H. Lundbeck A/S et al v. Lupin Limited, et al

Filing 716

MEMORANDUM ORDER: Having reviewed the parties' motion and letters regarding Defendants' use of Dr. Rothschild as an expert (D.I. #698 , #704 , #711 ), and having heard argument on March 13, 2020, IT IS HEREBY ORDERED that Plaintiffs' requests to disqualify Dr. Rothschild as an expert and to prevent him from receiving access to materials designated as Confidential Information under the Protective Order are DENIED. Signed by Judge Jennifer L. Hall on 3/18/2020. (ceg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
H. LUNDBECK A/S, et al.,
Plaintiff,
v.
APOTEX INC., et al.,
Defendants.

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Civil Action No. 18-88-LPS

MEMORANDUM ORDER
Having reviewed the parties’ motion and letters regarding Defendants’ use of Dr.
Rothschild as an expert (D.I. 698, 704, 711), and having heard argument on March 13, 2020, IT
IS HEREBY ORDERED that Plaintiffs’ requests to disqualify Dr. Rothschild as an expert and to
prevent him from receiving access to materials designated as Confidential Information under the
Protective Order are DENIED.
“Federal Courts have the inherent power to disqualify expert witnesses in certain
circumstances to protect the integrity of the adversary process and to promote public confidence
in the legal system.” Space Sys./Loral v. Martin Marietta Corp., No. 95-20122, 1995 WL 686369,
at *2 (N.D. Cal. Nov. 15, 1995). There is no bright-line rule. Instead, courts consider (1) whether
the expert had a confidential relationship with the adversary and (2) whether the adversary
disclosed confidential information to the expert. See, e.g., Merck Sharp & Dohme Corp. v. Teva
Pharm. USA, Inc., No. 14-874, 2015 WL 5163035, *2 (D. Del. Sept. 3, 2015). Courts also weigh
the public interest in allowing or not allowing the expert to testify. Id.
Plaintiffs first argue that Dr. Rothschild should be disqualified because he served as a
“principal investigator” in certain of Plaintiffs’ clinical studies involving vortioxetine. The record
reflects that Dr. Rothschild was one of many “principal investigators” that enrolled subjects in four

“double-blind” clinical studies (the last of which ended in 2013). In two of the studies, Dr.
Rothschild enrolled only a single subject. After one of those studies, Plaintiffs provided Dr.
Rothschild with clinical data, some of which Dr. Rothschild (and others) incorporated into a 2012
published article that concluded that vortioxetine did not improve symptoms of generalized anxiety
disorder (compared with placebo) over the study period.
For purposes of this decision, I assume that Plaintiffs had a confidential relationship with
Dr. Rothschild. But Plaintiffs have not persuaded me that Dr. Rothschild received the type of
information that would require disqualification. Plaintiffs’ argument—that Dr. Rothschild should
be disqualified from this case because he participated in clinical studies involving the same drug—
certainly has facial appeal. But having reviewed the materials submitted by the parties, including
Dr. Rothschild’s declaration describing the nature of the materials he received in connection with
those studies 1 (which does not appear to be challenged by Plaintiffs), it does not appear that Dr.
Rothschild received any privileged information. Moreover, the types of technical information he
did receive are discoverable by Defendants, thus minimizing the potential for an unfair advantage
to Defendants. See High Point Sarl v. Sprint Nextel Corp., No. 09-2269, 2013 WL 501783, at *7
(D. Kan. Feb. 8, 2013); Palomar Med. Techs., Inc. v. Tria Beauty, Inc., No. 09-11081, 2012 WL
517532, at *4 (D. Mass. Feb. 15, 2012) (denying motion to disqualify expert physician who had
conducted two clinical studies for the adversary; expert had not received litigation strategy, workproduct, or privileged information from the adversary, which “weigh[ed] strongly against
disqualification”); Space Sys./Loral, 1995 WL 686369, *3; see also Auto-Kaps, LLC v. Clorox

1

My decision does not rely on Dr. Rothschild’s averments that he does not remember the
actual information received.
2

Co., No. 15-1737, 2016 WL 1122037, at *3 (E.D.N.Y. Mar. 22, 2016) (granting motion to
disqualify where plaintiff’s expert “consulted on the very project that culminated in the [accused
product]” under circumstances where it was “not difficult to infer that [the expert] was given or
exposed to confidential information relating to [the defendant’s] strategy regarding its intellectual
property”). It also appears that much of the information from one study is public, as the results
were published.
Plaintiffs rely on a line of cases in which courts disqualified experts who received only
technical, but not privileged, information from the adversary. See Eastman Kodak Co. v. Agfa–
Gevaert N.V., No. 02-6564, 2003 WL 23101783, at *1 (W.D.N.Y. Dec. 4, 2003); Thompson, I.G.,
L.L.C. v. Edgetech I.G., Inc., No. 11-12839, 2012 WL 3870563, at *1 (E.D. Mich. Sept. 6, 2012).
But in those cases, the proposed experts had been longstanding employees of the adversaries,
during which they acquired deep technical knowledge relevant to the litigation. See Thompson,
2012 WL 3870563, at *1 (plaintiff’s proposed expert was a “senior-level employee at [defendant]
from 1994 until his resignation in 2008”); Eastman Kodak, 2003 WL 23101783, at *1 (defendant’s
expert having “previously worked at [plaintiff] for eighteen (18) years”). Disqualification under
those circumstances protects the integrity of the adversary process and promotes public confidence
in the legal system regardless of whether the information disclosed qualifies as privileged or work
product. See Thompson, 2012 WL 3870563, at *7 (disqualifying former fourteen-year, seniorlevel employee from testifying as a technical expert for the adversary because it was “analogous
to an expert switching sides mid-litigation”).
Here, in contrast, Dr. Rothschild did not have a longstanding employment relationship with
Plaintiffs.

He enrolled subjects in four clinical studies during which he received limited
3

information from Plaintiffs. And, for one of those studies, he received aggregated study data that
he used to co-author a paper that concluded that vortioxetine was not effective to treat a particular
(unapproved) indication. 2 Under the particular facts here, I am not persuaded that the “drastic
measure” of disqualification is warranted. Thompson, 2012 WL 3870563, at *2.
Plaintiffs next argue that Dr. Rothschild should be disqualified because he formerly served
as a consultant and expert to Plaintiff Lundbeck in cases involving Lexapro® (escitalopram) and
Celexa® (citalopram).

Those cases involved different patents. The last of those cases was

terminated in May 2010, nearly a decade ago. For purposes of this decision, I accept as true
Plaintiffs’ assertions that Dr. Rothschild received confidential and privileged information during
those engagements. But I am not persuaded that the information he received in decade-old
litigations involving different drugs would require his disqualification from this case.
Plaintiffs make the conclusory assertion that Dr. Rothschild was given access to
Lundbeck’s “IP strategy” in the Lexapro® and Celexa® cases. However, nothing in the record
suggests that Dr. Lundbeck was privy to any privileged information other than the trial strategy
used by Lundbeck for those particular cases. Plaintiffs also contend that a head-to-head study
involving escitalopram and vortioxetine is “at the center of the parties’ infringement dispute
regarding the ’096 patent.” (D.I. 704 at 2.) But the record indicates that the study was not
undertaken until years after Dr. Rothschild’s Lundbeck engagements were complete. Having
carefully reviewed the record, and the remainder of the parties’ arguments, I am not persuaded that
the nature of the confidential information Dr. Rothschild received requires his disqualification

2

Defendants state, and Plaintiffs have not disputed, that the use of vortioxetine to treat
generalized anxiety disorder is not being litigated in this case.
4

from this case. See Novartis AG v. Apotex Inc., No. 09-5614, 2011 WL 691594, at *3-4 (D.N.J.
Jan. 24, 2011) (denying request to disqualify expert who had previously served as an expert for
the adversary in other cases, where the adversary failed to identify specific confidential
information relevant to the current litigation that had been shared with the expert; general
allegations that the expert was privy to adversary’s “legal strategies and the opinions of its legal
counsel” and “regulatory strategies” were insufficient), report and recommendation adopted, 2011
WL 611706 (D.N.J. Feb. 8, 2011).
For the foregoing reasons, Plaintiffs’ requests are DENIED.

Dated: March 18, 2020
Jennifer L. Hall
UNITED STATES MAGISTRATE JUDGE

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