Chief Judge Stark Rules that Invalidity Expert Cannot View Highly Confidential Information

August 24, 2018

Publication| Intellectual Property

In Gillette Co. v. Dollar Shave Club, Inc., No. 15-1158-LPS-CJB (D. Del. July 23, 2018), Chief Judge Stark denied the defendants’ request to overrule the plaintiffs’ objection to the disclosure of their highly confidential information to the defendants’ invalidity expert. According to the Court, the invalidity expert had recently been employed by a competitor of the plaintiffs, was named as an inventor on patent applications assigned to that employer, and may have ongoing obligations to the employer with regard to prosecution or enforcement of that intellectual property. Given these circumstances, Chief Judge Stark concluded that the risk of inadvertent disclosure was too great when weighed against the defendants’ failure to show that they were unable to retain an invalidity expert who would not be subject to the plaintiffs’ concerns.

Key Point: Although the Court would not permit the defendants’ invalidity expert to view highly confidential material due to the risk of inadvertent disclosure, Chief Judge Stark stated that the expert could still opine on invalidity to the extent such access was not needed.

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