By Eric Schweibenz
On June 1, 2011, ALJ Charles E. Bullock issued the public version of Order No. 12 (dated May 19, 2011) granting Complainant Overland Storage, Inc.’s (“Overland”) motion to disqualify Robert Long from serving as an expert witness for Respondents BDT AG, BDT-Solutions GmbH & Co. KG, BDT Products, Inc., BDT Automation Technology (Zhuhai FTZ) Co., Ltd., and BDT de México, S. de R.L. de C.V. (collectively, “BDT”) in Certain Automated Media Library Devices (Inv. No. 337-TA-746).

By way of background, on October 19, 2010, Overland filed a complaint requesting that the Commission commence an investigation pursuant to Section 337, alleging that BDT unlawfully imports into the U.S., sells for importation, and sells within the U.S. after importation certain automated media library devices that infringe U.S. Patent Nos. 6,328,766 (the ‘766 patent) and 6,353,581.  The Commission instituted this investigation on November 18, 2010.  See our November 22, 2010 post for more information.

According to the Order, Robert Long, the disputed expert witness for BDT, co-founded Overland Data, Inc., the predecessor to Overland, where he served as President and CEO until his resignation, after which he continued to serve on Overland Data, Inc.’s Board of Directors.  Mr. Long later returned to Overland Data, Inc., where he invented the data storage system taught in the ‘766 patent, then left again in 2000.  In its motion to disqualify Mr. Long from serving as an expert witness for BDT, Overland argued that his work for BDT constitutes a breach of his contractual duties to assist Overland in enforcing the ‘766 patent.  Overland further argued that Mr. Long should be disqualified to prevent him from disclosing proprietary and potentially privileged information he acquired during his time at Overland.  BDT countered that Mr. Long’s access to Overland’s confidential information more than ten years ago is insufficient to disqualify him from serving as their expert.  BDT further asserted that any relevant confidential information in Mr. Long’s possession would be discoverable based on his status as a fact witness in the case.

ALJ Bullock employed a two-part test to determine whether an expert should be disqualified based on a prior relationship with the adversary, citing Eastman Kodak Co. v. AGFA-Gevaert N.V., No. 02-CV-6564, 2003 WL 23101783, at *1 (W.D.N.Y. Dec. 4, 2003):  (1) Did the adversary have a confidential relationship with the expert; and (2) did the adversary disclose confidential or privileged information to the expert that is relevant to the current litigation?  In applying this test, ALJ Bullock determined that during Mr. Long’s time with Overland he obtained proprietary and confidential information, and thus found the first prong of the test satisfied.  ALJ Bullock further determined that confidential or privileged information relevant to the investigation was disclosed to Mr. Long, in so much as Mr. Long likely has intimate knowledge of confidential information related to the conception, reduction to practice, and prosecution of the ‘766 patent.  ALJ Bullock thus determined that the second prong of the test was met, noting that allowing Mr. Long to serve as BDT’s expert would give BDT an unfair advantage in the investigation.  On that basis, ALJ Bullock determined that Mr. Long should be disqualified from serving as an expert in the investigation in order to protect the integrity of the adversary process and to promote public confidence in the fairness and integrity of the legal process.  Accordingly, ALJ Bullock granted Overland’s motion to disqualify Robert Long from serving as an expert in the investigation for BDT, but also granted BDT leave to designate a new expert within two days of the Order.

* Kristin Wall is a summer associate at Oblon Spivak