No Disclosure of Defendant’s Confidential Information to Plaintiff’s Patent Assertion and Licensing Contractor

The court granted defendant's motion to prohibit plaintiff's proposed expert from accessing confidential information under the parties' protective order because there was a high risk of inadvertent disclosure where the expert worked for plaintiff's patent assertion and licensing contractor. "The ongoing nature of [the expert's] position with Plaintiff supports Defendants’ contention that [the expert] is not independent. Moreover, although [he] is apparently not a day-to-day employee, his position with Plaintiff is significant because he manages Plaintiff’s entire patent portfolio, rather than the patent-in-suit alone. . . . [The expert's] advice and assistance in licensing and asserting Plaintiff’s patents indicate [he] is closely involved with Plaintiff’s competitive business decisions. . . . There is thus a risk that [he] would be placed in a position to choose between denying Plaintiff advice regarding his patents and abiding by the Protective Order."

Ushijima v. Samsung Electronics Co., Ltd. et al, 1-12-cv-00318 (TXWD October 30, 2014, Order) (Lane, M.J.)