Full opinion text
ORDER DLOTT, District Judge. This matter comes before the Court on the Report and Recommendation of Special Master (doc. # 188) (the “Hardy Recommendation”) and the Report and Recommended Decisions of Special Master Regarding Defendants’ and Plaintiffs Motions for Summary Judgment (doc. # 201) (the “Martens Recommendation”). I. THE RECOMMENDATIONS The Hardy Recommendation and the Martens Recommendation lay out in great detail the facts of these cases. The Court will rely on those factual summaries and present only those facts necessary to its analysis. The Hardy Recommendation addresses Plaintiff AK Steel’s Motion To Compel Discovery Regarding Testing By Defendants’ Expert Witness Of Defendants’ Furnace Atmosphere. (Doc. # 106.) Plaintiff moved to compel production of the results of gas composition tests conducted on Defendant Sollac’s production line in September, October, and November of 1999. Defendants argued that these results are work product entitled to protection under Federal Rule of Civil Procedure 26(b)(3). Special Master Hardy examined the relevant documents in camera and recommended that Plaintiffs motion be denied. The Martens Recommendation addresses several summary judgment motions: Defendants’ First Motion For Partial Summary Judgment Concerning The Legal Interpretation Of The “At Least About 95% Hydrogen” Patent Claim Terms (doc. # 68), Defendants’ Second Motion For Partial Summary Judgment Of Non-Infringement Of The “At Least About 95% Hydrogen” Patent Claims (doc. # 69), Defendants’ Third Motion For Partial Summary Judgment Of (i) Non-Infringement, And (ii) Invalidity, Of The Kilbane Patents (doc. # 70), Plaintiff AK Steel’s First Motion For Partial Summary Judgment Of Claim Construction (doc. # 107), and Plaintiff AK Steel’s Second Motion For Partial Summary Judgment Of Claim Construction (doc. # 108). Special Master Martens’s recommendations on these motions would result in granting summary judgment in favor of Defendants on most issues. The Court will not address every aspect of the recommendations or the parties’ objections to those recommendations. Nevertheless, the Court’s rulings are based on a de novo review of both the Hardy Recommendation and the Martens Recommendation. II. ANALYSIS A. The Hardy Recommendation Plaintiff AK Steel Corporation (“AK Steel”) argues that Special Master Hardy erred in recommending that the Court deny its motion to compel for three reasons: (1) the gas test results do not reveal the mental impressions, conclusions, opinions, or legal theories of an attorney; (2) AK Steel has a substantial need for the data in preparing its case and cannot obtain the information or its substantial equivalent without undue hardship; and (3) Defendants waived work product protection. AK Steel’s first argument misunderstands Rule 26(b)(3). That rule protects from discovery all “documents and tangible things ... prepared in anticipation of litigation or for trial” absent a showing of substantial need and undue hardship. Fed.R.Civ.P. 26(b)(3). It also provides additional protection against disclosure “of the mental impressions, conclusions, opinions, or legal theories of an attorney.” See Upjohn Co. v. United States, 449 U.S. 383, 400, 101 S.Ct. 677, 66 L.Ed.2d 584 (1981) (“Rule 26 accords special protection to work product revealing the attorney’s mental processes.”). The Special Master correctly found that the requested documents were “prepared in anticipation of litigation or for trial” and therefore entitled to at least qualified protection under Rule 26(b)(3). Therefore, whether or not the test data reveal mental impressions of Defendants’ attorneys, Plaintiff must nevertheless show at least substantial need and undue hardship in order to pierce work product protection. AK Steel next contends that the Special Master erred because AK Steel has substantial need for the test data and obtaining its substantial equivalent would require undue hardship. In his recommendation, the Special Master assumed that AK Steel had substantial need for the results, but found that AK Steel had not shown that obtaining its own data would require undue hardship. AK Steel asserts undue hardship on two bases: (a) Defendants prevented Plaintiff from performing its own tests during its first Rule 34 visit to Defendants’ plant and continue to deny Plaintiff access to the plant for testing; and (b) even if Plaintiff had access to the line, its employees do not have sufficient expertise to conduct their own tests. Both arguments fail because AK Steel has not shown that it has sufficiently exhausted its normal discovery remedies. While accusing Defendants of failing to cooperate during its first Rule 34 visit to Sollac’s plant in December 1999, AK Steel has never noticed another Rule 34 examination of the plant, nor has it moved for an order compelling Defendants to comply with its initial Rule 34 notice. Consequently, Plaintiff has not shown that Defendants would not allow it access to the relevant production line, or that Sollac’s personnel, who have the expertise to aid AK Steel in conducting the necessary tests, would be unwilling to do so. Furthermore, it would effectively nullify the work product privilege to force Defendants to turn over their work product when Plaintiff did not fully pursue its rights during discovery. Finally, AK Steel argues that the Special Master erred when he found that Defendants did not waive work product protection of the documents. Plaintiff asserts that Defendants waived Rule 26(b)(3) protection in two ways: (a) by submitting an expert report based on the test data with its second motion for summary judgment; and (b) by eliciting expert opinion testimony in deposition about tests conducted prior to December 1999. AK Steel’s first argument is legally accurate in that Defendants may not assert work product protection for the test data and then use that data as evidence. Cf. United States v. Nobles, 422 U.S. 225, 239-40, 95 S.Ct. 2160, 45 L.Ed.2d 141 (1975) (respondent’s decision to call investigator to testify at trial waived work product protection with respect to matters covered in the testimony). But Plaintiff is wrong on the facts. The expert report at issue relied solely on the December 1999 tests, and the results of that test were already disclosed by Defendants. (See Doc. # 69 exh. 39.) Plaintiffs second argument-that Mr. Varroy’s testimony waived any work product protection as to its subject matter-also lacks merit. Plaintiff incorrectly asserts that United States v. Nobles, 422 U.S. 225, 95 S.Ct. 2160, 45 L.Ed.2d 141 (1975), dictates that Defendants waived work product protection. In Nobles, the defendant waived work product protection by calling an investigator at trial whose reports would otherwise have been protected by the work product doctrine. Here, it is true that Defendants’ counsel elicited opinion testimony at deposition from its expert, Mr. Varroy, regarding tests that he conducted before December 1999. Defendants, however, have not used this testimony in any way, nor have they designated Mr. Varroy as a testifying expert witness under Federal Rule of Civil Procedure 26(a)(2)(A). As such, Mr. Var-roy is a non-testifying expert witness under Federal Rule of Civil Procedure 26(b)(4)(B). The facts known to him and his opinions may not be discovered absent a showing of “exceptional circumstances.” Fed.R.Civ.P. 26(b)(4)(B). Just as Plaintiff has not shown undue hardship under Rule 23(b)(3), it also fails to show the “exceptional circumstances” required under Rule 26(b)(4)(B). B. The Martens Recommendation The Court will address three categories of AK Steel’s objections to the Martens Recommendation: (1) objections to the finding of lack of enablement of claims 1, 3, 5, and 7 of the ’549 patent; (2) objections to the findings of noninfringement of the patent claims involving the composition of the aluminum bath; and (3) objections to the findings of noninfringement of the patent claims involving the composition and location of the protective atmosphere. 1. Lack of Enablement Special Master Martens found that claims 1, 3, 5, and 7 of the ’549 patent were invalid for lack of enablement. (Doc. # 201 at 84-87.) A patent specification is enabling if it discloses sufficient information to allow a person skilled in the art at the time the application was filed to make and use the claimed invention without undue experimentation. Adang v. Fischhoff, 286 F.3d 1346, 1355 (Fed.Cir.2002); see 35 U.S.C. § 112. “[E]nablement is a question of law ... which may involve subsidiary questions of fact.” In re Epstein, 32 F.3d 1559, 1568 (Fed.Cir.1994). A patent is presumed to be valid, 35 U.S.C. § 282, and is therefore presumed to satisfy the enablement requirement. Given this presumption, the burden is on Defendants to show lack of enablement by clear and convincing evidence. Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed.Cir.1999). AK Steel first argues that claims 1, 3, 5, and 7 are enabled because the ’549 patent discloses at least one claimed enablement-namely, it discloses a steel strip with an aluminum coating containing up to about 0.5% silicon by weight. Plaintiff relies on Johns Hopkins University v. Cellpro Inc., 152 F.3d 1342 (Fed.Cir.1998), for the proposition that “the enablement requirement is met if the description enables any mode of making and using the invention.” 152 F.3d at 1361 (emphasis added). This argument confuses the different methods of making a claimed product with the full range of products claimed in the patent. This distinction is borne out in Johns Hopkins, where the defendant asserted that the plaintiffs patents were not enabled (a) because they did not teach how to make the full range of claimed antibodies and (b) because they did not teach how to make the claimed antibodies using all disclosed alternative methods. The Federal Circuit rejected both arguments, but on different grounds. As to the first argument, the court acknowledged that “ *[t]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.’ ” Id. at 1359 (citing Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed.Cir.1997)). It then reviewed the record and found that summary judgment had been appropriately granted to the plaintiff because the patent specifications did teach how to make the full range of claimed antibodies. The Federal Circuit then found the second argument to be legally irrelevant, because a patent need not teach how to make the claimed invention using every alternate method disclosed in the patent. Here, the ’549 patent claims stainless steel strips hot-dipped in an aluminum bath containing up to about 10% silicon by weight. The aluminum coating, whether it contains 0.5% or 8.0% silicon by weight, is part of the claimed product. The range of aluminum coatings therefore does not describe alternative methods of creating the same product, but rather indicates the scope of products the patent is meant to claim. Therefore, the patent specification must teach a person of ordinary skill in the art how to coat a stainless steel strip with the full range of coatings. AK Steel also argues that the Special Master’s recommendation on enablement is wrong because claims 1, 3, 5, and 7 of the ’549 patent were improperly construed. A patent should be interpreted to preserve its validity. See Modine Mfg. Co. v. U.S. Int'l Trade Comm’n, 75 F.3d 1545, 1557 (Fed.Cir.1996). Consequently, according to AK Steel, if the patent specification does not enable an aluminum coating with 10% by weight silicon, the Special Master should construe the language in claims 1, 3, 5, and 7 of the ’549 patent to include aluminum coating metals containing up to, but not including, 10% silicon by weight. As the Special Master noted, however, the axiom of preserving validity does not permit the Court to redraft the patent in a manner inconsistent with the intrinsic record. See McCarty v. Lehigh Valley R. Co., 160 U.S. 110, 116, 16 S.Ct. 240, 40 L.Ed. 358 (1895). In rejecting the first application for the ’549 patent, the PTO expressed a specific concern that the language used in the initial application-which had called for a “Type 1 aluminum” coating metal-was too vague. The Kilbane specification defined “Type 1 aluminum” as aluminum containing about 10% silicon by weight. In response to the PTO’s concern, the patent applicant replaced the phrase “Type 1 aluminum” with language claiming an aluminum coating metal containing “up to about 10% silicon by weight.” The Special Master found that this substitution shows that the patent applicant intended the “up to about 10% silicon by weight” language to encompass “Type 1 aluminum.” Furthermore, claims 3 and 7 are dependent on claims 1 and 5. Independent claims must be interpreted in a manner consistent with their dependant claims. See Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1445 (Fed.Cir.1997). Thus, the Special Master found that claims 1 and 5 must be at least as broad in scope as claims 3 and 7, i.e. they must also include aluminum coating metals containing up to and including 10% silicon by weight. AK Steel posits that this analysis is erroneous and asserts two alternate reasons why the change in the claim language does not imply that the ’549 patent meant to include Type 1 aluminum coatings: (1) because such a coating arguably did not work at the time of the application; and (2) because if the patent applicant had meant to include Type 1 aluminum, he would have used “about 10% silicon by weight,” not “up to about 10% silicon by weight.” But Plaintiffs arguments beg certain questions to which AK Steel can provide no answer. If a Type 1 coating did not work, why was it included in the original application? What changed between the original application and the amendment that would justify excluding the only product that the original application was meant to include? These questions underline the conflict between Plaintiffs proposed construction and the prosecution history of the ’549 patent. Consequently, even though the Special Master’s construction results in the patent’s invalidity, the Court adopts it because it is the only one logically consistent with the intrinsic record. Plaintiff next claims that questions of fact remain on the issue of enablement for two reasons: (1) the Special Master wrongly considered documentary and other evidence created after the patent application; and (2) Plaintiffs expert reports create a question of fact. As to the first argument, an invention must be enabled by the patent specification at the time of the patent application, not at the time the patent is challenged. In re Mott, 539 F.2d 1291, 1296 (Cust. & Pat.App. 1976). In other words, the issue is what was known by an ordinary person skilled in the art as of the patent application filing date. This does not mean, however, that a court may never look to documentary evidence created at a later date in making its inquiry. It may, so long as that evidence is probative of what was commonly known at the time the patent application was filed. Plaintiff also argues that its expert evidence is sufficient to create a question of fact as to enablement. Specifically, the Joint Rebuttal Expert Report of Neil Birks and George St. Pierre states, “The Kilbane patent specification contains information sufficient to enable a person of ordinary skill in the art to practice the inventions claimed, using either Type 1 or Type 2 aluminum, without undue experimentation.” (Doc. # 207 Exh. 14 at 21.) This statement is followed by a brief analysis of how one with ordinary skill in the art would “fine tun[e]” a process that successfully coats stainless steel with Type 2 aluminum to successfully coat stainless steel with Type 1 aluminum. (Id. at 21-24.) The report concludes, “[T]he adjustments that may be required to switch from Type 2 to Type 1 were known, and their effects predictable, based on the information published in the relative field and the Kilbane specification, as of May 20, 1986.” (Id. at 24.) The Special Master rejected the expert report, finding that the report provided only conclusions without any factual support. The Court agrees. While the report details the chemical reactions involved in the coating process and how one might alter the process to permit coating with Type 1 aluminum, it fails to tell how these alterations would have been known by someone skilled in the art in 1986. Mere conclusions in an expert report are insufficient to support enablement. See In re Buchner, 929 F.2d 660, 661 (Fed.Cir.1991) (“An expert’s opinion on the ultimate legal issue [of enablement] must be supported by more than a conclusory statement.”). Furthermore, the expert reports contradict the express teachings of the patent specification, which states that Type 1 aluminum does not wet well to stainless steel. A person of ordinary skill in the art cannot be expected simply to ignore the patent specification when attempting to follow the patent. See Genen-tech, 108 F.3d at 1366-68 (holding that expert’s opinion on level of ordinary skill in the art fifteen years earlier cannot overcome patent specification and extrinsic evidence showing lack of enablement). This is particularly true where, as here, the plaintiff itself has been unable to make the claimed invention. See Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1375 (Fed.Cir.1999). 2. Noninfringement of Coating Bath Claims Plaintiff asserts that the Special Master erred in finding that Defendants’ product, which bears an aluminum coating containing 8.0 — 8.5% silicon by weight, does not infringe Plaintiffs patents, which claim aluminum coatings containing up to about 0.5% silicon by weight. Plaintiff argues that Defendants’ product infringes their patents both literally and through the doctrine of equivalents. a. Literal Infringement Plaintiff argues that if the Special Master had correctly construed the claims in the ’214 and ’135 patents and claims 2, 4, 6, and 8 of the ’549 patent, he would have then found literal infringement of the claims. The ’214 and T35 patents call for a coating metal “consisting essentially of aluminum.” The Special Master correctly noted that the phrase “consisting essentially of’ is a term of art in patent drafting and is meant to “exclude any product or process that contains an ingredient or step which is not recited in the claim, and which would materially change the basic and novel characteristics of the claimed invention.” (Doc. # 201 at 61 (citing PPG Indus, v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed.Cir.1998)).) Looking at the patent specification and prosecution history, the Special Master construed the claim to be limited to only those coating metals containing up to about 0.5% silicon. Plaintiff first argues that the Special Master should not have looked at the patent specification or prosecution history in construing the claims. This is incorrect. Claim language must be read consistently with the patent specification and prosecution history. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1357-58 (Fed.Cir.2000). Plaintiff also contends that even if the Special Master properly considered the patent specification and prosecution history, he incorrectly construed the claims in the ’214 and T35 patents. This is also incorrect, and the Court adopts the Special Master’s analysis of this issue. As to claims 2, 4, 6, and 8 of the ’549 patent, Plaintiff argues that the Special Master improperly limited their scope given the open-ended language of the claims. These claims are limited to strips “wherein the coating metal includes less than about 0.5% silicon by weight” and “wherein the aluminum coating metal contains up to 0.5% by weight silicon.” Plaintiff accepts the Special Master’s conclusion that the terms “includes” and “contains” “do[] not limit the inclusion of unrecited ingredients and steps” (doc. #201 at 71) and then argues that the additional 7.5 — 8.0% silicon found, in Defendants’ coating bath is merely an additional, unrecited ingredient. Claims 2, 4, 6, and 8 are explicit in their limitation of the amount of silicon in the coating bath, however. Consequently, considering additional silicon in the aluminum coatings to be an unrecited ingredient would contradict the express language of the claims and would render the limitations meaningless. b. Doctrine of Equivalents Plaintiff contends that Defendants’ aluminum coating, which contains between 8.0 — 8.5% silicon by weight, is equivalent to those claimed in Plaintiffs patents, containing up to about 0.5% silicon by weight. The essential inquiry in determining whether a patent is infringed under the doctrine of equivalents is, “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?” Warner-Jenkinson Co. v. Hilton Davis Chem., Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The doctrine of equivalents is not a license to ignore claim limitations, however. See Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 398 (Fed.Cir.1994). The limitation on quantity of silicon in the aluminum bath is clearly meaningful in the context of the patent, as the specification explicitly frowns on coating baths containing greater than 0.5% silicon by weight. But finding that an aluminum bath containing 8.0 — 8.5% silicon is the equivalent of an aluminum bath containing merely 0.5% silicon would render that limitation meaningless. See Conopco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556 (Fed.Cir.1994) (finding that a ratio of 162.9:1 in a process was not the equivalent of an “about 40:1” limitation). Plaintiff asserts, though, that finding that Defendants’ product is not equivalent to the product claimed in the patent effectively converts the statements of preference in the Kil-bane specification into a new claim limitation. This is not true. A steel strip may well exist which falls outside of the express claim limitations, but is nevertheless an equivalent of Plaintiffs claimed product. However, the Court agrees with the Special Master that an aluminum containing bath containing more than sixteen times the silicon claimed in the patent is not such an equivalent. 3. Noninfringement of Protective At-, mosphere Claims Plaintiff contends that the Special Master erred in three ways when he found that the protective atmosphere used in Sollae’s process did not infringe on Plaintiffs patents: (1) the Special Master improperly combined his analyses of the Boston and Kilbane patents; (2) the Special Master incorrectly found no infringement under the doctrine of equivalents; and (3) the Special Master should have considered Plaintiffs evidence that Defendants copied Plaintiffs process. With respect to the first asserted error, Plaintiff points to a conclusion in the report and recommendation: No reasonable jury could find, under the doctrine of equivalents, that the Sollac process contains an equivalent to the patents’ “protective atmosphere” of “at least about 95% hydrogen.” Therefore, it is recommended that summary judgment of noninfringement be entered for the Kilbane ’214 and ’723 patents and the Boston ’113 and ’645 patents. (Doc. # 201 at 56.) Plaintiff argues that the phrasing of this conclusion implies that the Special Master improperly analyzed the issues of infringement of the Kilbane and Boston patents together. Of course, the Kilbane ’214 and ’723 patents and the Boston ’113 and ’645 patents are unrelated and must be analyzed separately. Yet, the Special Master did just that: for each relevant section of the analysis, the Special Master looked to both sets of patents before making broad conclusions. (See, e.g., id. at 44 (“The importance of a low dew point also is clearly taught in each of the patents.”) (emphasis added).) The mere fact that he drew the same conclusions for each sets of patents does not indicate that he analyzed them together. Plaintiff next argues that the Special Master erred in finding that the protective atmosphere in Defendants’ process did not infringe the Boston ’113 and ’645 patents under the . doctrine of equivalents. The essential inquiry in determining whether a patent is infringed under the doctrine of equivalents is, “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?” Warner-Jenkinson, 520 U.S. at 40, 117 S.Ct. 1040. This inquiry has been framed in various ways by the Federal Circuit. Most notably, that court has applied the function-way-result test, which asks “whether the element in the accused device does substantially the same thing in substantially the same way to get substantially the same result as the claim limitation.” Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367, 1371 (Fed.Cir.2001). Courts have also considered the known interchangeability of two elements in determining equivalence. See Warner-Jenkinson, 520 U.S. at 36, 117 S.Ct. 1040. The Special Master found that the two atmospheres were not equivalent on three grounds. First, both patent specifications expressly state that even though various modifications can be made to the invention, the strip must pass through a protective atmosphere of at least about 95% by volume hydrogen. (Doc. # 201 at 46.) Second, despite Plaintiffs assertion that the atmospheres work in the same “way,” AK Steel’s process works by maximizing the concentration of hydrogen, a non-oxidizing gas, while Defendants’ process works by minimizing dew point, which also decreases oxidation. Third, holding that a 0.06% hydrogen atmosphere would be equivalent to a limitation requiring an atmosphere of at least about 95% hydrogen would effectively vitiate that limitation. AK Steel argues that the Special Master ignored the teaching of the Supreme Court in Wamer-Jenkinson by limiting possible equivalents as a result of statements made in the patent specification. Specifically, Plaintiff relies on the Supreme Court’s rejection of the argument that “equivalents must not only be known, but must also be actually disclosed in the patent in order for such equivalents to infringe upon the patent.” Warner-Jenkinson, 520 U.S. at 37, 117 S.Ct. 1040. This holding is unhelpful to AK Steel. The Special Master did not suggest that AK Steel could claim protection only for those equivalents disclosed in the patent. Instead, he found that AK Steel could not claim protection for a possible equivalent expressly disclaimed in the patent specification. Plaintiff also contends that Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251 (Fed.Cir.1989), in which the Federal Circuit found two fiber-optic wires to be equivalent under the function-way-result test, dictates a different result. Coming Glass is distinguishable from this case, however, as the patent specification in Corning Glass did not specifically exclude the alleged equivalent; Plaintiffs patents do just that. Coming Glass teaches, “What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case.” 868 F.2d at 1260. The particular circumstances in this case, as described by the Special Master, dictate that Plaintiffs protective atmosphere and Defendant’s protective atmosphere are not equivalent. Plaintiff also submitted a declaration by one of its experts, Dr. Birks, that states that the interchangeability of the two protective atmospheres was well known in the art. Plaintiff asserts that this declaration, coupled with the Joint Expert Report of Neil Birks and George St. Pierre (doc. #207 Exh. 20), creates a question of fact as to equivalence. The Special Master dismissed the expert report, noting that “AK argues that the Kilbane patents are “wrong’ with respect to the requirement of a 95% by volume hydrogen atmosphere.” (Doc. #201 at 51.) As noted above, the doctrine of equivalents does not embrace equivalents that are specifically disclaimed or criticized in the patent specification. SciMed, 242 F.3d at 1345^47. An expert opinion does not overcome this limitation. See Genentech, 108 F.3d at 1366-68 (holding that expert’s opinion on level of ordinary skill in the art fifteen years earlier cannot overcome patent specification and extrinsic evidence that shows lack of enablement). Finally, Plaintiff argues that the Special Master erred in not considering evidence that Defendants intentionally and improperly copied AK Steel’s process. The intent of the allegedly infringing party is irrelevant in applying the doctrine of equivalents. Warner-Jenkinson, 520 U.S. at 36, 117 S.Ct. 1040. Plaintiff puts forth its evidence of copying as proof that the differences in the processes are insubstantial. Evidence of copying is admissible for that purpose, and the Special Master erred in not considering it.. The Court, however, has examined Plaintiffs evidence of copying and concludes that it does not show that the differences between the parties’ processes are insubstantial and does not raise a question of fact whether Sollac’s process is equivalent to that claimed in Plaintiffs patents. III. CONCLUSION For the reasons set forth above, the Court adopts the Hardy Recommendation. (Doc. # 188.) Consequently, the Court DENIES Plaintiff AK Steel’s Motion To Compel Discovery Regarding Testing By Defendants’ Expert Witness Of Defendants’ Furnace Atmosphere. (Doc. # 106). The Court also adopts the Martens Recommendation, except as it conflicts with the Court’s opinion. Therefore, the various summary judgment motions of the parties are disposed of as indicated in the Martens Recommendation. (Doc. # 201 at 94-96.) IT IS SO ORDERED. REPORT AND RECOMMENDATION OF SPECIAL MASTER REPORT OF SPECIAL MASTER REGARDING MOTION BY PLAINTIFFS TO COMPEL PRODUCTION OF TECHNICAL DATA ... WITHHELD UNDER A CLAIM OF WORK PRODUCT IMMUNITY (ITEM NO. 20.01) Plaintiff, AK Steel Corporation (“AK”), filed Case No. 1 98 00690 (“No. 690”) on September 17, 1998 alleging patent infringement against two French Companies, Defendants Sollac and Uguine (collectively referred to as “Sollac”). Two United States Letters Patent are alleged to have been infringed. Plaintiff, Armco Inc. (“Armco”) filed Case No. 1 98 00804 (“No. 804”) on October 23, 1998 alleging patent infringement against the same two defendants. Four different United States Letters Patent are alleged to have been infringed. All six patents are entitled “Hot Dip Aluminum Coated Chromium Alloy Steel”. Subsequent to those filings, Armco was acquired by AK. Sollac timely answered the complaints in both cases and counterclaimed for a declaratory judgment of non-infringement in both cases. In addition, in case No. 804, Sollac also counterclaimed for: (1) declaratory judgment of patent invalidity and (2) declaratory judgment of patent misuse and unenforceability. Both cases were consolidated for discovery purposes on March 19, 1999. An important disputed issue of fact, said to be “central to this entire litigation”, is the composition of gasses in the defendants’ aluminized stainless steel processing line. Therefore, an important objective of discovery, particularly discovery by AK Steel Corporation (“AK”), has been the results of gas composition tests made during manufacturing runs. Pursuit of that objective has led to a number of discovery disputes including the specific dispute (Special Master Issue 20.01) which is presented here by Plaintiff AK Steel’s Motion to Compel Production of Technical Data and Information Pertaining to Three Gas Composition Tests Conducted on Defendants’ Line 2 Withheld Under a Claim of Work Product Immunity. In the course of discovery, it has been disclosed that there have been three tests of the composition of gasses in the number two processing line at the Sollac and Ugine (“Sollac”) facility which are claimed by Sol-lac to constitute attorney work product and to be immune from discovery. The three specific gas composition tests involved in this particular dispute were conducted on September 24 and October 20, 1999 and on November 15, 2000. The first of the three tests to be disclosed was the test conducted on October 20, 1999. The Special Master previously has ruled that certain redactions in a document related to that test are protected from disclosure by the attorney work product doctrine. That ruling was made on February 11, 2000 as supplemented on February 28, 2000 (Issue No. 1.09)(Deci-sion Regarding Two Document Redactions, attached as Exhibit A). The existence of the other two tests was disclosed by Sollac in response to an order of the Special Master which was issued in response to a motion to compel, originally filed by AK with the Court (Document 106 in Case 690 and 55 in Case 804) and subsequently referred to the Special Master (Document 135 in Case 690 and 84 in Case 804) and a “parallel” motion filed by AK with the Special Master (Issue No. 13.03). Substantially the same issue previously has been raised with Special Master Martens in conjunction with a Fed. R. Civ. Pro. 56(f) motion filed by AK. AK also has filed a more or less “omnibus” Motion to Compel Production of Documents Withheld by Defendants Under Claims of Privilege or Work Product (sometimes referred to by the parties as “the July 21 Motion”) (Issue 15.01). That motion, principally dealing with the attorney client privilege, is directed to documents listed on Sollac’s privilege log. It is not clear whether or not documents involving the three tests described above are found on the privilege log. It can be argued, as AK does, that the Issue 15.01 motion imports into the testing data dispute (Issue 20.01) the argument of waiver of privilege (attorney client and/or attorney work product) based upon the assertion by Sollac of the “advice of counsel rebuttal” (or defense). It is not necessary to address the Issue 15.01 dispute in this decision because the waiver argument will be addressed in the decision on this (Item 20.01) issue. The Item 13.03 order, noted above and attached as Exhibit B, was issued because AK was entitled to sufficient information to permit it to ascertain whether or not information relating to gas composition tests, about which a Sollac witness refused to testify in a deposition, is or should remain privileged. Sollac’s response to the Item 13.03 order, attached as Exhibit C, was considered to have provided sufficient information for AK to assess the claim of privilege, which it has done. Having done so, AK now has moved to compel the disclosure of documents related to all three of the disclosed tests (Item 20.01). AK’s motion is grounded on two arguments. The first argument states that AK is entitled to the gas composition test-documents because attorney work product immunity has been waived as to such documents. As noted above, the waiver is claimed to have arisen because of Sollac’s advice of counsel rebuttal to AK’s charge of willful infringement. The second argument is, essentially, a reiteration of arguments previously made in respect to Issue 1.09, namely that the documents are not work product immune under Fed. R. Civ. Pro. 26(b). This Report does not go beyond documents and information involving the three tests described above. With that limit in mind, the decision only addresses the explicit relief which is sought at pages 5 and 6 of AK’s supporting memorandum (which is reiterated almost verbatim at pages 16 and 17). The following is a description of the items of relief requested by AK and an explanation of the disposition of each item. 1. Plaintiffs seek the divulgence of any gas test information used by defendants’ counsel as a basis for any opinion given to defendants that the Sollac process does or does not infringe. On August 28, 1998, prior to the initiation of this litigation, one Russell Orkin, a patent attorney (not associated with Sol-lac’s trial counsel), provided Sollac with his opinion of non-infringement. That opinion is the only opinion (or evidence) which is to be offered by Sollac to support its advice of counsel rebuttal to AK’s claim of willful infringement. Sollac claims, without contravention, that it has provided to AK all attorney work product relating to the advice given by Orkin. Because the three gas composition tests at issue all post-date Orkin’s opinion and post date the filing of these law suits, the tests cannot be related to the advice of counsel rebuttal as of the date that the opinion was given or as of the date that this litigation was initiated. Nonetheless, AK contends that it is entitled to production .of all data and communications concerning the three gas composition tests at issue because' the tests could have provided a basis for some form of an opinion of some other counsel, presumably Sollac’s trial counsel, subsequent to the three tests and, therefore, subsequent to the Orkin opinion and subsequent to the initiation of this litigation. To be consistent, AK must argue, as it does, that all work product opinions of Sollac’s counsel (including the bases for such opinions) regarding the subject of infringement at any time are waived and must be disclosed. (See AK’s Reply Memorandum, pp. 29-30). The natural result of such an argument might ethically require, in most all similar infringement cases, the assertion by counsel of claims of willfulness in order to leverage relinquishment of attorney work product protection, particularly the protection from discovery of an attorney’s “mental impressions, conclusions, opinions or legal theories” which are solicitously guarded by the provisions of Fed. R. Civ. Pro. 26(b)(3). For this reason, if for none other, the better rule is that the waiver of the attorney-client privilege as to communications and documents relating to the advice of counsel rebuttal does not, in a case such as this one, waive the protection provided by the attorney work product doctrine. Handgards, Inc. v. Johnson & Johnson, 413 F.Supp. 926, 929 (N.D.Cal.1976). And, if there is to be such a waiver of attorney work product protection, it should be limited to the subject matter of the rebuttal and it should be temporally limited to the period prior to the time of the filing of the lawsuit. See Dunhall Pharmaceuticals v. Discus Dental, 994 F.Supp. 1202, 1204-05 (D.C.Cal.1998). For the reasons above, the attorney work product protection afforded the three gas composition tests at issue are not considered to have been waived by assertion of the advice of counsel rebuttal. 2.Plaintiffs seek divulgence of any documents listed on defendants’ Revised Privilege Log (Rev.2/16/2000) that pertain to the issue of infringement or non-infringement and which are not privileged or work product (or opinion work product). There is no apparent distinction between the bases upon which Sollae claims attorney work product protection for any one or more of the three gas composition tests at issue. Consequently, the reasons for upholding that protection in the case of Issue 1.09 are applicable to all three of the gas composition tests at issue. Therefore, it can be argued that it is unnecessary in this instance, to proceed beyond an analysis of the showing of substantial need, etc. required by Fed R. Civ. Pro. 26(b)(3). The concern over disclosure of counsel’s mental impressions, conclusions, opinions and legal theories (hereinafter “opinions”) would not be reached. However, if that analysis was to be made, Sollae has posited credible reasons for concluding that opinions of counsel are involved as stated in Defendants Opposition ... [Memorandum] at pp. 17-19. This issue is addressed further in paragraph 3 below. 3. Plaintiffs request an inspection in camera of all gas test information from the three tests described above to determine whether or not the information would result in the disclosure of an attorney’s legal “opinions”. While there is no apparent distinction between the three gas composition tests, as noted above, the decision made in the case of Issue 1.09 as to one of those tests was made after an in camera review of the document, portions of which are claimed to be protected by the attorney work product doctrine. That procedure has not been followed in the case of the documents disclosed in Sollac’s response to the Issue 13.03 order (Exhibit C attached). Accordingly, AK’s request is granted; and Sollae shall submit the documents, which are identified by Sollae in the response to the Issue 13.03 order, to the Special Master for in camera review within ten (10) days following the receipt by counsel of this Report. 4. Plaintiffs request the provision of an affidavit of counsel that the gas test information for the three tests has not been and will not be provided or disclosed (a) to any ordinary non-party witness or (b) to any expert non-party witness who will or may testify at trial on behalf of defendants. It is believed that such a representation has been made by Sollae in past proceedings; and it is requested that Sollae prepare and submit to the Special Master a draft order covering this issue which order can be included as an element in the final pre-trial order issued in this ease. 5. Provision of a “decision” (or statement) as to whether or not Mr. Varroy/Air Liquide and/or Mr. Houde/ AINF are or are not testifying experts which, if in the affirmative, calls into play the provisions of Fed. R. Civ. Pro. 26(f). It is the Special Master’s understanding that Masseurs Varroy and Houde have not been designated as expert witnesses within the time required to do so. (See n. 7, page 6 of Defendants’ Opposition .... [Memorandum] ). Accordingly, a negative representation is deemed unnecessary. The time for appeal of this Order, if it is to be appealed, will not commence until after a final Report is filed with the Court. A final Report will follow the in camera review to be conducted in accordance with this Report. Oct. 9, 2001. EXHIBIT A AK STEEL VS. SOLLAC AND UGINE, NOS. C-l-98-690 AND 804 DECISION REGARDING TWO DOCUMENT REDACTIONS (ITEM 1.09) Redactions have been made in the case of two documents produced by Sollac to AK Steel. The redactions are made under claim of “Attorney Work Product”, being a claim of privilege from disclosure of trial preparation materials. Both parties have briefed the issue. The first redaction (Doc. SL 008804) involves certain types of data as can be seen by comparison with Doc. SL0008824 (unredacted). The second redaction does not include data. The second redaction relates to counsel’s and/or the parties’ conclusions or intentions. AK Steel’s characterization of the redactions in paragraph 3 of its Memorandum is not entirely correct. It cannot be disputed that the redactions involve trial preparation materials, specifically documents, as “defined” in Rule 26(b)(3). It has been represented that the documents in question were prepared by Sollac or its representative at the request of and for the use of Sollac’s counsel in preparation of the defense of the pending action. AK Steel asserts that the redacted information is not protected by the work product privilege. The assertion is made based upon five separate, but somewhat overlapping arguments. The five arguments are discussed below, but not in the same order as presented by AK Steel for reasons that may be apparent. (In order to expedite this decision, full citations to authorities referred to in AK Steel’s Memorandum are not made in this decision. It is believed that the citations easily can be found in AK Steel’s Memorandum). We begin with AK Steel’s fifth (last) argument. The statement is made in the second to last paragraph of AK Steel’s Memorandum that “... a party may not use the work product privilege ... as a shield against discovery of information gathered in anticipation of litigation.” Such a broad statement simply is not correct, otherwise the provisions of Rules 26(b)(3) and (4) have no meaning whatever. The Raso case does not support such a statement. That case concerned the deposition of an adjustment company investigator. Raso affirms that documents are subject to the privilege unless substantial need is shown. Abruzzo and Quadrini both appear to involve testifying experts, as does Loctite. The first argument made by AK Steel is akin to the last argument discussed above. The first argument (beginning with the first full paragraph on page 2 of the Memorandum) posits that factual information is not protected by the work product doctrine. To paraphrase from the Primetime case, cited by AK Steel, “This analysis casts too wide a net.” Primetime specifically recognizes the protection accorded to documents by Rule 26(b)(3) and, further, recognizes that “a party cannot evade the protection afforded by the rule through the expedient of asking at a deposition, either directly or indirectly, for the content of documents... [e.g. the facts contained within the documents].” The Phillips Electronics case specifically protects against the disclosure of documents relating to patent infringement investigations, tests or analyses performed by plaintiffs employees for its in house counsel. The same rationale should apply, more vigorously, to outside counsel as in this case. The Lott case is not precisely in point “since a document or tangible thingfs] is not at the heart of the problem.” The phrase quoted from Joyner omits the words “by interrogatory and deposition” and is otherwise dicta. A related argument is the second argument which begins with the third full paragraph on page 2 of AK Steel’s Memorandum. It is argued that the Sixth Circuit does not recognize the privilege for documents generated by experts in connection with litigation. Neither Toledo Edison nor UMC Corp. appear to support such a broad proposition. Toledo Edison, by reversing the trial court’s denial of a claim of protection, recognized the protections afforded by Rule 26(b)(3) and (4), specifically as to a non-testifying expert. UMC Corp., a 1980 case, dealt with discoverability of documents constituting opinions held by an expert informally consulted in anticipation of litigation. That decision is not pertinent here. The quotation from Samuels is incomplete; and the protection from disclosure was extended to a non-testifying expert in that case. AK Steel’s argument is correct insofar as the materials referred to may not be subsumed under the protection afforded by Rule 26(b)(3). That is not the case. It is claimed, in this case, that the documents were prepared in anticipation of litigation by or for Sollac. AK Steel’s fourth argument begins with the last full paragraph on page 3 of its Memorandum. This argument invokes the “exceptional circumstances” relief from the privilege which is afforded in the case of non testifying experts. That relief is not in order here because there is no indication that an expert is involved, testifying or non-testifying. The appropriate test is “substantial need” under Rule 26(b)(3). That test requires a showing that AK Steel is unable to obtain the substantial equivalent of the “materials” by other means. That showing cannot be made as long as AK Steel has access to the process by which it can obtain full and adequate testing on its own terms. Documents which contain test data obtained by counsel (or at the request of counsel) from counsel’s client for counsel’s own use in preparation for trial is protected by the doctrine. The passage of time between two equivalent events, even on a “Planck scale”, can be said to defeat test equivalency (or “observability” as that word has been used). That self evident observation is insufficient to show “substantial need”. At this point, the only issue presented is the discoverability of the two redactions under the provisions of Rule 26(b)(3). Consequently, AK Steel’s third argument, which begins with the last paragraph on page 2, is moot. At least the argument is moot insofar as expert involvement in respect to the document as to which privilege has been claimed has not heretofore been called to the Special Master’s attention. The possibility of expert involvement is raised, for the first time, by AK Steel in the first full paragraph on page 3 of AK Steel’s Memorandum. That case, if true, is not pending before the Special Master. For the reasons above, Sollac need not produce the two unredacted documents. Feb. 28, 2000. EXHIBIT B SPECIAL MASTER HARDY’S AMENDED DECISION REGARDING DISCOVERY BY AK STEEL OF GAS OR GAS COMPOSITION TESTS CONDUCTED ON THE SOLLAC FURNACE AT MOUZON Special Master Hardy dictated the following decision to the parties in telephone conference calls: “Okay, we start with this decision regarding discovery by AK Steel of gas or gas composition tests conducted on the Sollac furnace at Mouzon. Paragraph 1 — Mr. Varroy, Air Liquide and the defendants each will respond in writing to the questions addressed to Mr. Varroy by Ms. Bullock at line 9, page 37 and line 3 page 88, the deposition of Philippe Varroy on May 16, 2000. Paragraph 2 — If any other tests other than the test of December 3, 1999 are listed in response to the first paragraph above, then as to each such test, including the test performed on October 20, 1999 (which is the subject of Issue 1.09), the following information will be provided by defendants: (a) the date or dates of each test; (b) at whose request the test was performed; (c) to whom all test results have been provided; (d) a description of each report and/or analysis prepared in respect to each test; (e) the author(s) of each report and/or analysis; and (f) a description of each claim of privilege if any and all facts relevant to such claim. Paragraph 3 — Defendants will produce all written or tangible gas or gas composition test data on the Sollac furnace at Mouzon which has been provided to any ordinary non-party witness or any expert non-party witness who will or may testify on behalf of defendants. Except as provided under Rules 26(a)(2) and 26(b)(4) of the Federal Rules of Civil Procedure, nothing in this paragraph 3 or the foregoing paragraph 2 requires a description or production of any trial preparation material which would involve the disclosure of mental impressions, conclusions, opinions, or legal theories of an attorney or other representative of a party concerning the litigation. Paragraph 4 — The data and the information provided in response to paragraph 1 through 3 above will be served on the plaintiff, on Special Master Hardy, and Special Master Martens on May 1, 2001. Paragraph 5 — Clarification of any of the matters set forth in paragraphs 1 to 4 above if deemed necessary shall be served on Special Master Hardy by April 25, 2001.” “Paragraph 6 — The data and information in response to paragraphs 1-3 above will cover the period January 1, 1997 to the present.” EXHIBIT C CONTAINS “HIGHLY CONFIDENTIAL” INFORMATION SUBJECT TO PROTECTIVE ORDER IN THE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF OHIO AK Steel Corporation, Plaintiff, v. Sollac and Ugine, Defendants. Armco, Inc., Plaintiff v. Sollac and Ugine, Defendants. Judge: Susan Dlott Magistrate: Jack Sherman Special Master: William Hardy DEFENDANTS’ RESPONSE TO INFORMATION REQUESTED IN SPECIAL MASTER HARDY’S DECISION REGARDING DISCOVERY BY AK STEEL OF GAS OR GAS COMPOSITION TESTS CONDUCTED ON THE SOLLAC FURNACE AT MOUZON Case Management Conference Item 13.03 Defendants Sollac and Ugine (“Sollac”), through counsel, submit this Response to the Information Requested in Special Master Hardy’s April 16, 2001 Decision, as amended on April 24, 2001, Regarding Discovery by AK Steel of Gas or Gas Composition Tests Conducted on the Sollac Furnace at Mouzon (the “April Decision”)., I. Response to Two Deposition Questions In paragraph 1 of the April Decision, Special Master Hardy stated that “Mr. Varroy, Air Liquide and the defendants each will respond in writing to the questions addressed to Mr. Varroy by Ms. Bullock at line 9, page 37 and line 3 page 88, the deposition of Philippe Varroy on May 16, 2000.” The specific questions at issue from Mr. Varroy’s deposition are as follows: Question 1: “Mr. Varroy, have you ever created any other reports related to gas analysis of the Sollac plant at any other time?” Varroy Depo. Tr. at 37, lines 9-11; and Question 2: “Mr. Varroy, other than the tests of December 3rd 1999 have you done any other tests of gases from the Sollac furnace at Mouzon?” Varroy Depo. Tr. at 88, lines 3-5. The responses of Mr. Varroy, Air Liquide, and defendants to these two questions are as follows: Response to No. 1: Yes. Response to No. 2: Yes. II. Additional Information Regarding Response to Two Deposition Questions In paragraph 2 of the April Decision, Special Master Hardy stated that: If any other tests other than the test of December 3, 1999 are listed in response to the first paragraph above, then as to each such test, including the test performed on October 20,1999 (which is the subject of Issue 1.09), the following information will be provided by defendants: (a) the date or dates of each test; (b)at whose request the test was performed; (c) to whom all test results have been provided; (d) a description of each report and/or analysis prepared in respect to each test; (e) the author(s) of each report and/or analysis; and (f) a description of each claim of privilege if any and all facts relevant to such claim. Since “other tests are listed in response to the first paragraph above ... including the test performed on October 20, 1999,” defendants respond to parts (a) through (f) as follows: (a) Test of September 24, 1999; Test of October 20, 1999; and Test of November 15, 2000; (b) Trial counsel for Sollac; (c) Trial counsel for Sollac, and Messrs. Vincent Eustache and Jean-Paul Hen-neehart (both of whom were employed by Sollac), for the tests of September 24, 1999 and October 20, 1999; and only trial counsel for Sollac for the test of November 15, 2000; (d) Reports of gas analysis were prepared for the tests of September 24, 1999 and October 20, 1999, respectively. Those reports described the locations along Mouzon Line 2 where gas analyses were performed, logistics of the tests, and conclusions and opinions reached for each of the tests. No report or analysis was prepared for the test of November 15, 2000; (e) Mr. Jean-Michel Casquín (of AINF) and Philippe Varroy (of Air Liquide) conducted the September 24, 1999 and October 20, 1999 tests and co-authored the reports prepared of those tests, as requested by trial counsel for Sollac. See also subparagraph (f) below. As no report or analysis was prepared for the test of November 15th, there was no “author” for that test; (f) The reports and/or results of the tests of September 24, 1999, October 20, 1999, and November 15, 2000 are immune from discovery by the attorney work product doctrine. Most of the patent claims at issue in the six suit patents include, as part of their claimed process, the process step of maintaining a cleaned steel strip in a protective atmosphere of at least about 95% by volume hydrogen. Consequently, after AK Steel and Armco filed the two underlying lawsuits, and at the specific request of defendants’ trial counsel because of those filings, defendants’ trial counsel directed that analyses be performed along Line 2 at Sollac’s Mouzon facility in France, where Sollac performs the process that AK accused of infringing the six AK Steel/Armco patents-in-suit. At defendants’ trial counsel’s instructions, two French gas testing companies (“AINF” and “Air Liquide”) were retained to test and analyze the gases present along Mouzon Line 2. Such tests were conducted by Mr. Casquín, an employee of AINF, and Mr. Var-roy, an employee of Air Liquide, on September 24th and October 20th, and the analyses were done on or shortly after the September 24th and October 20th tests. The results of the analyses were reported upon to defendants’ trial counsel in separate reports each co-authored by Messrs. Casquín and Varroy. The reports of the September 24th and October 20th tests were prepared for, and were provided to, Sollac’s trial counsel for trial preparation. The results of the September 24th and October 20th tests were disclosed only to Sollac’s trial counsel and to Sollac’s Mr. Eustache and Mr. Jean-Paul Hen-nechart. Neither the reports themselves, nor the data from and results of those test, have been provided or disclosed to anyone else, including “any person who may be used at trial to present evidence under Rules 702, 703, or 705 of the Federal Rules of Evidence.” Also pursuant to defendants’ trial counsel’s specific instructions, a different French gas testing company was retained in the Fall of 2000 to analyze gases along Mouzon Line 2. The testing by this other French gas testing company was conducted on or about November 15, 2000 by Mr. Gilíes Puech, an employee of the French gas testing company. The results of that test were communicated orally to defendants’ trial counsel. No report or analysis of the November 15th test was ever prepared. The data from and results of the November 15th test have not been provided or disclosed to anyone else, including “any person who may be used at trial to present evidence under Rules 702, 703, or 705 of the Federal Rules of Evidence.” As set forth herein, the tests of September 24th, October 20th, and November 15th were conducted by individuals with expertise in gas testing and analysis who will not be called to testify at trial. Moreover, none of defendants’ testifying expert witnesses (each of whom has prepared a Rule 26(a)(2)(B) Expert Report) knows anything about any of these tests. The reports and results of these tests are attorney workproduct. Moreover, information concerning the testing, the accuracy of the tests, the testing conditions, the locations along Mouzon Line 2 at which the analyses were performed, the logistics of the tests, the results obtained, and the conclusions reached from the tests, was done for trial counsel’s use only for use in trial preparation. This information reflects, inter alia, the legal theories, mental impressions, opinions, and conclusions of defendants’ trial counsel and the respective non-testifying expert witnesses concerning this litigation. As such, this information is opinion work product. If AK Steel wanted to, it could have conducted its own tests/analyses of Sollac’s accused process beyond the testing and analyses defendants voluntarily provided to AK’s counsel and experts from the December 3, 1999 run on Mouzon Line 2. Likewise, AK could have done such testing and analyses at any time during the nearly two years that fact discovery was pending in these two litiga-tions. For example, AK Steel could have asked to conduct its own testing/analysis on December 3, 1999, when AK Steel’s counsel and expert witness were present at Mouzon to observe Sollac’s accused process. Additional tests, results, and/or analy-ses, or their “substantial equivalents” under Fed.R.Civ.P. 26(b)(3), could have been obtained by AK Steel and/or Armco without undue hardship, either directly off of Mouzon Line 2 on December 3rd, or at another time during the extensive fact discovery period. AK Steel and/or Armco also could have conducted their own tests and/or analyses of Sollac’s accused process by “other means” under Fed.R.Civ.P. 26(b)(3). For example, AK could have tested and/or analyzed the gas samples that were taken and stored in gas bottles by Sollac on December 3, 1999 — specifically for use by AK Steel. Although the gas samples of the December 3, 1999 test have been made available to AK Steel for well over a year, and despite repeated written reminders and requests by defendants’ counsel to take possession of those gas bottles, AK Steel has refused to do so. AK Steel also could have retained its own gas experts