On June 13, 2012, ALJ Robert K. Rogers, Jr. issued Order No. 8 granting Respondents Intersil Corporation, Zilker Labs LLC, and Techwell LLC’s (collectively, “Respondents”) motion to preclude Complainant Microchip Technology Incorporated (“Microchip”) from providing its expert with access to confidential business information in Certain Semiconductor Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-840).
According to the Order, Respondents objected to Microchip’s expert, Dr. Marwan Hassoun, on the grounds that (1) he is involved in two businesses that evaluate intellectual property portfolios, analyze potential infringement, and trade in intellectual property rights in the field of semiconductor technology, and could be in a position to use information he learns about the structure of Respondents’ products to determine whether to purchase or assert a patent in the future that he believes reads on Respondents’ products; and (2) he refused to provide any pertinent details for at least five of his prior expert witness engagements (e.g., name of the case, venue, party retaining him, and general description of his work). Microchip countered that even if Respondents’ bases for objection were supported by the language of the Protective Order (which Microchip disputed), Dr. Hassoun’s businesses are not related to the subject matter of the investigation, and his curriculum vitae complies with Ground Rule 6. Further, Microchip responded that nondisclosure agreements prevent Dr. Hassoun from revealing further details for only three of his previous engagements, and that he did not testify as an expert in those cases.
ALJ Rogers rejected Respondents’ argument regarding Dr. Hassoun’s business activities as speculative and unsupported by the criteria in the Protective Order, noting that one of his businesses owns only two patents and is in the process of dissolving, and that the other business has only one employee (Dr. Hassoun), does not purchase or sell patents, and “has no plans to compete with Respondents, or to build any products that compete with Respondents.” However, the ALJ agreed with Respondents that Dr. Hassoun’s disclosure of his expert witness work is insufficient. ALJ Rogers ordered that Dr. Hassoun shall not have access to confidential business information unless Microchip identifies all matters where Dr. Hassoun served or his serving as an expert witness, including the parties involved, the venue of the case, and the party retaining him.