Amendments to the Federal rules of civil procedure : hearing before the Subcommittee on Intellectual Property and Judicial Administration of the Committee on the Judiciary, House of Representatives, One Hundred Third Congress, first session, June 16, 1993 online

disclosure process. Ten federal district court judges commented, and eight out of the ten were
opposed to disclosure. The following is a summary of the primary objections against the proposal and
a tally of the percentage of commenters who raised these objections.

Specific Objections Percent

Commenting

The standard for making disclosure is too vague and ambiguous. 59

A disclosure process will spawn more satellite litigation and disputes. 52

The disclosure process will be unworkable under the notice pleading 51

system.

The 30 day time limit for making disclosures after the answer is filed 45

is too short.

Empirical data on disclosure is needed from the Biden bill districts 38

before nationwide implementation.

Disclosure will result in much unnecessary and burdensome production 25

of documents and information.

The disclosure process is inconsistent with the altomey<lient relation- 18

ship and will undermine the work product doctrine.

The disclosure process is inconsistent with the adversary system. 17

Simultaneous disclosure places an unfair burden on the defendant. 13



139



APPENDIX C

UST OF SIGNATORIES TO COMMENTS TO THE JUDICIAL

CONFERENCE IN OPPOSITION TO DISCLOSURE SUBMITTED BY

BAR ASSOCIATIONS, BUSINESS ASSOCIATIONS,

CORPORATIONS. PUBLIC INTEREST GROUPS. ATTORNEYS AND JUDGES



Bar Associations and Business Associations

Alliance of American Insurers

American Bar Association

American Board of Trial Advocates

American College of Trial Lawyers

American Corporate Counsel Association

American Institute of Certified Public Accoun-
tants

American Insurance Association

Arkansas Association of Defense Counsel

Association of American Railroads

Association of Trial Lawyers of America

Business Roundtable

State Bar of California

Central District of California Lawyer Repre-
sentatives, Ninth Circuit Judicial Conference

Chamber of Commerce of the United States

Chicago Council of Lawyers

Colorado Bar Association

Connecticut Bar Association

Courts, Lawyers and the Administration of
Justice Section of the District of Columbia Bar



Defense Counsel of Delaware

Federal Bar Association, Los Angeles Chapter

State Bar of Georgia

Hawaii Defense Lawyers Association

Idaho Association of Defense Counsel

Illinois Association of Defense Trial Counsel

International Association of Defense Counsel

Iowa Defense Counsel Association

Lawyers for Civil Justice

Litigation Section of the District of Columbia
Bar

Los Angeles County Bar Association

Maritime Law Association of the United States

Michigan Defense Trial Counsel, Inc.

Mississippi Defense Lawyers Association

State Bar of Montana

National Association of Independent Insurers

National Association of Railroad Trial Counsel

New Jersey Defense Association

New Jersey State Bar Association



140



New York State Bar Asscx:iation Commercial
and Federal Litigation Section

Pharmaceutical Manufacturers Association

Philadelphia Bar Association

Product Liability Advisory Council

South Carolina Defense Trial Attorneys' Asso-
ciation

Trial Lawyers for Public Justice

Virginia Association of Defense Attorneys

Washington Defense Trial Lawyers

Washington State Trial Lawyers Association

Wichita (Kansas) Bar Association

Public Interest Groups

Alliance for Justice

American Civil Liberties Union

NAACP. Legal Defense and Educational Fund

Public Citizen Litigation Group

Corporations

American Standard Inc.

Amoco Corporation

ARCO

Bausch & Lomb Inc.

Bethlehem Steel Corporation

Bridgestone/Firestone, Inc.



Caterpillar, Inc.
Chesapeake Corporation
The Clorox Company
The Coca-Cola Company
Control Data
Coming Inc.



141



Cooper Tire & Rubber Company

Deere & Company

The Dow Chemical Company

Duquesne Light Company

E.L DuPont de Nemours and Company

Eastman Kodak Company

Emerson Electric Co.

E-Systems, Inc.

FIN A, Inc.

Ford Motor Company

Gates Energy Products

GenCorp

General Motors

Georgia-Pacific Corporation

Harley-Davidson, Inc.

Harris Corporation

Hershey Foods

Hughes Aircraft Company

Joy Technologies, Inc.

Lone Star Technologies

LTV Steel Company

Mazda Motor of America, Inc.

McDermott, Inc.

McGraw-Hill. Inc.



Mead

Mehoe Company

Michelin Tire Corporation

Mobil Corporation

Morgan Stanley & Co.

Morton International

Murphy Oil USA, Inc.

Nalco Chemical Company

Nissan North America, Inc.

Olin Corporation

Oryx

Otis Elevator (United Technologies)

Phelps Dodge Corporation

Piper Aircraft Corporation

The Procter & Gamble Company

Ralston Purina Company

Raytheon

Sears, Roebuck and Co.

The Sherwin-Williams Company

Snap-On Tools

Sundstrand Corporation

Tenneco Inc.

The Timken Company

TRW Inc.



142



Union Carbide Corporation

The Uniroyal Goodrich Company

USX

Waltco Truck Equipment Co.

Washington Corporations

Zum Industries, Inc.



Attorneys and .Judges

Robert J. Albair

Arthur R. Almquist, Mehaffy & Weber

Dan H. Ball, Thompson & Mitchell

S. Paul Battaglia, Bond, Schoeneck & King

William C. Beatty, Huddleston, Bolen, Beatty,
Porter & Copen

James S. Bianchi, Meyers, Bianchi &
McConnell

Sheila L. Bimbaum, Skadden, Arps, Slate,
Meagher & Flom

Peter K. Bleakley, Arnold & Porter

T. Mack Brabham

Hon. Albert V. Bryan, Jr., United States Dis-
trict Court, Eastern District of Virginia

John C. Cahalan, Dunn, Carney, Allen,
Higgins & Tongue

Richard P. Campbell, Campbell &. Associates

John M. Capron, Fisher & Phillips

James E. Carbine, Weinberg and Green



Gordon M. Carver III, Dunn, Kacal, Adams,
Pappas & Law

Walter Cheifelz, Cheifetz, Pierce, Cochran,
Kozak & Mathew

Douglas J. Chumbley, Popham Haik

F. Bosley Crowther 3rd, Crowther & Bresee

Mary Coffey, The John J. Frank Partnership

Steven J. Cologne, Mclnnis, Fitzgerald, Rees,
Sharkey & Mclntyre

James J. Crowley, Thompson, Hine and Flory

Frank J. Daily, Quarles & Brady

D. Michael Dale, Oregon Legal Services

Roy B. Dalton, Martinez & Dalton, P.A

Michael J. Danner, Danner & Bishop

Jeffrey S. Davidson, Kirkland & Ellis

Etonald H. Dawson, Jr., Plunkett & Cooney

Paul R. Devin, Peabody & Arnold

Douglas K. Dieterly, Barnes & Thomburg



143



Gregory J. Digel, Branch, Pike, Ganz &
O'Callaghan

William L. Dorr, Harris Beach & Wilcox

Winslow Drummond, The McMath Law Firm,

Carroll E. Dubuc, Graham & James

M. Richard Dunlap, Dickie, McCamey &
Chilcote

Charles R. Dumi, Dunn, Kacal, Adams, Pappas
& Law

Kevin J. Dunne, Sedgwick, Detert, Moran &
Arnold

Richard L. Edwards, Campbell & Associates

Dale Ellis, Knowles, King & Smith

John R. Fanone, Robert D. Kolar & Assoc.

Francis X. Ferrara, Carpenter, Bennett &
Morrissey

John P. Frank, Lewis and Roca

Charles F. Freiburger, Bricker & Eckler

Gail N. Friend, Fuibright & Jaworski

Keith Gerrard, Perkins Coie

Arthur M. Glover, Jr., Hirsch, Glover, Robin-
son & Sheiness

Catherine A. Gofrank, Gofrank and Kelman

Hugh Q. Gottschalk, Otten, Johnson, Robin-
son, Neff & Ragonetti

Arthur P. Greenfield, Snell & Wilmer

Francis M. Gregory, Jr., Sutherland, AsbiU &
Brennan



Gregory A. Gross, Dickie, McCamey &
Chilcote

Peter T. Grossi, Jr., Arnold & Porter

William D. Grubbs, Woodward, Hobson &
Fulton

Harold A. Haddon, Haddon, Morgan & Fore-
man

Patrick J. Hagan, Kincaid, Gianunzio, Caudle
& Hubert

George N. Hayes, Delaney, Wiles, Hayes,
Reitman & Brubaker

Thomas M. Hayes, Jr., Hayes, Harkey, Smith,
Cascio & Mullens

Jon L. HeberUng, McGarvey, Heberling,
Sullivan & McGarvey

Jonathan M. Hoffman, Martin, Bischoff, Tem-
pleton, Langslet & Hoffman

Hon. H. Russel Holland, United States District
Couri, District of Alaska

Patrick E. Hollingsworth, Davidson, Home &
Hollingsworth

Charles W. Hosack, Lukins & Annis

Allen W. Howell, Shinbaum, Thiemonge &
HoweU

Hunton & Williams

Chester A Janiak, Bums & Levinson

Hon. James H. Jarvis 11, United States District
Court, Eastem District of Tennessee

Lawrence R. Jensen, Hallgrimson, McNichols,
McCann & Inderbitzen

Frank G. Jones, Fuibright & Jaworski



144



Brian N. Johnson, Popham Haik

Gregory P. Joseph, Fried, Frank, Harris,
Shriver & Jacobson

Bruce W. KauEfman, Dilworth, Paxson, Kalish
& Kauffinan

M. J. Keefe

Loren Kieve, Debevoise & Plimpton

Kenneth A. Kraus, Kraus & Kraus

Ernest Lane III, Lane & Striebeck, P.A.

J.D. Ledbetter, Sommers, Schwartz, Silver &
Schwartz

Paul R. Leitner, Leitner, Warner, Moffitt,
Williams, Dooley, Carpenter & Napolitan

Edwin L. Lowther, Jr., Wright, Lindsey &
Jennings

Jack B. McCowan, Jr , Gordon & Rees

Andrew T. McKinney IV, Phillips & Akers

Richard McMillan, Jr., Crowell & Moring

John O. Miller HI, White, Huseman, Fletcher
& Powers

Francis H. Morrison III, Day, Berry & Howard

Ronald G. Morrison, Morrison & Leveque

Hon. J. Frederick Motz, United States District
Court, District of Maryland

Arthur Nakazato, Kircher & Nakazato

Janet Napolitano, Lewis and Roca

Marc A. Nerenstone



Colvin G. Norwood, Jr., McGlinchey, Stafford,
Cellini & Lang

Henry J. Oechler, Jr., Chadboume & Parke

Michael E. Oldham, Johnson, Oldham &
Angell

Godfrey P. Padberg, Padberg, McSweeney,
Slater & Merz

Hon. Owen M. Fanner, United States District
Court, District of Oregon

Deana S. Peck, Streich Lang

Thomas M. Peters, Vandeveer Garzia, P.C.

Richard Polley, Dickie, McCamey & Chilcote

Robert W. Powell, Dickinson, Wright, Moon,
Van Dusen & Freeman

Clifford A. Rieders, Rieders, Travis, Mussina.
Humphrey & Harris

Robert S. Rosemurgy, Butch, Quinn,
Rosemurgy, Jardis, Bush, Burkhart & Strom

William A Rossbach, Rossbach & Whiston,
P.C.

Susan Vogel Saladoff

Hon. Barefoot Sanders, United States District
Court, Northern District of Texas

W. Joseph Schleppi, McCutchan, Druen,
Haynard, Rath «& Dietrich

Edward C. Schmidt, Jones, Day, Reavis &
Pogue

Kari E. Seib, Jr., Patterson, Belknap, Webb &
Tyler

William D. Serritella, Ross & Hardies



145



Roger S. Shafer

Samuel M. Shapiro

Joseph A. Sherman, Sherman, TafT & Bangert

Alan C Stephens, Thomsen and Stephens

John D. Stephenson, Jr., Jardine, Stephenson,
Blewett & Weaver, P.C

J. Hamilton Stewart, III, Ogletree, Deaidns,
Nash, Smoak & Stewart

Laura D. Stith, Shook, Hardy & Bacon

Paul L. Stritmatter, Stritmatter, Kessler &
McCauley

William H. Sutton, Friday, Eldredge & Qark

Michael E. Tigar, University of Texas

Thomas F. Tobin, Baker & McKenzie

Jay H. Tressler, Tressler, Soderstrom, Maloney
& Priess

H. Woodruff Turner, Kirkpatrick & Lockhart

Chilton Vamer, King & Spalding

George Vernon, Leng Stowell Friedman &
Vernon

Robert N. Weiner, Arnold & Porter

Ronald E. Westen, Harvey, Kruse, Westen &
Milan, P.C

Tybo Alan Wilhelms, Bugbee Conkle

Shelton C Williams, Williams & Ranney, P.C.

Anthony J. Williott, Dickie, McCamey &
Chilcote

Stanley P. Wilson



James D. Wing, Fine Jacobson Schwartz Nash
Block & England

Holly Winger, Cummings & Lockwood

Thomas D. Yannucci, Kirkland & Ellis

Andrew S. Zettle, Huddleston, Bolen, Beatty,
Porter & Copen



146



Mr. Hughes. Mr. Higgins.



STATEMENT OF JOHN J. HIGGINS, SENIOR VICE PRESIDENT
AND GENERAL COUNSEL, HUGHES AIRCRAFT CO.

Mr. Higgins. Cxood afternoon, Mr. Chairman. Mr. Chairman,
members of the panel. I thank you for your patience. I realize I am
next to last. I shall be brief and hopefully informative.

I have been practicing law for almost 35 years.

Mr. Hughes. Could you bring the mike a little closer,
Mr. Higgins?

Mr. HiGGENS. I have practiced law for almost 35 years, 23 in the
Federal courts in New York, 7 in the Federal courts in Michigan
and currently I am in my fifth year of practice in California.

One of the distinguished judges this morning mentioned the
laudable purpose of Federal rule 1, which is the just, speedy and
inexpensive resolution of litigation. My chairman has obviously
never read rule 1. I hear that from him every week.

Our outside counsel budget for last year was approximately $44
million; and most of that $44 million went toward the litigation of
discovery issues or complying with those issues.

It is in that context that I would like you to place my remarks
which are basically some practical insights, as I see it, fi-om my
own company's perspective.

We endorse virtually all of the changes in the discovery rules
with, of course, the exception of 26(a)(1). We, too, join and request
that 26(a)(1) be deleted.

We are a worldwide company. Our problem with mandatory pre-
trial disclosure is that we are going to have to, within 75 or 90
days, identify individuals and documents that fall within that dis-
closure obligation; find their present physical location; and provide
the required disclosures within that framework.

But our more serious concerns are in the area of our government
contract work. Many of our documents and records are subject to
extensive national security requirements.

Much of the information will not be discloseable at all; or if it
is, it will have to be disclosed pursuant to a protective order, so you
are going to get judicial intervention early and up front, that addi-
tional layer of expense, time, disruption of which speakers have re-
ferred to today.

The Government also may need to be consulted in many if not
most of the cases involving classified information; and that will in-
crease the complexity of the handling of the issues and the time
needed to resolve them.

There will be a massive amount of paperwork involved and that
presents the risk — and I think it may be a significant risk — that
classified information may end up being disclosed inadvertently.

We also have extensive government paperwork and record-
keeping requirements; and that increases the volume of potentially
early discloseable material, making document identification, loca-
tion, and production complex and time consuming.

We, of course, also have oversight by government personnel and
consultants; and that increases the number of individuals who may
be knowledgeable about a particular lawsuit and whose identity
will have to oe determined and disclosed.



147

We also have a problem with our proprietary information. The
nature of our litigation profile will precipitate significant conflicts
and, in my opinion, pose competitive risks if disclosure becomes
effective.

We are involved in litigation with competitors where confidential
proprietary information is at issue. Disclosure is not sensitive to
the risks inherent in such litigation, where even protective orders
are insufficient.

Even in litigation against noncompetitors, proprietary informa-
tion could be inadvertently disclosed to competitors who will mon-
itor the litigation with much greater ease than under present day
discovery rules.

Under mandatory disclosure, you will be put into the position of
being forced to seek court involvement and protection even in ad-
vance of disclosure which will increase contentiousness among the
parties and perhaps incurring discovery sanctions from the court.

If I may sum up, I think that my approximately $44 million last
year hopefully will be reduced by some of the reforms that are
posed in the other rules. I am afraid that I must say that based
upon my experience, that $44 million will be increased if rule
26(a)(1) goes into effect. Therefore, I join Mr. Cortese and the com-
mittees he represents requesting that it be deleted,

Mr. Hughes. Thank you, Mr. Higgins.

[The prepared statement of Mr. Higgins follows:]



148



Prepared Statement of John J. Higgins, Senior Vice
President and General Counsel, Hughes Aircraft Co.



The nature of Hughes' business will make compliance with mandatory, pre-
discovery disclosure difficult, if not impossible, in most litigation.

A. Hughes facilities, and thus, its employees, consultants, and records are
dispersed widely throughout the U.S., Europe, and Asia, posing significant
logistical problems, such as:

1. Initially identifying the individuals and documents that may fall
within the disclosure obligation;

2. Finding the present physical location of identified, responsive
individuals and documents; and

3. Providing the required disclosures within the requisite disclosure
timeframe.

B. I lughes' government contract work creates unusual circumstances that will
compound the difficulties Hughes may have in complying with disclosure:

1. Many Hughes' documents and records are subject to extensive
national security requirements.

a. Much information wiU not be disclosable at all, or if it is, it
must be disclosed pursuant to a protective order. In either
case pre-disclosure involvement by the court will be
necessary, negating any potential benefit from disclosure.

b. The government may need to be consulted in many, if not
most cases involving classified information, increasing the
complexity of the issues and the time needed to resolve them.

c. Due to the massive volume of paper involved and the short
time constraints of disclosure, the risk that classified



149



information will be disclosed inadvertently will be significantly
increased under disclosure.

Government paperwork requirements and audit trails increase the
volume of potentially disclosable material exponentially, making
document identification, location, and production complex and
time-consuming.

Oversight by government personnel and consultants increase the
number of individuals who may be knowledgeable about any
particularly issue, and whose involvement therefore must be
considered as part of the disclosure obligation.



II. The nature of Hughes' litigation profile, coupled with the small circle of Hughes'
competitors, will precipitate significant conflicts and pose competitive risks if
disclosure becomes effective.

A. Hughes' is involved in litigation against competitors where confidential
proprietary information is at issue. Disclosure is not sensitive to the risks
inherent in such litigation, where even protective orders often are
insufficient.

B. Even in litigation against non-competitors, propnetary information could
inadvertently be disclosed to competitors monitoring the litigation with
much greater ease than under present day discovery.

C. Under disclosure, Hughes will be put in the awkward position of being
forced to seek court involvement and protection even in advance of
disclosure, increasing contentiousness among the parties and perhaps
incurring discovery from the court.

III. Conclusion

For the above reasons, Hughes fully supports the statement submitted on
behalf of the Business Roundtable Lawyers Committee, the Chamber of Conunerce of
the United States, the National Association of Manufacturers, the American Association
of Railroads, the American Automobile Manufacturers Association, the American
Bankers Association, the Product Liability Advisory Council, Inc., the Defense Res ;arch
Institute, the Federation of Insurance and Corporate Counsel, the International
Association of Defense Counsel, and Lawyers for Civil Justice, and respectfully requests
that Congress strike the disclosure amendments contained in proposed new Rule
26(a)(1).



150

Mr. Hughes. Mr. Frazza.

STATEMENT OF GEORGE S. FRAZZA, VICE PRESIDENT AND
GENERAL COUNSEL, JOHNSON & JOHNSON

Mr. Frazza. The Bible says the last shall be first.

I find myself being similar to Mr. Dunlap in two ways and dis-
similar in two other ways. Like his client, Johnson & Johnson's
very existence is in intellectual property and research and develop-
ment. We spent over $1 billion on it last year.

Unlike Mr. Dunlap, a lot of that was in New Jersey. The second
thing is both Mr. Dunlap and I just rankle at the excessive time
and waste of the discovery system in the Federal courts. We are
involved in a wide range of litigations. Some are very complex.
Some are simply straightforward.

I didn't spend $50 million, but let's say I spent tens of millions
in the court system in the United States; and a great amount of
that is spent on discovery which in my view is just wasteful.

I would be the first to embrace the modifications of rule 26 if I
thought that that was going to ameliorate that situation in any
significant degree. I think the opposite; however, I think it will
aggravate it.

What it will do is that it will present an opportunity for potential
abuse to people who will try to devise very elaborate complaints,
disputed facts alleged with particularity in an effort to scoop out
of our files virtually anything that they think can support that.

And on the other hand, the adversary — having this sword over
his head — is predictably going to respond with a massive pleading
which also bristles with "particularized factual allegations."

What will vou have then? You will have disputes over whether
facts were alleged with particularity, over what is relevant to dis-
puted facts, over work product, attorney-client privilege, over
whether the documents were properly categorized as the rule says.
You will categorize the documents if you don't put them over.

This whole layer of disputes will be laid on the major problem
of litigation in the Federal courts and I think everybody agrees and
that is the propensity of so-called litigation lawyers — and I use that
as opposed to trial lawyers — these are people that love to depose
and take interrogatories but do not want to march up the court-
house steps. The propensity of those people to continually expand
the discovery — and I might say with sometimes the acquiescence of
the magistrates and the judges who are either preoccupied with the
criminal docket or simply from a philosophical basis think you have
a right to get every fact that might help you regardless of the costs
involved or regardless of the value.

I see this as being just another layer that is not going to do any-
thing to solve the major problem. And the major problem is the
enormous waste of public and private resources that are tied up in
the discovery process in the U.S. courts.

I underscore what my colleagues have said to that. There are a
lot of answers to that: Closer supervision by the trial judge; not a
bias toward excluding evidence but a bias toward looking someone
in the eye and saying do you really have to take these depositions?
And I applaud the limitations on depositions, and I applaud the
limitations on interrogatories.



151

In fact, like my colleagues, again, all of the proposed changes
with the exception of the changes in rule 26, we heartily endorse.
We think they are a step; but I don't think this helps. I think it
hurts. I think the only thing that you can do to speed up the proc-
ess is a firm trial date which some districts have done — the rocket
docket in Virginia and others; and the intervention of the judge
and the magistrate to take this discovery monster by the throat
and put some common sense into the litigants to get the case to
trial.

Unfortunately, I don't think this proposal does that. I think it
does just the opposite.

Thank you.

[The prepared statement of Mr. Frazza follows:]

Prepared Statement of George S. Frazza, Vice President and General

Counsel, Johnson & Johnson

For over fifteen years 1 have been General Counsel for Johnson & Johnson, one
of the largest health care companies in the world and in this country. It has over
160 independent operating subsidiaries which work on an autonomous basis and
cover a vast array of specific specialized fields in the health care area. The advances
in medical devices and drugs inevitably generate a wide array of disputes in the
field of intellectual property as well as in tne area of drug and device product liabil-
ity. These disputes range from relatively straightforward, uncomplicated ones such
as trademark disputes to very complex ones concerning the existence and the scope
of rights under technology licensing agreements and patents covering emerging
technology.

Because Johnson & Johnson is in such an extensive variety of fields, many of
which are on the cutting edge, we are heavily engaged in such disputes. Our annual
budget for legal costs, both for in-house and outside litigation counsel run into the
tens of millions of dollars — much of it, I am sorry to say, is devoted to pretrial dis-