Expert witnesses play a critical role in patent litigation, particularly where the subject matter is highly technical. The more specialized the technology, the more common it is for an expert witness to have had some prior relationship with the opposing party. To determine whether such an expert should be disqualified, courts analyze the relationship under a three-part test: (1) whether the relationship between the expert and the opposing party was confidential; (2) whether the confidential information that the expert obtained under that relationship is relevant to the present lawsuit; and (3) how granting or denying a disqualification motion may prejudice the parties or affect the integrity of the legal process. A recent opinion from the District of Oregon sheds light on this test.
In Tabian, an inventor and owner of a patent on voltage regulators, Tabaian, sued Intel Corporation. He alleged that the voltage regulators that powered Intel's microprocessors infringed his patent. For its part, Intel had worked with third-party suppliers to develop the various generations of its voltage regulators, starting in the 1990s. From 1999 to 2009, Tabaian's expert worked for two of these suppliers. During that time, the expert obtained confidential information regarding several generations of Intel's voltage regulators. Intel moved to disqualify him, and the district court granted the motion under the above-mentioned three-part test. The court analyzed each element as follows:
1. Under the first element, the court focused on whether it was reasonable for Intel to have disclosed confidential information to the expert and to have expected him to keep their communication confidential. The court found that the expert had received Intel confidential technical information under his employers' nondisclosure agreements with Intel. The expert also signed a record acknowledging receipt of such information. On that basis, the court found that Intel's disclosures and expectation of confidentiality were reasonable and, therefore, that Intel had a confidential relationship with the expert.
2. Under the second element of the test, the court focused on two aspects of the confidential technical information the expert received. The court first held that the confidential technical information was indeed the kind of information that could lead to disqualification. The court acknowledged that some courts have required receipt of privileged information to disqualify an expert but, nonetheless, adopted a broader approach taken by other courts. The court opined that it is unreasonable to expect an expert to mentally segregate information received through the confidential relationship from information received through discovery in the lawsuit. Furthermore, even if all of the confidential information were discoverable, it is impossible to know how the confidential information would inform or affect the expert's opinion. Exacerbating the potential prejudice here, the expert had participated in meetings and oral discussions that had not been recorded and thus would not be discoverable. Therefore, the court found the confidential information the expert received to be the kind of information that could disqualify him.
The court next found that the technical specifications that the expert had received contained information relevant to the infringement claims of the instant lawsuit. Tabaian argued that the expert merely received voltage-regulator specifications that set out interface parameters between a voltage regulator and a microprocessor, and that such technical specifications did not contain design information relevant to the patent claims. The court disagreed and found technical specifications and design information not to be mutually exclusive. The court opined that information needed for a voltage regulator to work with a microprocessor inherently concerns their design and functionality. Indeed, the expert's employer designed voltage regulators for Intel during his employment. This, in this court's view, supported the conclusion that the expert did in fact receive design information. That the expert worked on several generations of voltage regulators during his confidential relationship made it more likely that the specifications imparted design information.
3. Under the final element of the three-part test, the court found the expert's prior knowledge of confidential information would prejudice Intel in the lawsuit. In light of this analysis, the court disqualified the expert. Interestingly, the court noted that its ruling would not create an incentive for future litigants to form nominal relationships with multiple experts in the hope of preventing them from working with opposing parties in future litigation; or to cling to unproductive expert relationships for fear that their former experts could easily work with opposing parties. Because the confidential relationship between the expert and Intel naturally ended years before the parties engaged in the lawsuit, disqualifying this expert would not generally raise or lower the bar for disqualification based on a relationship with an expert created for litigation.
This case illustrates the test for disqualifying an expert based on a prior confidential relationship. It also highlights two different standards courts have adopted. When hiring an expert in highly specialized technical fields where such a relationship is more common, a party should closely scrutinize potential experts' work experience for relationship with the opposing party and, where a confidential relationship may exist, the nature of the information the expert received through the relationship.
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