Expert's Violation of Prosecution Bar Warrants Exclusion of Testimony

The court partially granted defendants' motion to enforce a prosecution bar against plaintiff's expert who prosecuted a patent involving the relevant technology after receiving defendants' confidential information. The court ordered the expert to return all confidential information and excluded the expert's testimony but did not impose sanctions against plaintiff or plaintiff's counsel. "[Plaintiff's expert] must return any [defendant] designated information and may not use that information for any purpose. In addition, any testimony from [plaintiff's expert] is excluded from this action. . . . [Defendant] points out the difficulty in separating out confidential information in testimony, and the unreasonable lack of trust such a violation fosters. . . . While there is no doubt [plaintiff] will be challenged by the exclusion of any [the expert's] testimony, this is a challenge of its own making, and in any event, [plaintiff] can still retain another expert. . . . [Plaintiff's expert's] failure to comply with the protective order may not have been substantially justified, but the court cannot say that [plaintiff] or its counsel should be held to account for it. Under such circumstances, an award of expenses would not be just."

Avago Technologies Fiber IP (Singapore) PTE. Ltd. v. IPtronics Inc., et al, 5-10-cv-02863 (CAND June 11, 2015, Order) (Grewal, M.J.)