by Cathy Tran Moses
Parties often retain experts to assist the trier of fact in understanding complex subjects or technologies. A number of district courts in the Ninth Circuit have recently faced motions to disqualify experts based on those experts’ alleged prior relationships with the adverse parties. The District of Oregon in Tabaian v. Intel Corp., No. 3:18-cv000326, 2018 WL 4566257 (D. Or. Sept. 22, 2018), and other district courts in this circuit, have confirmed that courts tend to weigh the following three considerations in determining whether an expert should be disqualified in these circumstances: first, whether there was a confidential relationship between the party and the expert; second, whether the information previously disclosed by the adverse party to the expert was relevant to the pending litigation; and third, the relative prejudice to the parties and the impact of disqualification on the integrity of the legal process. The Tabaian Court’s decision, and the other decisions discussed below, provide helpful insight as to this analysis and certain evidentiary and procedural considerations that courts may find relevant in deciding these motions.
The Tabaian Decision
In Tabaian, the plaintiffs alleged that Intel’s Fully Integrated Voltage Regulator (FIVR) technology infringed their patent. Intel moved to disqualify the plaintiffs’ expert, Mike Walters, on the basis that from 1999 to 2009, Walters worked for two third-party supplier companies that had helped Intel develop a predecessor technology (IMVP) that Intel claimed led to the FIVR technology. Both of Walters’ prior employers had non-disclosure agreements with Intel. Intel presented the court with a declaration by an Intel engineer stating that Intel had provided Walters with many confidential documents relating to the prior IMVP technology.
The plaintiffs did not dispute that Walters had been employed by the supplier companies. They also admitted that Walters had been privy to Intel technical specifications under various non-disclosure agreements. Instead, the plaintiffs argued that none of the three factors identified above supported disqualification. First, the plaintiffs contended that Walters was not in a confidential relationship with Intel because he was never an Intel employee or consultant. The court found the lack of an employment relationship was not dispositive, observing that prior case law made clear that the “primary reason courts look for a confidential relationship is to determine whether it was reasonable to divulge confidential information to the party to be disqualified.” Thus, the focus “is on the reasonableness of the confidential disclosure at the time it was made.” Id. at *3. It was not relevant whether the party actually employed the expert. Because it was reasonable for Intel to disclose confidential information to Walters’ employers during the course of Intel’s relationship with those companies, and because Walters was bound by confidentiality restrictions as an employee of those companies, the court concluded that Intel had established a confidential relationship between it and Walters.
The court also rejected the plaintiffs’ argument that the information Walters would have obtained from Intel would be produced in discovery in any event. The plaintiffs cited to several district court cases that the court found distinguishable, including a Kansas district court opinion, Sarl v. Sprint Nextel Corp., No. 09–2269–CM/DJW, 2013 WL 501783 (D. Kan. Feb. 8, 2013). Sarl described two divergent lines of disqualification cases: those providing for the disqualification of experts who gained an adversary’s confidential information that was not necessarily attorney-client privileged communications or work product, and those that limited disqualification only to those situations where the expert received attorney-client privileged or work product information.1 In the court’s view, the cases in the second group did not appreciate that an expert who has received “confidential technical information is likely to be unable to segregate information obtained in the context of the confidential relationship, and opinions based on that information, from information produced in discovery.” See Id. at *5. Even if all of the confidential information that Walters received was discoverable, “it is still impossible to know how the information he received in the context of his confidential relationship has informed his opinions on IMVP technology.” Id.
The court also held that the information received by Walters was relevant to the litigation. The plaintiffs characterized the information that Walters received from Intel as “technical” or as “specifications,” and Intel described it as design-related. However, the court did “not view these terms in such black or white concepts.” Id. at *8. It was “reasonable to conclude that the provision of specifications and technical information is capable of transmitting technological design concepts and information.” Id. The court concluded that the “technical” information “imparted IMVP design information,” and that Intel had met its burden of establishing that the technical information disclosed to Walters was relevant.
Finally, with respect to the last factor—prejudice and impact on the integrity of the system—the court noted that the case was “at a relatively early stage,” because it had been filed only months earlier. The court also had extended case deadlines at the hearing on the disqualification motion, including extending the deadline to file infringement contentions. In light of those facts, plaintiffs “will suffer relatively little prejudice by having to locate a new expert.” Id.
With respect to whether disqualification would affect “the integrity of the legal process,” that also did not weigh against disqualification. The court observed that as to this issue, “courts look to the incentives that would be created by the grant or denial of disqualification of an expert.” Id. at *10. Walters’ relationship with Intel “preexisted this litigation and ‘came to a natural end’ before the litigation commenced.” Id. To the court, that fact made it “unlikely that ‘ill incentives,’ to either retain ‘an expert solely for the purpose of preempting access to that expert by opposing counsel, or to fail to withdraw a previously designated expert while litigation is pending for fear that the party’s confidential information would be become available to its adversary,’ will occur.” Id.2 The court ultimately decided that Intel had met its burden as to all three factors of the test and disqualified Walters.
Other district courts have approached expert disqualification motions with the same three-part rubric, but reached different conclusions and denied the motions to disqualify. In United States v. Garcia, 2018 WL 4613193 (W.D. Wash. Sept. 26, 2018), the defendant sought to disqualify a translator whom defense counsel had once contacted but whom the government ultimately retained. The court held that the defendant had not established a confidential relationship where the defendant had not paid the expert a fee or retained the expert, no formal confidentiality agreement existed between them, and the defendant did not provide documents to the expert. While the defendant claimed that a single email exchanged with the translator established a confidential relationship, he did not provide the text of the email to the court, or describe what defense counsel shared with her. The defendant represented only that the email to the consultant stated what “the theory of the defense was,” without providing any more information. In denying the motion to disqualify, the court concluded that even if the defendant had shown the existence of a confidential relationship, he had not shown how he would be prejudiced if the expert were allowed to testify.
In In re Bard IV Filters Prods. Liab. Litig., 2017 WL 6603471 (D. Ariz. Dec. 21, 2017), the District of Arizona denied a disqualification motion in a multi-district litigation involving thousands of personal injury cases against several Bard entities. Bard sought to disqualify medical experts designated by the plaintiffs on the basis that they merely worked with another doctor who had served as a consultant to Bard. The court’s denial was largely due to a lack of a confidential relationship or evidence that confidential information had been transmitted. The court held that Bard had not shown that the consultant had shared confidential Bard information with his colleagues. Importantly, the consultant and his colleagues each provided sworn declarations stating that the consultant never shared confidential information with them. Bard did not provide any evidence to the contrary.
With respect to the third factor, the court in In re Bard noted that disqualification of the colleagues would “seriously prejudice plaintiffs at this late stage of the litigation,” because discovery had closed and expert motions had been filed. Therefore, if the plaintiffs’ experts were disqualified, that “would mean that [p]laintiffs must proceed without their area of expertise, something the [c]ourt is not willing to require in the absence of evidence that [d]efendants have been disadvantaged in some way.” Id. at *4.
The divergent conclusions reached by the district courts in Tabaian, Garcia, and In re Bard shed light on circumstances that courts may deem relevant in deciding expert disqualification motions. At least one important distinction among the cases appears to have been the evidentiary showing that the parties made in establishing or rebutting that a confidential relationship existed and that the expert had obtained the movant’s confidential information. In Tabaian, it was not disputed that the expert, Walters, had received Intel’s confidential information. Instead, the court examined more nuanced questions, such as the legal impact of the fact that Walters was not an Intel employee at the time, or whether the confidential information that he had learned related to the infringing technology. In Garcia and In re Bard, there seemed to be a lack of evidence that the experts had learned the affected parties’ confidential information and were in a confidential relationship with the movants. Indeed, in In re Bard, the experts provided declarations stating that they had not obtained any of the movants’ confidential information.
Other potentially dispositive differences among the cases was the procedural posture in which the parties found themselves at the time of the motions to disqualify, and whether the opposing party would be left with (a) sufficient time to replace the expert and (b) the means to test any expert testimony that the movant planned to offer. In Tabaian, trial was still months away, and the court had just moved continued deadlines at the hearing on the motion. In addition, Intel pointed out that the plaintiffs had reviewed Intel’s technical documents and taken a detailed deposition of its lead FIVR designer. In contrast, in In re Bard, discovery had closed and expert motions had been filed. If Bard’s experts were disqualified at that time, Bard would likely not be able to replace them and their area of expertise.
The issue of expert disqualification can be critical. On occasion, there may only be a limited number of experts who are qualified to provide expert testimony concerning a particular subject. Parties in federal court proceedings in this circuit therefore should remain mindful of the evidentiary and procedural considerations discussed in these cases when litigating either side of the expert disqualification question.
Cathy Tran Moses is a senior counsel with Cox, Castle & Nicholson LLP in Irvine, specializing in complex business litigation and employment litigation. She can be reached at email@example.com.