Magistrate Judge Gabriel Gorenstein rejected plaintiffs Endo Pharmaceuticals Inc. and Grünenthal GMBH’s (“Endo’s”) objection to defendant Par’s expert witness, Professor Hamid Omidian, receiving Endo’s confidential information. Endo is suing Par alleging infringement of patents directed to aspects of abuse-proof controlled-release opioid formulations because Par filed an abbreviated new drug application, with a paragraph IV certification, seeking approval to market a generic equivalent of Endo’s OPANA® ER (oxymorphone hydrochloride) before the currently-scheduled expiration of those patents.

Endo asserted that because Professor Omidian researches abuse-deterrent dosage forms, has pending patent applications in this field, and is employed by a university that seeks to license patented technology, he should be barred from receiving any of Endo’s confidential information, effectively disqualifying him as Par’s expert.

The court found that Endo did not meet its burden of showing that “the disclosure of confidential information will result in ‘a clearly defined and very serious injury.’” The court reasoned that “it is normal . . . for experts to conduct research in the fields for which their expertise is sought. . . . Where an expert is barred by a court, the expert typically either consults with or is employed by a business that is in competition with the party providing the information.” In addition, the court found that neither Professor Omidian nor his university employer manufactures or sells pharmaceuticals, nor has either of them sought a licensing agreement with a company that competes with Endo. Moreover, Endo did not identify any of its trade secrets or other confidential information that it feared Professor Omidian might use in his research.

Case: Endo Pharm. Inc. v. Par Pharm. Co., No. 12 Civ. 9261 (TPG) (GWG) (S.D.N.Y. Mar. 27, 2014)