b)(1). As amended in December 2015, Rule 26(b)(1) identifies six factors to be considered when determining if the proportionality requirement has been met, namely, the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to the relevant information, the parties' resources, the importance of the discovery in resolving the issues and whether the burden or expense of the proposed discovery outweighs its likely benefit. Id. Relevant information need not be admissible to be discoverable. Id. Federal Rule of Civil Procedure 37 provides that “[a] party seeking discovery may move for an order compelling an answer, designation, production, or inspection.” FED. R. CIV. P. 37(a)(3). The party seeking to compel production of documents under Rule 34 has the “burden of informing the court why the opposing party's objections are not justified or why the opposing party's responses are deficient.” Best Lockers, LLC v. Am. Locker Grp., Inc., Case. No. SACV 12-403-CJC (ANx), 2013 WL 12131586, at *4 (C.D. Cal. Mar. 27, 2013). District courts have broad discretion in controlling discovery. See Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002). When considering a motion to compel, the Court has similarly broad discretion in determining relevancy for discovery purposes. Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 635 (9th Cir. 2005) (citing Hallet, 296 F.3d at 751). In resolving discovery disputes, the court may exercise its discretion in “determining the relevance of discovery requests, assessing oppressiveness, and weighing those facts in deciding whether discovery should be compelled.” Unilin Beheer B.V. v. NSL Trading Corp, Case No. CV 14-2210-BRO (SSx), 2015 WL 12698382, at *4 (C.D. Cal. Feb. 27, 2015) (citing Favale v. Roman Catholic Diocese of Bridgeport, 235 F.R.D. 553, 558 (D. Conn. 2006) (internal quotation marks omitted)). DISCUSSION I. Relevance and Proportionality A. The SEM Images and EDX Measurements As a threshold issue, the parties dispute the relevance of the information Feit seeks in RFP Nos. 45 and 46. Thus, it is necessary to examine the entire the text of RFPs to identify exactly what information Feit is requesting. RFP No. 45 seeks “All documents related to or comprising scanning electron microscope photographs or images of any Feit Electric product listed in Paragraph 12 of Plaintiff's [FAC].” (Joint Stip. at 5 (emphasis added).) RFP No. 46 uses the same language to request information concerning EDX measurements identified in paragraph 12 of the FAC. (Id. at 37.) As drafted, the RFPs seek not only the actual factual information that comprises the SEM images and EDX analyses but “all documents related to.” Therein lies the rub. The SEM images and EDX measurements for the specific Accused Products are plainly relevant to the allegations of infringement as set forth in the FAC itself. Moreover, because only 44 Accused Products are at issue, and as Feit points out, the scientific characteristics of the LED dies, and the substrates in particular, that evidence the allegedly infringing properties of the Accused Products are not visible to the naked eye, the Court finds that the SEM images and EDX measures conducted on those particular productions are proportionate to the needs of the case given the importance of the issue in this infringement action, the amount in controversy, and the relative resources of the parties. Fed. R. Civ. P. 26(b)(2). But the RFPs on their face seek far more documents than just the SEM photographs and EDX measurements. B. “All Communications” Pertaining to the SEM Images and EDX Measurements are Not Relevant or Proportionate to the Needs of the Case a. Attorney Client Privilege *7 “The attorney-client privilege protects confidential disclosures made by a client to an attorney in order to obtain legal advice, ... as well as an attorney's advice in response to such disclosures.” United States v Chen, 99 F.3d 1495, 1501 (9th Cir. 1996), cert. denied 520 U.S. 1167 (1997). In a federal question case, such as here, federal law also governs the scope of the attorney client privilege. United States v. Zolin, 491 U.S. 554, 562 (1989). The Ninth Circuit applies an eight-part test to determine whether information is covered by the attorney client privilege: (1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) unless the protection is waived. United States v. Ruehle, 583 F.3d 600, 607 (quoting In re Grand Jury Investigation, 975 F.2d 1068, 1071 n. 2 (9th Cir. 1992). “The party asserting the privilege bears the burden of proving each essential element.” Id. (internal citation omitted). To the extent RFP Nos. 45 and 46 seek disclosure of “all documents relating to” the scientific results reflected in the SEM images and EDX measurements, the RFPs are overbroad and seek information not relevant to any claim or defense at issue in the case. The RFPs as drafted plainly include information subject to the absolute protections of the attorney-client privilege. As Lexington properly objects, the RFPs, as written, require disclosure of all communications between Lexington and its non-testifying consultants, and even communications with consultants that were not ultimately engaged to conduct any analysis. In addition to overbreadth and lack of relevance, the “all documents pertaining to” language in RFP Nos. 45 and 46 necessarily encompasses communications between Lexington and its counsel related to the consultants' work in anticipation of filing the instant lawsuit. Any such communications and related documents fall squarely within attorney-client privilege. Thus, Lexington's objections based on attorney-client privilege as to such communications are sustained. Accordingly, Lexington has no obligation to produce any such information that is irrelevant and/or privileged. See Key Tech., Inc. v. Simco/Ramic Corp., 137 F.R.D. 322, 324 (D. Or. 1991) (denying motion to compel responses to document requests that were overbroad and “go beyond [the] relevant information”). Even so, not all of the information sought in RFP Nos. 45 and 46 is shielded by the attorney-client privilege. Feit argues that “[t]he SEM photographs and EDX measurements at issue cannot be privileged because they are not communications to or from a client (Lexington) for the purpose of obtaining or received legal advice.” (Joint Stip. at 11.) The Court agrees. Lexington has not met its burden to establish that scientific information reflected in the SEM images and EDX measurements of the Accused Products are either communications by Lexington to its counsel to seek legal advice or opinions or legal advice of counsel. Nor can they. The SEM images and EDX measurements are factual data that is not subject to the absolute protections of the attorney client privilege. The information sought in RFP Nos. 45 and 46 is properly analyzed based on the conditional protections of the work product doctrine. b. Work Product Doctrine *8 The “work product doctrine” as embodied in Rule 26(b)(3)(A), protects from discovery “documents and tangible things that are prepared in anticipation of litigation or for trial by and for another party or its representative (including the other party's attorney, consultant, surety, indemnitor, insurer, or agent)” but such information may be discoverable subject to Rule 26(b)(4). Fed. R. Civ. P. 26(b)(3)(A); and see Admiral Ins. Co v. U.S. Dist. Court for Dist. of Arizona, 881 F.2d 1486, 1494 (9th Cir. 1989). The Ninth Circuit has emphasized that: The work-product rule is not a privilege but a qualified immunity protecting from discovery documents and tangible things prepared by a party or his representative in anticipation of litigation.... Although the rule affords special protections for work-product that reveals an attorney's mental impressions and opinions, other work-product materials nonetheless may be ordered produced upon an adverse party's demonstration of substantial need or inability to obtain the equivalent without undue hardship. Id. (internal citations omitted.) Insofar as RFP Nos. 45 and 46 seek “all documents pertaining to” the pre-litigation work of Lexington's non-testifying consulting experts and specifically seek the SEM images and EDX measurements obtained through the work of the consulting experts, the RFPs plainly call for disclosure of materials subject to work product protections. See e.g., Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC, 2010 WL 4537002, at *2 (M.D. Pa. 2010) (testing data and related documents patentee relied upon to support is claims of patent infringement protected as work product). But this conclusion alone does not resolve whether Feit is entitled to an order compelling discovery of the SEM images and EDX measurements in particular. II. A Non-Testifying Expert's Work Product is Generally Not Discoverable Rule 26 draws a clear distinction between testifying and non-testifying experts. For any witness who will provide expert testimony pursuant to Federal Rules of Evidence 702, 703 or 705, Rule 26(a)(2) requires that a party disclose the identity of the testifying expert and provide a written report containing a complete statement of all the testifying expert's opinions rendered in the case. FED. R. CIV. P. 26 (a)(2)(B)(i)-(iii). A testifying expert's report must contain any facts or data the expert considered in forming his/her opinion and any exhibits that he/she will use to summarize or support the expert's opinions. Id.[3] By contrast, Rule 26(b)(4)(D) limits the scope of discovery from an expert employed only for trial preparation, providing: Ordinarily, 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. But a party may do so only: (i) as provided in Rule 35(b); or (ii) 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) (emphasis added). Consistent with the rule, the identity and work product of non-testifying experts are not generally discoverable. See Sloan Valve Co. v. Zurn Indus., 2012 WL 5499412, at *3 (N.D. Ill. Nov. 13, 2012) (holding that Rule 26(a)(4)(D) not only protects facts known or opinions held by a consulting expert, but “[e]ven the methodology employed by a consulting expert is off-limits”) (internal citation and quotation marks omitted).[4] *9 Feit argues that despite the limitations of Rule 26(b)(4)(D), the SEM images and EDX measurements are discoverable because: (1) the rule does not bar discovery through document requests; (2) Lexington put its analyses and images produced by its non-testifying expert at issue in the FAC and in its infringement contentions; and (3) exceptional circumstances warrant discovery of those analyses consistent with Rule 26(b)(4)(D)(ii). (Joint Stip. at 4-17.) The Court addresses each of these arguments in turn below. III. Rule 26(b)(4) and Document Requests Feit maintains that “the rule does not bar discovery through request for documents.” (Joint Stip. at 16.) Feit cites no case that supports this proposition directly or that otherwise does not extend the work product protections of Rule 26(b)(4) to the facts and opinions of non-testifying experts solely because that information is sought through document requests. Indeed, the decision that Feit relies upon to claim the rule does not bar discovery from a non-testifying expert through document requests, actually concerned whether a non-testifying computer forensic expert identified in the plaintiff's complaint could be deposed. See Worley v. Avanquest N. Am. Inc., 2013 WL 6576732, at *5 (N.D. Cal. Dec. 13, 2013) (“Avanquest wants to depose the ‘computer forensics expert’ identified in Paragraphs 38-41 of Plaintiffs' First Amended Complaint.”). Furthermore, courts in this circuit have long recognized that even though Rule 26(b)(4) does not explicitly refer to document requests, the rule applies equally “to protect documents sought from non-testifying experts.” U.S. Inspection Servs., Inc. v. NL Engineered Solutions, LLC, 268 F.R.D. 614, 617 n.3 (N.D. Cal. 2010) (collecting cases). Accordingly, Feit's argument that Rule 26(b)(4) does not bar discovery through document requests is without merit. IV. Lexington's Disclosure of the Non-Testifying Expert's SEM Images and EDX Measurements A. Lexington Put SEM Images and EDX Measurements at Issue in the FAC Feit's central argument in its efforts to compel disclosure of the SEM images and EDX measurements is that, even if the documents are subject to either attorney client privilege or the work product doctrine, Lexington waived any such protections by publicly disclosing the factual analyses and conclusions the FAC and in its infringement contentions, thereby putting the non-testifying expert's analyses of the Accused Products “at issue” and waiving any protections from disclosure. (Joint Stip. at 11.) Lexington refutes Feit's contention, arguing that “there should be no credible question that any analysis appearing in Lexington's complaint was prepared in anticipation of litigation.” (Id. at 22.) Lexington contends that the analyses appearing in the FAC were prepared when litigation was reasonably foreseeable and primarily for the purpose of litigation and, therefore, are subject to the protections of the attorney work product doctrine. (Id. (citing Kimberly Clark Worldwide, Inc., 2010 WL 4537002, at *2). Feit offers no argument or evidence to challenge that fact; rather, Feit argues that by putting the SEM photographs and EDX measurements “at issue,” Lexington waived any work product protections. In Worley, like here, the defendant “argue[d] that Plaintiffs have put their experts' investigation into play by making ... factual allegations in their First Amended Complaint ... and thus it has the right to discover information related to those factual allegations.” Worley, 2013 WL 6576732, at *4. The Magistrate Judge, relying on a number of cases that found the use of an expert's declaration in support of motions for summary judgment opened the door to expert discovery, concluded that: *10 The reasoning behind those opinions—that if a party uses a consulting expert's statements, findings, or opinions in a filing, that party has put the expert's statements, finding, or opinions into the judicial arena and the opposing side may take discovery about those statements, findings, or opinions —applies equally in this context, where Plaintiffs very clearly rely upon their expert's investigation to support the claims in their First Amended Complaint. Id. On that basis, in Worley, the court found that “Plaintiffs argument that its expert is just a ‘consulting expert,’ and, at least for right now, is not a ‘testifying expert,’ so they do not have to produce him for deposition is not persuasive.” Id. at *5 (citations omitted). While Worley is not binding on this Court and involved a deposition, its reasoning is persuasive as to Feit's argument that by disclosing SEM images and EDX measurements in the FAC, Lexington put this data “at issue” and thereby waived work product protections for those materials. Here, the FAC specifically alleges that “[t]he LEDs used in the Accused Products use a gallium nitride first layer and includes as an example, the SEM image of the LED cross-section identifying the location of the energy-dispersive X-ray (EDX) measurement of the first layer used in one of the Accused Products.” (FAC at ¶ 23.) Lexington alleges that “[t]he EDX analysis of the first layer [of the substrate] confirms that the first layer used in the LEDs found in one of the Accused Products “is comprised of gallium nitride and includes a graph reflecting the results of the EDX analysis.” (Id. at ¶ 24.) Lexington incorporates in the FAC “the SEM image of the LED cross-section identifying the location of the [EDX] measurement of the substrate used in the LEDs found in” another of the Accused Products. (Id. at ¶ 25.) Despite these precise allegations regarding the SEM photographs and EDX measurements, Lexington relies upon an unpublished order from the Northern District of Texas in Innovative Sonic Limited v. Research in Motion, Ltd. Case No. 3:11-cv-0706-K, Dkt. No. 339 (N.D. Tex Mar. 1, 2010), to argue that Lexington's prelitigation testing results should remain protected by the work product doctrine. (Joint Stip. at 23.) But even if the Innovative Sonic Limited order carried any weight here, the facts as described in that order are readily distinguishable from the circumstance presented in the Motion. In that case, the Northern District of Texas noted that the prelitigation testing results were shared “only with Plaintiff's counsel.” (Id. at 23 (citing Innovative Sonic Ltd., Dkt No. 339 at 4-5, to argue that Lexington's prelitigation testing results should remain protected).) Here, by contrast, the SEM image and EDX measurements for at least one of the Accused Products were not only referenced in the FAC, but attached as exhibits to the FAC and, thus, publicly disclosed. That disclosure put the SEM photographs and EDX measures squarely “at issue” in a judicial arena, and thus, waived the conditional protections of work product immunity. Having found Lexington waived work product immunity for the SEM images and EDX measurements “at issue” in the FAC, the Court must next consider the scope of the waiver. Well settled principles dictate that even where waiver is found, work product immunity is only waived as to the matters actually disclosed. See e.g., Hernandez v. Tanninen, 604 F.3d 1095, 1100 (9th Cir. 2010) (production of notes that were protected work product “constituted waiver of work product privilege only as to that subject”); Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 237 F.R.D. 618, 626 (N.D. Cal. 2006) (disclosures to correct inventorship on patent application waived attorney-client privilege and work product protection as to subject matter of inventorship). *11 Feit concedes that the FAC contains SEM photographs and EDX measurements “of only one of the forty-four Accused Products ... [and] did not contain SEM photographs or EDX measurements of any of the other forty-three Accused Products.” (Joint Stip. at 8.) Feit, however, seeks to compel disclosure of SEM images and EDX measurements for all 44 Accused Products. Feit argues that “Lexington had to have tested all forty-four Accused Products if Lexington conducted a proper pre-suit investigation.” (Id.) Feit notes that Lexington included SEM images and EDX measurements for the one product referenced in the FAC and an additional fifteen Accused Products in its infringement contentions. (Id.) In addition, Feit emphasizes that Lexington made specific reference to the SEM photographs and EDX measurements for the one Accused Product identified in the FAC as “an exemplary Accused Product.” (Id. at 17.) Therefore, Feit contends that Lexington should be compelled to produce SEM photographs and EDX measurements for the remaining 28 of the 44 Accused Productions. (Id.) Consistent with precedent that finds waiver limited to the subject matter of the disclosure that gave rise to the waiver, the Court takes a narrow view of the scope of the work product waiver and does not find a wholesale waiver of Lexington's work product protections. Lexington points out that “Feit's waiver argument does not apply to the entire scope of Feit's request[s], but it is instead directed to [the actual scanning electron microscope images and EDX measurements].” (Joint Stip. at 22.) The Court agrees. Based on the public disclosures in the FAC, the Court concludes that Lexington waived any work product protections for the SEM images and EDX measurements for the 44 Accused Products listed in the FAC, including “Feit Electric A19 6W 450 Lumen Medium-Base Non-Dimmable LED Bulb 4PK A450/827/10KLED/4 SKU 46665645,” as identified in the FAC, which incorporates color photographs depicting: • “the LEDs found inside of the exemplary Feit Electric A19 6W 450 Lumen Medium-Base Non-Dimmable LED Bulb 4PK A450/827/10KLED/4 SKU 46665645” (FAC at ¶ 17); • “the LED chip inside, showing the electrode pattern of the LEDs found inside of the exemplary Feit Electric A19 6W 450 Lumen Medium-Base Non-Dimmable LED Bulb 4PK A450/827/10KLED/4 SKU 46665645” (id. at ¶ 18); and • “a scanning electron microscope (SEM) image of LED cross-section for the exemplary Feit Electric A19 6W 450 Lumen Medium-Base Non-Dimmable LED Bulb 4PK A450/827/10KLED/4 SKU 46665645” (id. at 19). The waiver of work product protection does not, however, extend to any other communications, analyses, methodology, or documents pertaining to the non-testifying expert's pre-litigation testing or any other aspect of his/her engagement for Lexington, including the identity of such non-testifying experts. B. Lexington's Disclosures in its Infringement Contentions Feit also argues that Lexington's public disclosure of SEM photographs and EDX measurements for 16 of the Accused Products in its infringement contentions provides another ground to support finding waiver of work product protections for the SEM images and EDX measurements because Lexington “relied” upon these disclosures. (Joint Stip. at 12.) Lexington responds that providing the information in its infringement contentions did not waive any protections from disclosure for these materials because the infringement contentions, like the complaint, are not evidence. (Id. at 26.) Lexington also maintains that it did not waive any privilege or work product protections because the images included in its infringement contentions were required to “satisfy the minimum requirements of the patent local rules that were adopted by order of the Court in this case.” (Id. at 27.) Thus, Lexington argues, the disclosures were not “voluntary or ‘tactical’ – they were all judicially required.” (Id.) Because the Court has found that Lexington waived work product protections by putting the SEM photographs and EDX measurements at issue in the FAC, the Court need not address the parties' arguments concerning whether disclosures in the infringement contentions form a separate ground for finding waiver. V. Feit Adequately Demonstrates Exceptional Circumstances Warrant Discovery of the SEM Photographs and EDX Measurements for All of the Accused Products *12 Rule 26(b)(4)(D) provides that discovery of non-testifying expert information that is otherwise precluded may be obtained “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)(ii). Feit argues that exceptional circumstances here are sufficient to permit discovery of the SEM images and EDX measurements for the Accused Products because Feit does not have the ability to obtain substantially equivalent information. (Joint Stip. at 15.) Lexington rejects that contention, arguing that Feit “does not explain why it needs Lexington's scanning electron microscope images, let along why they would be so important to rise to the level of exceptional circumstances.” (Id. at 33.) The parties do not dispute that the claimed microscopic structure and/or chemical composition of the LED dies in the LED packages for the Accused Products cannot be determined by visual inspection. (Joint Stip. at 8.) Feit represents, “its factories can use [the manufacturer's] lot codes to identify the LED packages that the factory uses in specific models of Feit Electric's products ... [but] Feit Electric cannot.” (Id. at 2-3.) Feit also states that it “does not maintain a database that matches lot codes to any particular product, LED package, or LED die.” (Id. at 3.) Lexington argues that Feit “is already in possession of Lexington's infringement contentions,” suggesting that the infringement contentions alone should be sufficient. (Id. at 33.) Lexington also contends that Feit representatives have given deposition testimony that suggests they have the ability to identify product SKU and lot numbers through the “Navision” database. (Id. at 35.) But as Feit explains, “the claims of the patent-in-suit relate to microscopic structures on an interior surface of the LEDs and the chemical composition of the substrate inside the LED.” (Id. at 14.) Feit, however, offers several reasons why it cannot obtain the equivalent scientific information itself without undue hardship. (Id.) First, Feit argues it does not own a scanning electron microscope or equipment necessary to analyze “the chemical composition of any of the substrates in the LEDs.” This argument is not persuasive because Feit does not have to conduct this analysis itself, but could, just as Lexington apparently did, retain the services of a qualified consultant to undertake this scientific analysis. Second, and more significantly, Feit argues that it does not itself manufacture light bulbs, but “buy[s] lighting fixtures and light bulbs from contract manufactures in Asia for resale in the United States.” (Joint Stip. at 2.) According to Feit, the manufacturers, not Feit, assign numerical “lot codes” to every light bulb that Feit purchases and Feit does not “maintain a database that matches lot codes to any particular product, LED package, or LED die.” (Id. at 2-3.) Therefore, Feit contends it “could not be certain that it will find each Accused Product having the same lot code that Lexington has in its possession and on which Lexington is basing its infringement allegations. Without being sure that the lot codes of the products inspected by Lexington are the same, there can be no certainty that the LED dies in the LED packages in the products on which Lexington bases its infringement allegations are the same as the ones the Feit Electric would find it its warehouse.” (Joint Stip. at 15.) In opposing the Motion, Lexington points out that Feit proffered no ”declaration by one with personal knowledge that provides any evidence of Feit's alleged burden in obtaining its own scanning electron microscope images.” (Id. at 36.) Lexington complains that Feit offers only the argument of counsel and, on that basis, fails to establish that “Feit lacks an alternative means for it to obtain the substantial equivalent of the data generated by Lexington's consultant ... without undue hardship and without impinging upon Lexington's work product.” (Id.) *13 The Court finds it notable that Feit has not more substantially supported its contentions about the burden of obtaining equivalent information without access to the SEM photographs and EDX measurements. But neither party cites any authority that requires a party to present admissible evidence in order to satisfy its burden when seeking discovery based on the exceptions under Rule 26(b)(4)(D). Besides, the requirements of Rule 11 provide a strong basis to infer that the statements of Feit's counsel explaining Feit's inability to make an “apples-to-apples” comparison of LED products based on its own readily available information are neither frivolous nor misleading. Consequently, the Court finds that, even absent the work product waiver found above, Rule 26(b)(4)(D)(ii) provides an independent basis to compel disclosure of the SEM photographs and EDX measurements for the 44 Accused Products referenced in the FAC. Thus, Feit has sufficiently established that exceptional circumstances warrant disclosure solely of the SEM photographs and EDX measurements for the 44 Accused Products referenced in the FAC. Further, under Rule 26(b)(3)(A), Feit has demonstrated a substantial need for the SEM photographs and EDX measurements, given the highly technical nature of the infringement claims asserted in this case and the asymmetry of the parties' business models and practices as Feit has outlined them. CONCLUSION Accordingly, for the reasons outline above, the Motion is GRANTED in part and DENIED in part. Within fourteen (14) days of the date of this Order, Lexington shall produce any SEM images and any EDX measurements in its possession, custody and control for the forty-four (44) Accused Products identified in the First Amended Complaint in response to RFP Nos. 45 and 46, respectively. These documents may be produced pursuant to the parties' Stipulated Protective Order. (Dkt. No. 51.) The Motion is DENIED in all other respects. The Court also DENIES Lexington 's request for sanctions against Feit. IT IS SO ORDERED. Footnotes [1] In the definition of “the ‘851 Patent,” Lexington also includes an ex parte examination certificate issued on December 5, 2014 for U.S. Patent No. 6,936,851 C1, which is not relevant to the resolution of the instant Motion. (See FAC at ¶ 8.) [2] As required by Local Rule 37-2, in the Joint Stipulation, the parties addressed each disputed RFP separately. However, to avoid unnecessary repetition, they incorporated all of their arguments regarding RFP No. 45 (SEM photographs) into their discussions of RFP No. 46 (EDX analyses). (See Joint Stip. at 37-39 (“ The same arguments given above as to Request No. 45 in relation to SEM photographs apply equally to Request No. 46 in relation to EDX measurements of the Accused Products.”).) Consequently, the Court's discussion addresses both RFPs. [3] A testifying expert's report must also contain the witnesses' qualifications, including a list of publication for the prior ten years; a list of all other cases in which they have testified in the prior four years; and disclose the compensation the expert will be paid for their testimony. FED. R. CIV. P. 26(a)(2)(B)(iv)-(v). [4] In support to this proposition, Lexington cites “Liversperson, Inc. v. 24/7 Customer, Inc., No. 14 Civ. 1559 (S.D.N.Y. July 29, 2015).” (Joint Stip. at 20.) However, in the absence of any citation to an official reporter or legal research database, the Court could find no such decision.