TVIIM, LLC v. McAfee, Inc.

Filing 46

ORDER by Judge Kandis A. Westmore regarding 39 Joint Discovery Letter Brief. (kawlc1, COURT STAFF) (Filed on 6/18/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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TVIIM, LLC,

Case No. 13-cv-04545-VC (KAW)
Plaintiff,

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ORDER REGARDING 5/21/14 JOINT
DISCOVERY LETTER

v.
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Dkt. No. 39

MCAFEE, INC.,
Defendant.

United States District Court
Northern District of California

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On May 21, 2014, the parties filed a joint discovery letter regarding Plaintiff TVIIM,

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LLC’s intention to designate Eric Knight as an expert under the Patent Local Rule 2-2 Interim

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Model Protective Order. (Joint Letter, Dkt. No. 39 at 4.) Defendant McAfee, Inc. objects to this

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expert designation on the separate grounds that Mr. Knight is an employee of a McAfee

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competitor and is a named inventor on the sole asserted patent. (Joint Letter at 6-7.)

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On May 30, 2014, the joint letter was referred to the undersigned for resolution. Upon

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review of the joint letter, the Court finds that this matter is suitable for resolution without further

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briefing or oral argument pursuant to Civil Local Rule 7-1(b), and finds that Mr. Knight is not an

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expert pursuant to the Patent Local Rule 2-2 Interim Model Protective Order.

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I.

BACKGROUND

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On October 2, 2013, Plaintiff TVIIM, LLC filed a case against Defendant McAfee, Inc.

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alleging infringement of U.S. Patent No. 6,889,168 (“‘168 Patent”). (Compl., Dkt. No. 1.) Eric

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Knight is a named inventor of the ‘168 Patent. (‘168 Patent, Compl., Ex. A.)

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On March 25, 2014, Plaintiff disclosed its intent to designate Eric Knight as an “expert”

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under the Patent Local Rule 2-2 Interim Model Protective Order (“Protective Order”). (Joint Letter

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at 4.) Two weeks later, McAfee objected to Mr. Knight’s expert designation on the grounds that

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he “(1) was currently an employee of a Party competitor and (2) was a former employee of

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TVIMM.” (Joint Letter at 4.) During the parties’ meet and confer, Plaintiff allegedly explained

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that Mr. Knight was never its employee and described that Mr. Knight’s current employer

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(Northrup Grumman Aerospace Systems) is also not a competitor of McAfee’s. Id.
McAfee contends that Mr. Knight has been involved with ImmuneSoft, Mr. Knight’s

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“new” company, for more than ten years. (Joint Letter at 6.) ImmuneSoft is purportedly a

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“consumer security software company.” Id. McAfee, therefore, contends that ImmuneSoft is a

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competitor which would preclude Mr. Knight’s designation as an “expert” under the Protective

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Order. Id. at 6-7. McAfee further contends that Mr. Knight’s status as a named inventor on the
sole asserted patent makes him a percipient witness to material facts in this litigation. (Joint Letter

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United States District Court
Northern District of California

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at 7.)

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II.

LEGAL STANDARD

In October 2013, the United States District Court for the Northern District of California

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issued the Patent Local Rule 2-2 Interim Model Protective Order (hereafter “Protective Order”),

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which defines an “expert” as
a person with specialized knowledge or experience in a matter
pertinent to the litigation who (1) has been retained by a Party or its
counsel to serve as an expert witness or as a consultant in this
action, (2) is not a past or current employee of a Party or of a Party's
competitor, and (3) at the time of retention, is not anticipated to
become an employee of a Party or of a Party's competitor.

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(Protective Order ¶ 2.7.)

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III.

DISCUSSION

McAfee objects to Mr. Knight’s expert designation on the grounds that he is currently

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employed by a McAfee competitor and that he is a named inventor on the patent-in-suit. (Joint

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Letter at 6-7.)

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A.

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This district clearly requires that an “expert” under the Protective Order may not be “a past

Whether Mr. Knight is an employee of a McAfee competitor.

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or current employee of a Party or of a Party’s competitor” or “anticipated to become an employee

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of a Party or a Party’s competitor.” (Protective Order ¶ 2.7.) McAfee contends that Mr. Knight is

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an employee of a McAfee competitor based on his current employment with ImmuneSoft. (Joint
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Letter at 7.) Plaintiff does not address Defendant’s contention that ImmuneSoft is a competitor

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engaged in “consumer security software company,” but rather only states that it “develops

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eDiscovery tools for Windows.” Id. at 5. Instead, Plaintiff explains how Mr. Knight’s previous

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employer, Northrup Grumman, was not a McAfee competitor, and that he was never an employee

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of TVIIM. Id. at 5-6.

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Thus, the Court interprets Plaintiff’s failure to address whether ImmuneSoft is a McAfee

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competitor as a concession. Accordingly, the Court finds that Mr. Knight is not an “expert” as

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defined by the Protective Order.

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B.

Whether Mr. Knight, as a named inventor, may be an “expert.”

Even if Mr. Knight did not work for a McAfee competitor, McAfee contends that Mr.

United States District Court
Northern District of California

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Knight’s status as a named inventor makes him a percipient witness, which precludes him from

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being an “expert” under the Protective Order. (Joint Letter at 7.) McAfee contends that it is

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entitled to Mr. Knight’s testimony on the scope and meaning of his patent’s claims at the time of

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the alleged invention “free from influence or bias that might result from his review of McAfee’s

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technical information.” Id. Indeed, other courts have found that a named inventor should not be

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given access to a patent infringement defendant’s confidential information. See Tailored Lighting,

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Inc. v. Osram Sylvania Products, Inc., 236 F.R.D. 146, 149 (W.D.N.Y. 2006). In Tailor Lighting,

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Inc., the district court rejected the plaintiff’s request to disclose the defendant’s technical

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information to the named inventor, even when they were not in direct competition, because “it

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seems unreasonable to expect that anyone working to further his own scientific and technological

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interests would be able assuredly to avoid even the subconscious use of confidential information

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revealed through discovery that is relevant to those interests.” Id. at 149.

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Plaintiff does not address this argument at all. Instead, Plaintiff states that it would be

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highly prejudiced if Mr. Knight is excluded, because he “falls within an exclusive subgroup of

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people who are both qualified and do not work for McAfee or its competitors.” (Joint Letter at 6.)

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Plaintiff does not provide any facts to support its assertion that Mr. Knight is one of few available

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experts. In response, Defendant argues that Plaintiff “has not identified a single attempt on its part

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to retain an independent technical expert (e.g., a university professor or other expert unaffiliated
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with any competitor), nor has it supported its statement that few individuals have the requisite

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technical knowledge to serve as experts in this case.” Id. at 8. To the contrary, McAfee contends

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that the field was extremely crowded at the time of the alleged invention. Id.

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The Court notes that in Tailor Lighting, Inc., the inventor, while not a direct competitor

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itself, licensed the patent-in-suit to a direct competitor. 236 F.R.D. at 149. That factual distinction

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notwithstanding, the Court finds Tailor Lighting, Inc.’s reasoning persuasive, particularly in light

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of Plaintiff’s failure to provide any legal authority or argument to the contrary. Further, Mr.

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Knight, even with the best intentions, cannot be expected to “to avoid even the subconscious use

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of confidential information revealed through discovery that is relevant to those interests.” Tailored
Lighting, Inc., 236 F.R.D. at 149. Put plainly, it is unrealistic to expect Mr. Knight to segregate

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United States District Court
Northern District of California

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his knowledge about the scope of the patent-in-suit from any knowledge he may receive about

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how McAfee’s accused products work.

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IV.

CONCLUSION

In light of the foregoing, the Court finds that Eric Knight is not an expert under the Patent
Local Rule 2-2 Interim Model Protective Order.
IT IS SO ORDERED.
Dated: June 18, 2014
______________________________________
KANDIS A. WESTMORE
United States Magistrate Judge

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