Yes. Plaintiff's motion to disqualify defendant's expert who was the inventor of the patent-in-suit was denied. "At the time of the development of the [patent-in-suit], [the expert's former employer] and [plaintiff] were competitors. Both have since been acquired by the same parent company. . . . [The expert's former employer] has assigned the [patent] to [plaintiff], but [plaintiff] has presented no evidence or authority to support the proposition that the confidential relationship between [the expert's former employer] and [defendant's expert] thereby was extended to [plaintiff]."
Everpure, LLC v. Selecto, Inc., 2-09-cv-02844 (CACD April 6, 2010, Minutes) (Matz, J.).
No. Plaintiff's motion to disqualify defendant's expert consultant who was an inventor of two of the patents-in-suit was granted. "It is undisputed that [defendant's expert] signed a confidentiality agreement with [his former employer]. . . . However, [defendant] argues that [its expert] never had a confidential relationship with [plaintiff] because [he] had left [his former employer] three years before [plaintiff] purchased [his former employer's] assets. . . . Although most of the disqualification cases involve employees who previously worked for the moving party, the Court sees no reason why the same principles should not apply to a prior employer’s successor-in-interest. . . . The focus is on whether the disclosure was reasonable at the time; it is irrelevant that the subsequent successor-in-interest never directly employed the party."
Broadcom Corp. v. Emulex Corp., 8-09-cv-01058 (CACD April 5, 2010, Minutes) (Selna, J.).