Can counsel disqualify a patent expert witness by merely having the expert sign a non-disclosure agreement (NDA)?
The court, in ZIPTRONIX, INC. v. OMNIVISION TECHNOLOGIES, INC., Dist. Court, ND California 2013, said NO.
The court stated the law:
Although courts have declined to use a brightline rule to determine whether an expert witness should be disqualified, see, e.g., Koch Ref. Co., 85 F.3d at 1181, they have articulated general principles. In particular, disqualification of an expert is warranted based on a prior relationship with an adversary if (1) the adversary had a confidential relationship with the expert and (2) the adversary disclosed confidential information to the expert that is relevant to the current litigation.
The court rejected the attempt to disqualify the expert and stated:
In November 2010, Plaintiff and Ferrans entered into a non-disclosure agreement (“NDA”). Iams Decl. Ex. A. Plaintiff argues that it is clear from the NDA that Plaintiff and Farrens entered into a confidential relationship, and that Plaintiff “retained” Farrens. However, the NDA is not a retainer agreement, and states that it governs only “discussions and activities that Ziptronix . . . have or will have with Dr. Sharon Farrens, . . . for the purpose of providing consulting services to Ziptronix related to certain scientific, technical and business matters. . . .” Iams Decl. Ex. A at 1. The NDA does not cover fees for services, nor does it give any indication about the scope of any retention.
Further, the subsequent contacts between Plaintiff and Farrens do not show a confidential relationship. Farrens states that after signing the NDA, Plaintiff never gave her any confidential information, never gave her any consulting work, and did not tell her what patents were at issue. Farrens Decl. 4. Plaintiff does not dispute that it did not give Farrens any confidential information. After signing the NDA in November 2010, Farrens contacted Plaintiff in January 2011, but Plaintiff did not get back in touch with her. Farrens Decl. 7. In August 2012, Dr. Farrens contacted Plaintiff again. In that August 9, 2012 email, Farrens stated: “Will you still be needing my services at any time? I would need to know an estimation of timing in order to plan my consulting hours. To date, of course, we have not had any work and perhaps you will no longer need my services.” Iams Decl. Ex. C. Plaintiff’s counsel did not return Ferrans’ email until approximately three weeks later. In the meantime, having not heard from Plaintiff, Ferrans signed a retainer agreement with Defendant Taiwan Semiconductor Manufacturing Company.
Under the totality of the circumstances, including the dearth of contact between Plaintiff and Ferrans over the course of almost two years, this factor weighs against disqualification.