HP's "Stunning" and "Arrogant" Restrictions on Plaintiff's Expert Denied Where HP Sought to Preclude Expert from Working in Similar Field or Against HP for Several Years After Trial

November 9, 2011

In a patent infringement action pending in the United States District Court for the District of Colorado, one of the defendants, Hewlett-Packard ("HP") moved for a protective order with respect to the designation of one of plaintiff's experts. Plaintiff contended that HP infringed certain patents held by plaintiff by making and selling products that use multiple condition code registers, such as printers. HP contended that the accused products often incorporate or integrate third party technology or components and therefore HP had in its possession, custody or control of third party confidential information in the form of documents and source code.

The plaintiff notified HP that its expert would inspect the source code. HP objected to the expert's proposed source code inspection contending that it would not produce the source code unless there was protection for third-party confidential information. HP also demanded that the expert agree not to work for non-practicing entities and not to perform work adverse to HP for several years after trial of the case. "HP asks the Court to add provisions to the Amended Protective Order that require [plaintiff's expert] to attest that he is not working for any entity in a capacity of reviewing patens or products, services, or targets for non-practicing entities, other than as a result of this litigation, and that he will not do so for four years after trial of this lawsuit" HP also sought to preclude the expert from working on the prosecution of any patent directed or related to the field of computer processor architecture for a period of four years following trial and not to perform any work adverse to HP for a period of three years following trial.

The court did not think much of these restrictions, calling them "stunning" and arrogant. "The breadth and scope of these proposed 'assurances' is stunning. In essence, HP asks that in exchange for being permitted to work as an expert for the opposing party in a patent infringement lawsuit, the expert agree not to do any work on patents in the field for four years after trial. Setting aside the arrogance of the request, HP has failed to sufficiently explain why these assurances are needed to protect its confidential information."

HP's contention that the expert's work would lead to more lawsuits because the expert would identify targets for additional patent infringement lawsuits and that his "consultations can grow into lawsuits where he is rehired" was given no weight by the court. "HP has failed to identify a meaningful basis for preventing [plaintiff's expert] from working as an expert witness for four years after trial. The assurances sought by HP require unprecedented judicial interference in selection and employment of individuals who accept work as expert witnesses."

As a result, the court found that HP's restriction were unduly prejudicial to the expert and to the plaintiff. The court was also concerned that such restrictions would deprive a party of its chosen expert and "may also seriously limit the available pool of expert witnesses." Accordingly, the court denied the assurances sought by HP as the plaintiff's right to an expert of its choosing outweighed HP's interest in protecting confidential information.

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HP's request for assurances clearly backfired as they were too extreme in this case. Less extreme, more limited assurances, such as a narrow field of patent prosecution, may have worked but such broad assurances as these had little chance of success.

Biax Corporation v. Brother International Corporation, Case No. 10-CV-03013-PAB-KLM (D. Col. Nov. 1, 2011)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.