On October 18, 2012, ALJ E. James Gildea issued the public version of Order No. 15 (dated September 20, 2012) granting Complainant Immersion Corporation’s (“Immersion”) motion to preclude Respondent Motorola Mobility, Inc’s (“Motorola”) expert from serving in the investigation and accessing Immersion’s confidential business information (“CBI”) in Certain Mobile Electronic Devices Incorporating Haptics (Inv. No. 337-TA-834).

According to the Order, Immersion moved to disqualify Dr. Vincent Hayward from serving as an expert for Motorola based upon Dr. Hayward’s nine year employment with Immersion and service on Immersion’s Technical Advisory Board until February 10, 2012, which was three days after Immersion filed its Complaint in the investigation.  In particular, Immersion argued that Dr. Hayward received confidential information regarding the technologies at issue in the investigation and regarding Immersion’s business strategies and, therefore, “it is not realistic to believe that Dr. Hayward can serve as a consultant or expert for Motorola and separate in his mind the confidential materials and information to which he was exposed during the twelve years he was associated with Immersion.”  Immersion also noted that Dr. Hayward is currently serving as a scientific advisor to Tactile Labs, Inc. (“Tactile”), a company that develops haptic technologies. 

In opposition, Motorola argued that “prior employment is not a disqualifying factor under the Protective Order and the proper test is whether the expert is currently employed by an interested party while serving as a consultant in an investigation.”  As to Dr. Hayward’s employment at Tactile, Motorola noted that Dr. Hayward began working at Tactile while he was still employed by Immersion and that Immersion “apparently had no concerns about Dr. Hayward’s ability to maintain the confidentiality of Immersion’s CBI during that time.”  As to prejudice, Motorola argued that Immersion is already under an obligation to provide relevant CBI to Motorola and, thus, Immersion will suffer no prejudice if Dr. Hayward is also independently aware of this information.  Further, Motorola asserted that it will be prejudiced if Dr. Hayward cannot serve as an expert because there are only a limited number of experts in the field of haptics and most have had some past experience with Immersion.     

Having considered the parties arguments, ALJ Gildea granted Immersion’s request, agreeing with Immersion that it is not realistic to believe that Dr. Hayward can “separate in his mind the confidential materials and information to which he was exposed” during his association with Immersion, and that this potential conflict of interest “outweighs the competing policy objectives of ensuring that Motorola has access to an expert with specialized knowledge of its choosing, the right of Dr. Hayward to pursue his profession, and preventing future litigants from easily disqualifying experts.”  In particular, the ALJ noted that Dr. Hayward had received CBI (after signing multiple confidentiality agreements) regarding Immersion’s ability to defend its intellectual property and “how Immersion could secure future IP and work the legal channel to monetize its basic haptics assets and strengthen its marketplace position.”  As to Motorola’s arguments regarding the sufficiency of the Protective Order to quell Immersion’s concerns, ALJ Gildea determined that “Motorola’s exclusive reliance on the Protective Order is misplaced and ignores the extensive case law regarding disqualification of experts who have had a previous confidential relationship with and received confidential information from a party.”  Lastly, the ALJ noted that Motorola provided no evidence to support its assertion regarding the limited number of experts in the field and, in any event, Dr. Hayward had significantly more than “some past experience with Immersion,” thus necessitating his disqualification.