## Facts

- Nutramax owned patents relating to Cosamin, a dietary supplement containing glucosamine and chondroitin sulfate, and sued Twin and numerous other companies for patent infringement in multiple actions consolidated for discovery.
- Discovery proceeded in phases; during the initial phase the court permitted limited early depositions focused on defendants’ “on-sale bar” defense under 35 U.S.C. § 102(b), tied to alleged pre–March 31, 1992 commercialization.
- Before depositions, Nutramax’s counsel met with party witnesses and had them review selected documents to prepare for testimony.
- During depositions, defendants asked witnesses which documents they reviewed in preparation and demanded production of those documents.
- On counsel’s instructions, the witnesses refused to answer and Nutramax withheld the materials, asserting attorney work-product protection.
- Defendants moved to compel (1) production of documents used to prepare the witnesses and (2) answers identifying which documents the witnesses reviewed.

## Issues

1. Whether counsel’s selection and provision of documents to prepare witnesses for deposition is protected work product, and whether defendants showed a basis to overcome that protection.
2. Whether deposition questions asking a witness to identify documents reviewed in preparation improperly invade work-product protection.

## Decision

- The court denied the motion to compel production of the deposition-preparation documents to the extent the request sought disclosure of counsel’s selected compilation reflecting litigation strategy.
- The court denied the motion to compel answers identifying which documents witnesses reviewed in preparation because the inquiry would reveal counsel’s mental impressions and strategic priorities.
- The court permitted ordinary discovery of underlying, independently discoverable business records through standard requests and permitted fact-based questioning that did not probe counsel’s preparation choices.

## Legal Principles

- Fed. R. Civ. P. 26(b)(3) protects materials prepared in anticipation of litigation, with heightened protection for opinion work product reflecting an attorney’s mental impressions, conclusions, or legal theories.
- An attorney’s selection and compilation of documents from a larger set of discoverable materials can constitute protected work product when disclosure would reveal counsel’s strategic evaluation of the case.
- Fact work product may be discovered only upon a showing of substantial need and inability to obtain the substantial equivalent without undue hardship; opinion work product is discoverable only in rare circumstances.
- Deposition discovery permits inquiry into facts and a witness’s knowledge, but generally bars attempts to learn how counsel prepared the witness when that would expose counsel’s strategy.

## Conclusion

The court held that counsel’s chosen set of documents used to prepare deposition witnesses, and deposition questions designed to identify that set, were protected as opinion work product; defendants were required to pursue the relevant facts through standard document discovery and non-strategy-revealing questioning.


Nutramax Lab’ys, Inc. v. Twin Lab’ys, Inc., 183 F.R.D. 458 (D. Md. 1998)