Takeaway: Disqualification of an expert is a drastic remedy that requires the moving party establish that it is objectively reasonable to believe that it had a confidential relationship with the expert, and that it disclosed confidential information to the expert that is relevant to the current proceeding.

In its Order, the Board ordered that Patent Owner is authorized to file a motion to disqualify Petitioner’s expert Dr. Suryanarayanan on the basis of conflict of interest. Petitioner had filed a Petition for inter partes review of claims 1-9 of the ‘190 patent, which was supported by the Declaration of Dr. Suryanarayanan. After trial was instituted, Patent Owner filed an objection to the Suryanarayanan Declaration. The Board held a telephonic conference, and then issued this written order.

Patent Owner asked the Board to “strike the Suryanarayanan Declaration in its entirety in view of an alleged conflict of interest.” According to Patent Owner, “Dr. Suryanarayanan served as a consultant for Patent Owner, and, in that role, had access to Patent Owner’s confidential information, as well as information protected by attorney-client privilege and the work-product doctrine.”

Patent Owner also contended that Dr. Suryanarayanan prepared a lengthy, confidential report for Patent Owner, characterizing its bendamustine hydrochloride formulations. Patent Owner argued because Dr. Suryanarayanan cannot compartmentalize the confidential and protected information, he may knowingly or unknowingly use such information in rendering his opinion as an expert for Petitioner in this proceeding. As a result, Patent Owner seeks to strike the Suryanarayanan Declaration and disqualify Dr. Suryanarayanan from participating in this proceeding.

In response, Petitioner criticized Patent Owner for not raising this issue until after the Board instituted trial. Moreover, the consulting agreement was between Patent Owner and the University of Minnesota, not Dr. Suryanarayanan. Petitioner further argued that a report Dr. Suryanarayanan allegedly prepared for Patent Owner “was technical in nature and did not contain any privileged information.” Finally, it was argued that any relationship between Dr. Suryanarayanan and Patent Owner “ended many years ago.” Patent Owner replied and represented that the information is relevant to certain challenged claims, and that communications with Dr. Suryanarayanan “generally related to the patent-at-issue, but declined to elaborate, asserting attorney-client privilege.”

“Disqualification of an expert is a drastic measure we hesitate to impose except when absolutely necessary.” See Lacroix v. BIC Corp., 339 F. Supp. 2d 196, 199 (D. Mass. 2004).

When faced with a motion to disqualify an expert, district courts generally apply a two-prong test to determine (1) whether it is objectively reasonable for the moving party to believe that it had a confidential relationship with the expert; and (2) whether the moving party disclosed confidential information to the expert that is relevant to the current proceeding. Id. at 199–200. Courts may disqualify an expert only if the answers to both inquiries are affirmative. Mayer v. Dell, 139 F.R.D. 1, 3 (D.D.C. 1991).

Patent Owner bears the burden to establish that both prongs are met.

The Board stressed that they “will not disqualify an expert based on conclusory statements.” Patent Owner “must support its motion with specific evidence and on-point legal authorities.” The Board also cautioned Patent Owner that to the extent that Patent Owner intends to wield any communication between Patent Owner and Dr. Suryanarayanan “as a sword to support its disqualification motion, Patent Owner cannot hide behind the shield of attorney-client privilege and refuse to reveal the specifics of the communication.” See In re EchoStar Commc’n Corp., 448 F.3d 1294, 1302 (Fed. Cir. 2006). Moreover, “Patent Owner must also address the timeliness of bringing the conflict issue to our attention.” But the Board repeated, as “expressed during the conference, it is highly unlikely that we will strike the Suryanarayanan Declaration in its entirety.” The Board encouraged the parties to work out another, mutually acceptable resolution and, if no agreement can be reached, the Patent Owner should “propose realistic reliefs in its motion” and “Petitioner shall, in its response indicate whether it would accept any of the proposals.”

The Board authorized Patent Owner to file its motion to disqualify Dr. Suryanarayanan.

Agila Specialties Inc., et al. v. Cephalon, Inc., IPR2015-00503

Paper 13: Order on Conduct of the Proceeding

Dated: August 19, 2015

Patent: 8,436,190 B2

Before: Linda M. Gaudette, Jacqueline Wright Bonilla, and Zhenyu Yang

Written by: Yang