Patent Lawyer Blog
In a previous litigation involving ZTE (but not the plaintiff), ZTE entered into a consulting arrangement with Dr. Madisetti. ZTE asserted that ZTE provided Dr. Madisetti with confidential information under the consulting agreement. When the plaintiff in this case, Bell Northern Research (“BNR”) retained Dr. Madisetti as an expert against ZTE, ZTE moved for a protective order to preclude BNR from using Dr. Madisetti as an expert.
ZTE initially asserted that the terms of the Consulting Agreement prohibited Dr. Madisetti from serving as an expert for BNR in this case. BNR responded to that argument that the Agreement is no longer valid and Dr. Madisetti’s expertise in the current litigation would not involve products at issue in the previous matter.
The court agreed with ZTE, noting that the Consulting Agreement provided that it would terminate after the longest of three distinct time periods. “Though two years have passed from the effective date of the Agreement, the latter two time periods are not yet complete. First, Dr. Madisetti has not necessarily completed all work performed under the agreement, because the InterDigital District Litigation remains stayed, and there is a chance that more claims may arise. Second, because the InterDigital District Litigation is currently stayed and not complete—meaning the requisite one-year period following the close of that case has not yet begun—the agreement remains in effect. While BNR is correct that the InterDigital District Litigation has been stayed for a long time and that ZTE has advocated for the litigation to end, the fact remains that the litigation has not ended and therefore, the Consulting Agreement between ZTE and Dr. Madisetti remains in effect.”
In addition, the court determined that even if the Consulting Agreement did not expire, BNR should still be precluded from using Dr. Madisetti. The court explained that “[t]he first consideration is whether a confidential relationship existed between” ZTE and Dr. Madisetti, which “may be shown by the existence of a formal confidentiality agreement.” Broadcom Corp. v. Emulex Corp., 2010 WL 11465478, at *1 (C.D. Cal. April 5, 2010) (citing Hewlett-Packard Co., 330 F. Supp. 2d at 1093). The court found that there “is a confidential relationship between ZTE and Dr. Madisetti because the Consulting Agreement remains in effect.” Broadcom Corp., 2010 WL 11465478, at *2 (holding that “[t]here c[ould] be little dispute” that a confidential relationship existed when the expert and moving party entered into a formal confidentiality agreement).
After detailing that Dr. Madisetti had analyzed various ZTE cellular products, among other things, that overlapped the evidence in this case, the court concluded that “[t]he information Dr. Madisetti has access to from the InterDigital Matters constitutes confidential information because it includes information within the scope of attorney-client privilege or the attorney work product doctrine, and information that involves litigation strategies, strengths, and weaknesses. See, e.g., Pellerin, 2012 WL 112539, at *3 (finding the expert had access to confidential information based on the moving party’s testimony that the expert had “confidential information pertinent to the litigation at issue.”); Alien Technology Corp., 2007 WL 4261972, at *2 (holding that confidential and privileged information was disclosed when the expert “was knowledgeable of [the party’s] product line, its future strategies, and its legal and intellectual planning.”).”
The court found that this confidential information provided to Dr. Madisetti was relevant to the technology, products and patents at issue in this case and, therefore, BNR should be precluded from retaining Dr. Madisetti has an expert witness.
Bell Northern Research, LLC v. ZTE Corp., Case No. 18cv1786-CAB (BLM) (S.D. Cal. April 12, 2019)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.