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Expert Can Access Protected Materials

The Charlottesville U.S. District Court overrules a university patent foundation’s objections to the magistrate judge’s amendment of a protective order governing the scope allowed for plaintiff’s expert to review defendant’s confidential materials.

The underlying technology in the case involves magnetic resonance imaging (MRI) machines, particularly the methods of generating pulses sent by an MRI scanner into the body. The parties entered into an agreed-upon protective order, which they then came to interpret differently regarding the prosecution bar.

The magistrate judge concluded that plaintiff foundation’s expert, Dr. Klaus Hennig, did not present a risk of harm to defendant GE based on his relationship with Siemens (a GE competitor) or his work through a German hospital as a professor, department co-chair and scientific director. Plaintiff does not contest this conclusion. But the magistrate judge found Dr. Hennig was a “competitive decisionmaker” based on his activity as an independent inventor, a ruling to which plaintiff objects. The magistrate judge determined that – although Dr. Hennig should not be completely forbidden from reviewing confidential GE information – certain safeguards and conditions were warranted. The decision not to completely forbid Dr. Hennig’s access to confidential materials was influenced by the existence of the prosecution bar. However, because the original prosecution bar was circular and vague (as it turned solely on GE’s designation of material as “confidential”), the magistrate judge amended it to cover confidential material “that concerns the subject matter of the patents-in-suit or the proprietary technical aspects of GE’s products that allegedly infringe those patents.” Plaintiff now objects to that amendment as vague.

Plaintiff’s objections will be overruled. Plaintiff manufactures a superficial inconsistency by conflating the original prosecution bar with the amended prosecution bar. Its argument is without merit once one does not take the statement about GE’s interpretation out of context and instead considers the actual analysis of the opinion. No “contradiction” exists because plaintiff incorrectly attributes a view to the opinion that it does not espouse.

The parties are armed with a sufficient degree of specificity and guidance needed to navigate discovery in this case. The magistrate judge rightfully narrowed the scope of the prosecution bar when he amended it and he has provided further “goalposts” against which to measure their compliance going forward.

Objections overruled.

University of Virginia Patent Foundation v. General Electric Co. (Moon) No. 3:14cv51, Jan. 29, 2016; USDC at Charlottesville, Va.; Charles C. Crook III for plaintiff; David T. Pollock for defendant. VLW 016-3-034, 11 pp.

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