Expert Can’t Testify for Plaintiff After Consulting for Defendant

On March 22, 2016, E.D.N.Y. District Judge Brian M. Cogan granted defendant Clorox Co.’s motion to disqualify plaintiff Auto-Kaps LLC’s expert and strike his affidavit from its summary judgment opposition.  Auto-Kaps alleged that Clorox’s “Smart Tube” bottle infringes U.S. Patent No. 7,490,743 (the “‘743 patent”).

Despite having conceded at the premotion conference that “industry-specific claim construction was not required to decide Clorox’s motion for summary judgment,” Auto-Kaps included in its opposition an affidavit of a packaging system expert.  Clorox moved to disqualify him and strike his affidavit, arguing that Clorox had employed the expert as a consultant on two projects closely related to the development of the Smart Tube bottle and that his testimony risked the disclosure of confidential information.

The court granted Clorox’s motion, explaining that courts should look to three considerations:  (1) whether a confidential relationship existed between the movant and the expert; (2) whether confidential information was in fact disclosed by the movant to the expert; and (3) judicial integrity and fairness balanced against a party’s right to present expert testimony.  The court was adamant that a party need not wait until it has been prejudiced by the disclosure of confidential information to move to disqualify an expert.  Applying these factors, the court noted that the expert “consulted on the very project that culminated in the bottle design at issue in this litigation” and concluded that “[i]t would be impossible to expect [the expert] to separate the confidential information he acquired during the course of that consultation from his review of the project’s final design as compared to Auto-Kaps’ patent.”

Case:  Auto-Kaps, LLC v. Clorox Co., No. 15 Civ. 1737 (BMC) (E.D.N.Y. Mar. 22, 2016).  The patent-in-suit is U.S. Patent No. 7,490,743.