3 4 VINEYARD INVESTIGATIONS, Case No. 1:19-cv-01482-JLT-SKO
5 Plaintiff, ORDER DENYING DEFENDANT’S MOTION TO DISQUALIFY VINEYARD 6 v. INVESTIGATIONS’ EXPERT DR. MARK GREENSPAN (Docs. 135 & 137) 8 Defendant.
9 11 On October 11, 2024, Defendant E. & J. Gallo Winery (“Defendant”) filed a “Motion to 12 Disqualify Vineyard Investigations [“Plaintiff”]’s Expert Dr. Mark Greenspan” (“Motion to 13 Disqualify”). (Doc. 135). The parties submitted their “Joint Statement Re: [Defendant’s] Motion 14 to Disqualify [Plaintiff’s] Expert Dr. Mark Greenspan” (the “Joint Statement”) pursuant to this 15 Court’s Local Rule 251 on November 13, 2024. (See Docs. 137, 149).1 On November 21, 2024, 16 the Court ordered the matter submitted pursuant to E.D. Local Rule 230(g). Having considered the 17 Motion, Joint Statement, and supporting exhibits, and for the reasons set forth below, the Court 18 DENIES the Motion to Disqualify. 20 A. Procedural Posture 21 Plaintiff initiated this action in October 2019, asserting that Defendant infringed two patents 22 (the “’834 and ’810 patents”) through its use of certain variable rate drip irrigation (“VRDI”) 23 systems.2 (Doc. 1.) 24 A scheduling conference was held in this case in May 2021. (Doc. 40.) Following the 25 conference, the Court issued a Scheduling Order that set deadlines for, among other things, the 26 1 The unredacted Joint Statement is filed under seal; the redacted version was filed on the docket on November 27, 27 2024. (Doc. 149, see also Doc. 148) 2 Plaintiff later amended its complaint to assert a third patent (“the ’881 patent”) in October 2021 (Doc. 52), but that 28 patent was subsequently construed to be indefinite (see Docs. 94 & 124) and is not relevant to the present motions. 1 deadline to exchange the parties’ respective experts. (Doc. 41.) The Court then entered several 2 orders modifying the case schedule (see Docs. 51, 93, 98, 104, 111, 131), based on an amendment 3 of the complaint (see Doc. 51) multiple stipulations from the parties (see Docs. 92, 97, 103, 110, 4 130). Under the operative case management schedule (Doc. 131), the parties must disclose their 5 respective experts by December 13, 2024. 6 On July 19, 2021, the parties stipulated to a protective order (Doc. 42), which the Court 7 entered on July 21, 2021. The protective order includes a provision that defines an “Expert” as: 8 a person with specialized knowledge or experience in a matter pertinent to the litigation who (1) has been retained by a Party or its Counsel to serve as an expert 9 witness or as a consultant in this action, (2) is not a current employee of a Party or 10 of a Party’s competitor, and (3) at the time of retention, is not anticipated to become an employee of a Party or of a Party’s competitor. 11 (Id. at 5 (“Section 2.8”).) On September 26, 2024, Plaintiff disclosed to Defendant that it intended 12 to use Dr. Mark Greenspan as an expert witness. (Doc. 149 at 4.) Dr. Greenspan worked for 13 14 Defendant for nine years, between 1996 and 2005, as an irrigation specialist and Winegrowing 15 Research and Development Manager. (Doc. 137-3 at 2–3). He now works as an independent 16 consultant to wineries and winegrape growers. (Id. at 2). 17 III. DISCUSSION 18 Defendant seeks to exclude Plaintiff’s witness Dr. Greenspan because he was formerly 19 employed by Defendant—in a role during which he had access to nonpublic information Defendant 20 alleges is relevant to the current action—and because Dr. Greenspan is a current consultant to 21 Defendant’s competitors. There are two relevant bases on which Defendant moves Dr. Greenspan 22 be disqualified: (1) an exercise of a trial court’s inherent discretion and (2) pursuant to Section 2.6 23 of the protective order (Doc. 43). 24 A. Legal Standards 25 A trial court has the inherent power to disqualify expert witnesses, consistent with its broad 26 discretion “to protect the integrity of the adversary process, protect privileges that otherwise may 27 be breached, and promote public confidence in the legal system.” Ziptronix, Inc. v. Omnivision 28 1 Techs., Inc., No. C -10-05525 SBA EDL, 2013 WL 146413, at *1 (N.D. Cal. Jan. 14, 2013); see 2 also Koch Ref. Co. v. Jennifer L. Boudreaux MV, 85 F.3d 1178, 1181 (9th Cir. 1996); Campbell 3 Indus. v. M/V Gemini, 619 F.2d 24, 27 (9th Cir. 1980). However, “disqualification is a drastic 4 measure that courts should use reluctantly and rarely.” United States v. Kernen Constr., No. 5 217CV01424WBSDMC, 2018 WL 5023411, at *1 (E.D. Cal. Oct. 16, 2018) (citing Hewlett- 6 Packard Co. v. EMC Corp., 330 F. Supp. 2d 1087, 1092 (N.D. Cal. 2004)). 7 While there is no brightline rule, Hewlett-Packard Co., 330 F. Supp. 2d at 1092 (citing Koch 8 Ref. Co., 85 F.3d at 1181), courts commonly require the party seeking disqualification to bear the 9 burden of showing that “(1) the adversary had a confidential relationship with the expert and (2) 10 the adversary disclosed confidential information to the expert that is relevant to the current 11 litigation.” Jones v. Toft, No. 2:11-CV-0192 MCE EFB, 2013 WL 2102972, at *2 (E.D. Cal. May 12 14, 2013), report and recommendation adopted, No. 2:11-CV-0192 MCE EFB, 2013 WL 4010315 13 (E.D. Cal. Aug. 5, 2013); see also Est. of Michael Wilson by & through Jackson v. Cnty. of San 14 Diego, No. 320CV00457RBMDEB, 2023 WL 8313230, at *2 (S.D. Cal. Dec. 1, 2023); Chan v. 15 ArcSoft, Inc., No. 19-CV-05836-JSW, 2023 WL 5068495, at *4 (N.D. Cal. Aug. 8, 2023). 16 As to the first factor, the focus of the inquiry is on “whether there was a relationship that 17 would permit the litigant reasonably to expect that any communications would be maintained in 18 confidence.” Hewlett-Packard Co., 330 F. Supp. 2d at 1093. As to the second factor, “confidential 19 information” is that which is “of either particular significance or [that] which can be readily 20 identified as either attorney work product or within the scope of the attorney-client privilege.” 21 Hewlett-Packard, 330 F. Supp. 2d at 1094 (quoting Paul By & Through Paul v. Rawlings Sporting 22 Goods Co., 123 F.R.D. 271, 279 (S.D. Ohio 1988) (alteration in original)). The burden is on the 23 party seeking disqualification to “point to specific and unambiguous disclosures [of litigation- 24 relevant confidential information] that if revealed would prejudice the party.” Id. 25 “Generally, both factors must be present for disqualification to be appropriate.” Chan, 2023 26 WL 5068495 at *4. Additionally, courts take into account “whether disqualification would be fair 27 to the affected party and would promote the integrity of the legal process.” Id. (quoting Hewlett- 28 Packard Co., 330 F. Supp. 2d at 1093). 1 Independent of the court’s broad discretion to disqualify an expert, courts have also 2 disqualified experts based on a determination that a protective order precludes the sharing of 3 confidential information necessary for the formulation of an expert opinion with a parties’ proposed 4 expert. See, e.g., GPNE Corp. v. Apple Inc., No. 512CV2885LHKPSG, 2014 WL 1027948, at *1 5 (N.D. Cal. Mar. 13, 2014); Symantec Corp. v. Acronis Corp., No. 11-5310 EMC JSC, 2012 WL 6 3582974, at *3 (N.D. Cal. Aug. 20, 2012). 7 B. Analysis 8 a. The Court declines to exercise its discretion to disqualify Dr. Greenspan3 9 As to the first factor, the Plaintiff’s primary argument is that Defendant has not 10 carried its burden to establish a confidential relationship between Defendant and Dr. Greenspan 11 because Defendant has not produced an original copy of any confidentiality agreement Defendant 12 claims Dr. Greenspan “would have signed” upon his employ. (Doc. 149 at 19, see also id. at 11). 13 But Plaintiff also acknowledges that “[i]n an abundance of caution and good, ethical practice, 14 [Plaintiff] and its counsel have treated Dr.
Free access — add to your briefcase to read the full text and ask questions with AI
3 4 VINEYARD INVESTIGATIONS, Case No. 1:19-cv-01482-JLT-SKO
5 Plaintiff, ORDER DENYING DEFENDANT’S MOTION TO DISQUALIFY VINEYARD 6 v. INVESTIGATIONS’ EXPERT DR. MARK GREENSPAN (Docs. 135 & 137) 8 Defendant.
9 11 On October 11, 2024, Defendant E. & J. Gallo Winery (“Defendant”) filed a “Motion to 12 Disqualify Vineyard Investigations [“Plaintiff”]’s Expert Dr. Mark Greenspan” (“Motion to 13 Disqualify”). (Doc. 135). The parties submitted their “Joint Statement Re: [Defendant’s] Motion 14 to Disqualify [Plaintiff’s] Expert Dr. Mark Greenspan” (the “Joint Statement”) pursuant to this 15 Court’s Local Rule 251 on November 13, 2024. (See Docs. 137, 149).1 On November 21, 2024, 16 the Court ordered the matter submitted pursuant to E.D. Local Rule 230(g). Having considered the 17 Motion, Joint Statement, and supporting exhibits, and for the reasons set forth below, the Court 18 DENIES the Motion to Disqualify. 20 A. Procedural Posture 21 Plaintiff initiated this action in October 2019, asserting that Defendant infringed two patents 22 (the “’834 and ’810 patents”) through its use of certain variable rate drip irrigation (“VRDI”) 23 systems.2 (Doc. 1.) 24 A scheduling conference was held in this case in May 2021. (Doc. 40.) Following the 25 conference, the Court issued a Scheduling Order that set deadlines for, among other things, the 26 1 The unredacted Joint Statement is filed under seal; the redacted version was filed on the docket on November 27, 27 2024. (Doc. 149, see also Doc. 148) 2 Plaintiff later amended its complaint to assert a third patent (“the ’881 patent”) in October 2021 (Doc. 52), but that 28 patent was subsequently construed to be indefinite (see Docs. 94 & 124) and is not relevant to the present motions. 1 deadline to exchange the parties’ respective experts. (Doc. 41.) The Court then entered several 2 orders modifying the case schedule (see Docs. 51, 93, 98, 104, 111, 131), based on an amendment 3 of the complaint (see Doc. 51) multiple stipulations from the parties (see Docs. 92, 97, 103, 110, 4 130). Under the operative case management schedule (Doc. 131), the parties must disclose their 5 respective experts by December 13, 2024. 6 On July 19, 2021, the parties stipulated to a protective order (Doc. 42), which the Court 7 entered on July 21, 2021. The protective order includes a provision that defines an “Expert” as: 8 a person with specialized knowledge or experience in a matter pertinent to the litigation who (1) has been retained by a Party or its Counsel to serve as an expert 9 witness or as a consultant in this action, (2) is not a current employee of a Party or 10 of a Party’s competitor, and (3) at the time of retention, is not anticipated to become an employee of a Party or of a Party’s competitor. 11 (Id. at 5 (“Section 2.8”).) On September 26, 2024, Plaintiff disclosed to Defendant that it intended 12 to use Dr. Mark Greenspan as an expert witness. (Doc. 149 at 4.) Dr. Greenspan worked for 13 14 Defendant for nine years, between 1996 and 2005, as an irrigation specialist and Winegrowing 15 Research and Development Manager. (Doc. 137-3 at 2–3). He now works as an independent 16 consultant to wineries and winegrape growers. (Id. at 2). 17 III. DISCUSSION 18 Defendant seeks to exclude Plaintiff’s witness Dr. Greenspan because he was formerly 19 employed by Defendant—in a role during which he had access to nonpublic information Defendant 20 alleges is relevant to the current action—and because Dr. Greenspan is a current consultant to 21 Defendant’s competitors. There are two relevant bases on which Defendant moves Dr. Greenspan 22 be disqualified: (1) an exercise of a trial court’s inherent discretion and (2) pursuant to Section 2.6 23 of the protective order (Doc. 43). 24 A. Legal Standards 25 A trial court has the inherent power to disqualify expert witnesses, consistent with its broad 26 discretion “to protect the integrity of the adversary process, protect privileges that otherwise may 27 be breached, and promote public confidence in the legal system.” Ziptronix, Inc. v. Omnivision 28 1 Techs., Inc., No. C -10-05525 SBA EDL, 2013 WL 146413, at *1 (N.D. Cal. Jan. 14, 2013); see 2 also Koch Ref. Co. v. Jennifer L. Boudreaux MV, 85 F.3d 1178, 1181 (9th Cir. 1996); Campbell 3 Indus. v. M/V Gemini, 619 F.2d 24, 27 (9th Cir. 1980). However, “disqualification is a drastic 4 measure that courts should use reluctantly and rarely.” United States v. Kernen Constr., No. 5 217CV01424WBSDMC, 2018 WL 5023411, at *1 (E.D. Cal. Oct. 16, 2018) (citing Hewlett- 6 Packard Co. v. EMC Corp., 330 F. Supp. 2d 1087, 1092 (N.D. Cal. 2004)). 7 While there is no brightline rule, Hewlett-Packard Co., 330 F. Supp. 2d at 1092 (citing Koch 8 Ref. Co., 85 F.3d at 1181), courts commonly require the party seeking disqualification to bear the 9 burden of showing that “(1) the adversary had a confidential relationship with the expert and (2) 10 the adversary disclosed confidential information to the expert that is relevant to the current 11 litigation.” Jones v. Toft, No. 2:11-CV-0192 MCE EFB, 2013 WL 2102972, at *2 (E.D. Cal. May 12 14, 2013), report and recommendation adopted, No. 2:11-CV-0192 MCE EFB, 2013 WL 4010315 13 (E.D. Cal. Aug. 5, 2013); see also Est. of Michael Wilson by & through Jackson v. Cnty. of San 14 Diego, No. 320CV00457RBMDEB, 2023 WL 8313230, at *2 (S.D. Cal. Dec. 1, 2023); Chan v. 15 ArcSoft, Inc., No. 19-CV-05836-JSW, 2023 WL 5068495, at *4 (N.D. Cal. Aug. 8, 2023). 16 As to the first factor, the focus of the inquiry is on “whether there was a relationship that 17 would permit the litigant reasonably to expect that any communications would be maintained in 18 confidence.” Hewlett-Packard Co., 330 F. Supp. 2d at 1093. As to the second factor, “confidential 19 information” is that which is “of either particular significance or [that] which can be readily 20 identified as either attorney work product or within the scope of the attorney-client privilege.” 21 Hewlett-Packard, 330 F. Supp. 2d at 1094 (quoting Paul By & Through Paul v. Rawlings Sporting 22 Goods Co., 123 F.R.D. 271, 279 (S.D. Ohio 1988) (alteration in original)). The burden is on the 23 party seeking disqualification to “point to specific and unambiguous disclosures [of litigation- 24 relevant confidential information] that if revealed would prejudice the party.” Id. 25 “Generally, both factors must be present for disqualification to be appropriate.” Chan, 2023 26 WL 5068495 at *4. Additionally, courts take into account “whether disqualification would be fair 27 to the affected party and would promote the integrity of the legal process.” Id. (quoting Hewlett- 28 Packard Co., 330 F. Supp. 2d at 1093). 1 Independent of the court’s broad discretion to disqualify an expert, courts have also 2 disqualified experts based on a determination that a protective order precludes the sharing of 3 confidential information necessary for the formulation of an expert opinion with a parties’ proposed 4 expert. See, e.g., GPNE Corp. v. Apple Inc., No. 512CV2885LHKPSG, 2014 WL 1027948, at *1 5 (N.D. Cal. Mar. 13, 2014); Symantec Corp. v. Acronis Corp., No. 11-5310 EMC JSC, 2012 WL 6 3582974, at *3 (N.D. Cal. Aug. 20, 2012). 7 B. Analysis 8 a. The Court declines to exercise its discretion to disqualify Dr. Greenspan3 9 As to the first factor, the Plaintiff’s primary argument is that Defendant has not 10 carried its burden to establish a confidential relationship between Defendant and Dr. Greenspan 11 because Defendant has not produced an original copy of any confidentiality agreement Defendant 12 claims Dr. Greenspan “would have signed” upon his employ. (Doc. 149 at 19, see also id. at 11). 13 But Plaintiff also acknowledges that “[i]n an abundance of caution and good, ethical practice, 14 [Plaintiff] and its counsel have treated Dr. Greenspan as if he was under an obligation not to talk 15 about confidential information learned at Gallo twenty years ago.” Id. 19. In light of the Court’s 16 analysis as to the second factor, which the Court finds dispositive, the Court assumes without 17 deciding that Dr. Greenspan’s prior employment by Defendant constituted a prior confidential 18 relationship sufficient to establish the first factor. 19 As to the second factor, the parties disagree as to whether the information Dr. Greenspan 20 obtained through his prior employment by Defendant constitutes “confidential information” for the 21 purposes of disqualification. And indeed, the parties’ disagreement maps onto an existing split in 22 the case law as to whether prior disclosures of purely technical information constitute “confidential 23 information” for the purposes of the second factor. While there are cases that do not agree, see, 24 e.g., Tabaian v. Intel Corp., No. 3:18-CV-00326-HZ, 2018 WL 4566257, at *5 (D. Or. Sept. 22, 25 2018); Oracle Corp., 2012 WL 2244305, at *7; Pellerin v. Honeywell Int’l Inc., No. 11CV1278- 26 BEN CAB, 2012 WL 112539, at *2 (S.D. Cal. Jan. 12, 2012), Space Sys./Loral v. Martin Marietta 27 3 In a prior order, the court declined to seal several documents in toto. (Doc. 148). The Court notes that its decision 28 here would not be affected by its consideration of those additional documents. 1 Corp., No. CIV. 95-20122 SW, 1995 WL 686369, at *2 (N.D. Cal. Nov. 15, 1995), the majority 2 view is “that prior disclosure, not made in preparation for the then-pending litigation, of 3 confidential technical information to a proposed expert witness does not justify disqualifying the 4 expert, at least not when the confidential technical information is otherwise discoverable.” 5 Edwards Vacuum LLC v. Hoffman Instrumentation Supply, Inc., No. 3:20-CV-1681-AC, 2020 WL 6 7360682, at *7 (D. Or. Dec. 15, 2020); see also Nina A. Vershuta, New Rules of War in the Battle 7 of the Experts Amending the Expert Witness Disqualification Test for Conflicts of Interest, 81 8 BROOK. L. REV. 733, 747 (2016) (“Under the majority view, unless the disclosed information meets 9 this stringent standard, courts will deny a motion to disqualify an expert.”). The Court adopts the 10 majority view. 11 Courts that have adopted the majority view of “confidential information” have offered 12 several rationales that the Court finds persuasive contrasting the reasons for finding a conflict of 13 interest where an expert was made privy to “discussions of the retaining party's strategies in the 14 litigation, the kinds of expert the party expected to retain, the party's views of the strengths and 15 weaknesses of each side, the role of each of the party's witnesses to be hired, [or] anticipated 16 defenses”—most often situations where a party has consulted with, but not retained an expert who 17 is then hired by an adverse party—but not where an expert had a previous confidential relationship 18 with an opposing party in which the expert was made privy to technical information. Edwards 19 Vacuum LLC, 2020 WL 7360682, at *8 (quoting U.S. ex rel. Cherry Hill Convalescent, Ctr., Inc. 20 v. Healthcare Rehab Sys., Inc., 994 F. Supp. 244, 250 (D.N.J. 1997)). 21 First, technical information, unlike privileged attorney work product information, is 22 discoverable. See, e.g., In re JDS Uniphase Corp. Sec. Litig., No. C-02-1486 CW (EDL), 2006 23 WL 2845212, at *5 (N.D. Cal. Sept. 29, 2006); accord Sarl v. Sprint Nextel Corp., No. 09-2269- 24 CM/DJW, 2013 WL 501783, at *6–*7 (D. Kan. Feb. 8, 2013); Chrisjulbrian Co. v. Upper St. Rose 25 Fleeting Co., No. CIV. A. 93-1879, 1994 WL 673440, at *2 (E.D. La. Dec. 2019). 26 Second, courts have consistently considered the policy implications of the second factor, 27 and in so doing, have been primarily concerned about a rule that would “encourage[e] an attorney 28 to consult with many experts in an attempt to preclude an adversary from finding an expert.” 1 Edwards Vacuum LLC, 2020 WL 7360682, at *7; see also see Sarl, 2013 WL 501783, at *7 (“the 2 expert disqualification doctrine derives from legal principles surrounding attorney conflicts of 3 interest and cases where its purpose is to protect privileges such as the attorney-client privilege”). 4 These concerns justify disqualifying an expert where the expert has “received attorney work 5 product or been given access to information protected by the attorney-client privilege,” Edwards 6 Vacuum LLC, 2020 WL 7360682, at *7 (citing Sarl, 2013 WL 501783, at *6–7), in order to avoid 7 (1) “incentivizing experts to ‘sell their opinions to the opposing parties or the highest bidder without 8 concern about the potential confidentiality of their previous consultations’” or (2) “encouraging 9 attorneys to ‘create relationships with numerous potential experts at a nominal fee hoping to 10 preempt the ability of their adversaries to obtain expert assistance.’” Id. (quoting Hewlett-Packard 11 Co., 330 F. Supp. 2d at 1095 (N.D. Cal. 2004)). But these policy concerns are not implicated by 12 cases where, like here, an expert’s previous confidential relationship involved disclosures of only 13 technical information. 14 And while it is true that some courts have considered the policy implications of letting a 15 former employee testify as an expert for an opposing party—in particular, that the former employee 16 will “be unable to segregate information obtained in the context of the confidential relationship, 17 and opinions based on that information, from information produced in discovery,” Tabaian, 2018 18 WL 4566257, at *5—in the present case, this concern is mitigated by (1) the opportunity for direct 19 and cross examination, (2) Plaintiff’s assurances that they have treated Dr. Greenspan as being 20 subject to a binding confidentiality agreement as to any non-discoverable confidential technical 21 information, (Doc. 149 at 19), and (3) the fact that Defendant has not identified any relevant non- 22 technical confidential information known to Dr. Greenspan that is not otherwise discoverable. See 23 Edwards Vacuum LLC, 2020 WL 7360682, at *7 n.4 (explaining the reasons why that court did not 24 find Oracle Corp. and Tabaian persuasive). 25 Because the Defendant has not established that Dr. Greenspan became privy to any relevant 26 confidential non-discoverable information during the course of his former employment as an 27 irrigation specialist and Winegrowing Research and Development Manager, the Court finds that 28 the Defendant has not established the second factor. Therefore, the Court is not persuaded that this 1 is one of those “rare” instances in which it is appropriate for the Court to exercise its discretion to 2 disqualify Dr. Greenspan.4 United States v. Kernen Constr., No. 217CV01424WBSDMC, 2018 3 WL 5023411, at *1 (E.D. Cal. Oct. 16, 2018); see also Chan, 2023 WL 5068495 at *4 (“Generally, 4 both factors must be present for disqualification to be appropriate.”). 5 b. The terms of the Protective Order do not provide a basis for the disqualification of Dr. Greenspan. 6 Defendant contends, in the alternative, that section 2.6 of the Protective Order 7 provides an independent ground to disqualify Dr. Greenspan. (Doc. 149 at 17–18). Specifically, 8 Defendant contends that “consulting for [Defendant]’s competitors is no different than being an 9 employee of [Defendant]’s competitors,” and therefore the protective order precludes Plaintiff from 10 designating Dr. Greenspan as an expert under section 2.6 of the protective order because he 11 currently works as a consultant for Defendant’s competitors. Id. at 17 (stipulating that an expert 12 must not be “a current employee of a Party or of a Party’s competitor or “anticipated to become an 13 employee of a Party or of a Party’s competitor [at the time of retention]”). Plaintiff counters that 14 there is a legally significant difference between “employee” and “independent consultant,” such 15 that section 2.6 of the Protective Order is immaterial to the present dispute. Id. at 26–27. The 16 Court agrees with Plaintiff. 17 Despite pointing to the “plain text” of the Protective Order, the substance of Defendant’s 18 arguments is based on many of the concerns that are already taken into account through the 19 considerations discussed supra. Those considerations are not material to the Court’s interpretation 20 of the plain text of the Protective Order. 21 “[A] protective order based on a written agreement between the parties is subject to the 22 rules of contractual interpretation, including that the agreement should be enforced in accordance 23 with the ordinary meaning of the language used in the agreement.” Koninklijke Philips Elecs. N.V. 24
25 4 The Court observes that, by Defendant’s own admission, most of the confidential technical information that Dr. Greenspan was made privy to in his former employ is subject to discovery in the present action. (Doc. 149 at 13–14). 26 The only confidential non-discoverable information that Defendant has identified as being disclosed to Dr. Greenspan during the course of his prior employ is information allegedly relevant to additional infringement 27 contentions Plaintiff sought to add by amending its Preliminary Infringement Contentions. (Doc. 149 at 14). But the Court has stricken the Plaintiff’s Amended Preliminary Infringement Contentions, meaning this information is no 28 longer relevant. (See Doc. 146). 1 v. KXD Tech., Inc., No. 205CV-01532-RLH-GWF, 2007 WL 2407038, at *2 (D. Nev. Aug. 16, 2 2007). Here, the plain meaning of employee does not include self-employed independent 3 consultants, who—by definition—are independent and self-employed.5 Cf. Arellano v. Benov, No. 4 1:13-CV-00558 AWI, 2014 WL 1271530, at *6 (E.D. Cal. Mar. 27, 2014) (citing favorably 5 language from the Ninth Circuit that “[a] significant difference exists between employees and 6 independent contractors” in considering the “plain meaning” of “employee” (quoting Arredondo– 7 Virula v. Adler, 510 Fed. Appx. 581, 582 (9th Cir. 2013)). 8 Because the plain meaning of the Protective Order does not prohibit parties from 9 designating a person who is anticipated to be retained as an independent consultant by a competitor 10 as an expert, the Court determines that the Protective Order does not provide a valid ground for 11 disqualifying Dr. Greenspan. 13 Based on the foregoing, the Court DENIES Defendant Gallo’s Motion to Disqualify Plaintiff 14 Vineyard Investigations’ Expert Dr. Mark Greenspan (Docs. 135, 137). 15 IT IS SO ORDERED. 16 17 Dated: December 2, 2024 /s/ Sheila K. Oberto . UNITED STATES MAGISTRATE JUDGE 18
20 21 22 23 24 25
5 This is not to say that the parties could not have agreed to define “employee” differently or otherwise written 26 section 2.8 more broadly apply to independent consultants as well as “employees.” See, e.g., Codexis, Inc. v. EnzymeWorks, Inc., No. 3:16-CV-00826-WHO, 2017 WL 5992130, at *6 (N.D. Cal. Dec. 4, 2017), aff’d and 27 remanded, 759 F. App’x 962 (Fed. Cir. 2019), and vacated, No. 3:16-CV-00826-WHO, 2019 WL 5257936 (N.D. Cal. Aug. 22, 2019) (resolving a dispute involving a stipulated protective order provision similar to that which is at 28 issue here, but that differed in its express inclusion of consultants). But the parties did not do so here.