Trustees of Boston University v. Everlight Electronics Co., Ltd., C.A. No. 12-11935, -12326, -12330, Order Re: Plaintiff’s Motions to Disqualify Expert and to Disqualify Counsel (D. Mass. Jan. 17, 2014) (Saris, D.J.) [Disqualification].

In this patent infringement suit, Trustees of Boston University (“BU”) moved to disqualify Dr. Joan Redwing as expert for defendants by arguing that her role as a judicial technical advisor in a separate case involving the same patent creates a conflict of interest. BU further sought to disqualify defendants’ counsel, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, because the firm retained Dr. Redwing and, thus, ratified her ethical violations. The Court denied both motions.

In 2002, Dr. Redwing was appointed to act as a neutral technical advisor in connection with a Markman hearing involving the patent-in-suit in the Eastern District of North Carolina. In that role, Dr. Redwing did not testify, author reports, give deposition testimony, or communicate with any of the parties. Although Dr. Redwing did review documents in connection with her advising of the Court, she does not recall the substance of the documents, all of which were destroyed when the case concluded in November 2002. In total, Dr. Redwing billed 61 hours of her time to the matter and she was paid from an escrow account funded by both parties.

Judge Saris acknowledges that “Federal courts have the inherent power to disqualify experts;” however, she found that disqualification was not warranted here. First, there was no evidence to suggest that a confidential relationship existed between the patent owner and Dr. Redwing. Indeed, Dr. Redwing never communicated or was deposed by plaintiff. She was not called as witness and, in fact, was barred from testifying. Second, BU failed to show that it disclosed any confidential information to Dr. Redwing during the course of the earlier lawsuit. Given that BU could not show a confidential relationship existed or that confidential information had previously been disclosed to Dr. Redwing, the Court denied BU’s motion to disqualify.

Similarly, Judge Saris denied BU’s motion to disqualify counsel as that motion was premised on Dr. Redwing’s alleged underlying conflict of interest.