July 2012 Vol. 9, No. 2


Disqualification of Expert


Life Technologies Corp. v. Biosearch Technologies, Inc. (N.D.Cal. 2012) 2012 WL 1604710


In a patent dispute, was disqualification of defendants’ expert warranted where expert acted as a consulting expert for plaintiff in another matter covering allegedly related technology, but where expert billed only 11 hours in consulting with plaintiff on the other matter and received only $4,400, and did not sign a protective order or submit any written expert report for plaintiff? 


No.   Disqualification of an expert based on a prior relationship with the opposing party is warranted if:  (1) the opposing party has a confidential relationship with the expert and (2) the opposing party disclosed confidential information to the expert that is relevant to the current litigation.  (2012 WL 1604710, *5, citing Hewlett-Packard Co. v. EMC Corp. (N.D.Cal. 2004) 330 F.Supp.2d 1087, 1092).

The Court found that plaintiff had demonstrated that it had had a confidential relationship with the expert.   It did not matter that the relationship consisted of only 11 hours of consultation.  What mattered was that the substance of the interaction gave plaintiff a reasonable belief that it had a confidential relationship with the expert.  (Id. at *6.)

The Court further found, however, that plaintiff had failed to show that plaintiff had disclosed to the expert confidential information relevant to the current matter.  The current litigation “involves different parties, litigating different patents, and claiming different technologies.”  (Id. at *7, citation omitted.)

Neither fundamental fairness nor policy considerations warranted disqualification.  Plaintiffs failed to show how the expert’s revelation of plaintiff’s confidential information would prejudice plaintiff in this action, and policy considerations weighed in favor of denying the motion to disqualify.  “Disqualifying an expert based on unrelated confidential information he previously obtained from the opposing party would undermine, not promote, the integrity of the legal process.”  If the expert could be disqualified in this case, “parties in other cases might be tempted to create a purported conflict for the sole purpose of preventing their adversaries from hiring particular experts.”  (Id. at *9.)  Disqualifying the expert in this case could also impair his ability to practice his trade as an expert witness.  (Ibid.) 

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