High Point Sarl v. Sprint Nextel Corporation et al
Filing
895
MEMORANDUM AND ORDER granting 805 High Point's Motion for an Order Permiting Disclosure of Confidential Information to John Storch; denying 819 Sprint's Cross-Motion to Disqualify John Storch as an Expert for High Point. Signed by Magistrate Judge David J. Waxse on 2/8/2013. (byk)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
HIGH POINT SARL,
Plaintiff and
Counterclaim-Defendants,
v.
Case No. 09-2269-CM/DJW
SPRINT NEXTEL CORPORATION,
et al.,
Defendants and
Counterclaimants.
MEMORANDUM AND ORDER
Pending before the Court are High Point’s Motion for an Order Permitting Disclosure of
Confidential Information to John Storch (ECF No. 805) and Sprint’s Cross-Motion to Disqualify
John Storch as an Expert for High Point SARL (ECF No. 819). Pursuant to the parties’ First
Amended Protective Order (ECF No. 498), High Point requests an order permitting it to disclose
confidential materials produced in discovery to its technical expert John Storch. In response,
Sprint has filed a motion to disqualify Mr. Storch as an expert for High Point. Sprint asserts that
because Mr. Storch previously received confidential information relevant to the current litigation
while working at a Sprint-affiliated company, he should be disqualified from serving as an expert
or in any other capacity for High Point in this case. As explained below, the Court finds that
Sprint has not shown that any confidential information Mr. Storch may have received while vicepresident of a Sprint-affiliated company was privileged confidential information which would
warrant his disqualification. Sprint’s Cross-Motion to Disqualify John Storch is therefore denied,
and High Point’s Motion for an Order Permitting Disclosure of Confidential Information to John
Storch is granted.
I.
BACKGROUND FACTS
High Point SARL (hereinafter “High Point”) filed this patent infringement case against
Sprint Nextel Corporation, Sprint Spectrum L.P., SprintCom, Inc., Sprint Communications
Company L.P., Sprint Solutions, Inc., APC PCS, LLC, APC Realty and Equipment Company,
LLC, and STC Two LLC (collectively referred to as “Sprint”). High Point alleges that Sprint’s
cellular CDMA telephone networks infringe upon four United States patents assigned to High
Point. Sprint’s CDMA infrastructure equipment, and particularly its packetized backhaul
transmission systems, are the focus of High Point’s infringement contentions in this case.
The December 14, 2010 First Amended Protective Order (“Protective Order”) (ECF No.
498) contains specific provisions with regard to disclosing material and information designated
as “HIGHLY CONFIDENTIAL-OUTSIDE COUNSEL ONLY” to independent experts or
consultants. Paragraph 12(e) of the Protective Order allows the parties to disclose “HIGHLY
CONFIDENTIAL-OUTSIDE COUNSEL ONLY” designated material and information to any
independent expert or consultant who
is engaged by counsel of record in this action, whether or not such expert or
consultant is paid directly by a party, and (2) is not regularly employed by or
associated with a party hereto, other than by the producing party, provided
however that disclosure to such persons shall be made only on the conditions set
forth in paragraphs 16 below. 1
Paragraph 16 of the Protective Order requires the parties to obtain a signed undertaking form
from the expert or consultant in which he or she agrees to not disclose any confidential
information. The parties are also required to provide opposing counsel with the curriculum vitae
of any such expert or consultant and an opportunity to object to the disclosure. The Protective
1
First Am. Protective Order (ECF No. 498) at 8-9, ¶ 12.
2
Order also sets out the time period and procedures for a party to object to the disclosure to the
identified expert or consultant:
No Confidential Materials shall be disclosed to such expert or consultant until
after the expiration of a five (5) business day period commencing with the service
of a copy of the proposed undertaking and curriculum vitae. If during that five (5)
business day period opposing counsel makes an objection to such disclosure, then
there shall be no disclosure of Confidential Materials to the expert or consultant
pending resolution of the objection either by agreement of the parties or further
order of the Court.2
On March 28, 2012, High Point notified Sprint that it had retained John Storch as an
outside consultant and expert, and intended to disclose to him highly confidential technical
information that had been produced by Sprint and others during discovery in this matter. On
April 4, 2012, Sprint advised High Point that it objected to the disclosure of confidential
information to Mr. Storch because he had access to certain confidential Sprint information during
the course of his employment with Clearwire, a Sprint-affiliated entity. High Point then filed its
motion for an order permitting disclosure of confidential information to Mr. Storch. In response,
Sprint filed its motion to disqualify Mr. Storch as an expert for High Point.
II.
MOTION TO DISQUALIFY JOHN STORCH AS EXPERT
Sprint contends that Mr. Storch should be disqualified from serving as an expert or in any
other capacity for High Point in this case based upon his previously obtaining Sprint confidential
information relevant to the technology at issue in this case. Sprint alleges that from 2004
through 2009, Mr. Storch was employed by Clearwire Corporation as a vice president
responsible for operations, project management, construction and engineering. During that time
period, Sprint and Clearwire Corporation entered into a letter of intent to jointly construct a
nationwide broadband network based on WiMAX technology. Roughly a year later, Sprint and
2
Id.
3
Clearwire Corporation announced plans to combine certain wireless businesses to create a new
mobile broadband company. Sprint would own about 51% of the new company, which would be
called “Clearwire.” This new company would provide Sprint’s mobile phone users access to
improved wireless networks for a range of multimedia applications, such as live
videoconferencing and recorded video.
Sprint claims that in connection with these projects, Clearwire employees, including Mr.
Storch, were provided with Sprint’s confidential information regarding, among other things, (1)
Sprint’s CDMA sites, including site-specific strategies; (2) Sprint’s network coverage; (3)
Sprint’s backhaul analysis for various sites; and (4) Sprint services involving the routing of
packetized transmissions over a network. Sprint alleges that the confidential information
disclosed to Mr. Storch is related to its CDMA strategy, business decisions, and network
equipment and is highly relevant to this case. It argues that Mr. Storch should not be permitted
to use the confidential information he obtained while working at a Sprint-affiliated company to
support expert opinions supporting High Point’s claims and contrary to Sprint’s interests in this
litigation.
High Point argues that Sprint fails to articulate a single reason why it would be
prejudiced by Mr. Storch serving as High Point’s expert and fails to identify how any of the
purportedly confidential information, to which Mr. Storch allegedly had access while employed
at Clearwire, could be used to Sprint’s detriment in this litigation.
It argues that the evidence
provided by Sprint in support of its motion to disqualify does not support Sprint’s allegation that
Mr. Storch had accesss to Sprint’s CDMA strategy, business decisions and network equipment,
which are at issue in this case. Rather there is no evidence that the very limited information
reflected in Sprint’s exhibits relates to any issues in the case. High Point also argues that the
4
nature of the alleged information to which Mr. Storch was exposed was not the type of
“confidential information” that would warrant disqualification of Mr. Storch. It argues that for
purposes of disqualifying an expert, courts distinguish between confidential information that
relates to purely technical or business information that is discoverable in litigation, and
information that relates to confidential communications concerning legal strategies or other
litigation-related issues that is privileged and not otherwise subject to discovery.
A.
Legal Standard for Ruling on a Motion to Disqualify Expert Witness
Sprint and High Point generally agree that the Court should apply the commonly used
two-prong test for disqualification of a non-attorney expert witness who previously had access to
the opposing party’s confidential information.3 Under that test, disqualification of an expert is
warranted when the moving party can show: (1) that it had an objectively reasonable belief that it
had a confidential relationship with the expert, and (2) that it disclosed confidential information
to the expert that is relevant to the current litigation.4 The courts utilizing this approach base
their authority to disqualify an expert on the “court’s inherent power to disqualify expert
witnesses to protect the integrity of the adversary process, protect privileges that otherwise might
be breached, and promote public confidence in the legal system.”5
Although the majority of courts considering the issue have applied some version of the
two-prong test for disqualifying a non-attorney expert with a prior confidential relationship with
3
Excel-Jet, Ltd. v. United States, No. 07-cv-02181, 2009 WL 1194936, at *2 (D. Colo. May 1, 2009);
Brett ex rel. Brett v. Hillerich & Bradsby Co., No. 99-cv-981-C, 2001 WL 36162670, at *1-2 (W.D. Okla.
Oct. 5, 2001).
4
Excel-Jet, 2009 WL 1194936, at *2. See also English Feedlot, Inc. v. Norden Labs., Inc., 833 F.
Supp. 1498, 1501-02 (D. Colo. 1993).
5
Excel-Jet, 2009 WL 1194936, at *2 (citing English Feedlot, 833 F. Supp. at 1501; Hewlett-Packard
Co. v. EMC Corp., 330 F. Supp. 2d 1087, 1092 (N.D. Cal. 2004)).
5
the adverse party, the Court was not able to locate any procedural or ethical rules, statutes, or
controlling precedent from either the Supreme Court or Tenth Circuit mentioning, adopting, or
endorsing the expert disqualification doctrine or the two-prong test applied by district courts.6 To
date, only the Ninth, Fifth, and Federal Circuit Courts of Appeal and a few state appellate courts
have recognized the expert disqualification doctrine.7
Despite the absence of Supreme Court or Tenth Circuit controlling precedent, the Court
finds that the principles behind the expert disqualification doctrine support its application here in
ruling on Sprint’s motion to disqualify High Point’s expert witness. The Court agrees with the
cases finding that federal courts have the inherent power to disqualify expert witnesses in certain
circumstances to protect the integrity of the adversary process, protect privileges that might
otherwise be breached, and promote public confidence in the legal system.8 One of those
circumstances is where an expert is originally retained by one party to litigation, and the expert
6
See generally Kendall Coffey, Inherent Judicial Authority and the Expert Disqualification Doctrine,
56 Fla. L. Rev. 195, 196 (2004) (discussing the development of the expert disqualification doctrine as a
distinctive jurisprudence not anchored upon the explicit terms of procedural rules, ethical strictures, or
Supreme Court precedent).
See Hanlon v. Sec’y of Health & Human Svcs., 191 F.3d 1344, 1350 (Fed. Cir. 1999) (commenting
that disqualification of an expert is not mandated unless it is reasonable to conclude that the expert
possessed confidential information that would prejudice the opposing party); Koch Ref. Co. v. Jennifer L.
Boudreaux M/V, 85 F.3d 1178, 1181-82 (5th Cir.1996) (applying two-prong test for disqualification of
expert, i.e., whether there was a reasonable expectation of confidentiality and received, and whether
expert received or had reasonable access to the adverse party’s confidential information); Erickson v.
Newmar Corp., 87 F.3d 298, 300 (9th Cir. 1996) (commenting favorably on without applying rules that
other courts have applied in cases in which a party seeks disqualification of an expert witness for
“switching sides”). See also Formosa Plastics Corp., USA v. Kajima Int'l, Inc., 216 S.W.3d 436, 450
(Tex. App. 2006) (adopting two-part test for disqualification of an expert based on a prior relationship
with adversary); W. Va. ex rel. Billups v. Clawges, 620 S.E.2d 162, 167 (W. Va. 2005) (finding no error
in the lower court’s adoption of the two-prong test for expert witness disqualification); Mitchell v.
Wilmore, 981 P.2d 172, 175 (Colo. 1999) (applying two-prong test for disqualification of non-attorney
expert).
7
8
Hewlett-Packard, 330 F. Supp. 2d at 1092; Space Sys./Loral v. Martin Marietta Corp., No. 9520122, 1995 WL 686369, at *2 (N.D. Cal. 1995); Wang Labs., Inc. v. Toshiba Corp., 762 F. Supp. 1246,
1248 (E.D. Va. 1991).
6
subsequently switches sides to consult as an expert for the other party. These cases are referred
to as ‘side-switching’ cases, and form the most common basis for motions to disqualify.9
Another situation where disqualification may be appropriate is where a party retains an expert
witness who previously worked for or had a confidential relationship with the adversary and
acquired confidential information during the course of that relationship.10 In both cases, a
conflict of interest may arise which may preclude the party from using the expert, depending on
the nature and extent of the relationship and the exchange of confidential information between
each party and the expert.11
The expert disqualification doctrine appears to be an extension of the legal principles for
disqualification of an attorney. While attorneys have rules of professional conduct regarding
conflicts of interest, those rules do not apply to non-attorney expert witnesses. Just as a former
attorney’s access to a party’s privileged confidential information should result in that attorney’s
disqualification from serving as counsel for an adverse party, similar principles should be applied
to non-attorney expert witnesses who have had a prior confidential relationship with and
obtained pertinent privileged or confidential information through that relationship.
The expert disqualification doctrine has particular relevance in intellectual property
cases, such as this one, where an expert’s prior access to and knowledge of the opposing party’s
privileged or confidential information may prejudice the integrity of the judicial process. The
Wang Labs., 762 F. Supp. at 1248 (“To be sure, no one would seriously contend that a court should
permit a consultant to serve as one party's expert where it is undisputed that the consultant was previously
retained as an expert by the adverse party in the same litigation and had received confidential information
from the adverse party pursuant to the earlier retention. This is a clear case for disqualification.”).
9
10
Space Sys./Loral, 1995 WL 686369, at *2.
11
Hansen v. Umtech Industrieservice Und Spedition, GBmbH, No. 95-516 MMS, 1996 WL 622557, at
*3 (D. Del. July 3, 1996).
7
Court is cognizant, however, that the indiscriminate disqualification of experts in intellectual
property cases has potential for abuse.12 Courts should be careful in disqualifying an expert
based upon prior access to confidential information so as to minimize the risk of a party
conflicting out experts, especially in cases where there may be only a limited number of experts
in a particular field or with specialized scientific or technical expertise.
The Court will therefore apply the two-prong test in determining whether disqualification
of Mr. Storch is appropriate under the facts presented here. Applying this test will require the
Court to determine: (1) Whether Sprint had a confidential relationship with Mr. Storch, and (2)
Whether Sprint disclosed privileged or confidential information to Mr. Storch during that
relationship that is relevant to the current litigation.13
B.
Whether Disqualification of High Point’s Expert is Appropriate
1.
Whether Sprint Had a Prior Confidential Relationship with Mr.
Storch
First, as the party seeking disqualification of High Point’s expert witness, Sprint bears the
burden14 of demonstrating that it was reasonable for it to believe that a confidential relationship
existed between it and Mr. Storch, 15 and, “if so, whether the relationship developed into a matter
English Feedlot, 833 F. Supp. at 1505 (“Courts have also expressed concern that if experts are too
easily subjected to disqualification, unscrupulous attorneys and clients may attempt to create an
inexpensive relationship with potentially harmful experts solely to keep them from the opposing party.”).
12
13
Excel-Jet, 2009 WL 1194936, at *2; Space Sys./Loral, 1995 WL 686369, at *2 (citing Wang Labs.,
762 F. Supp. at 1248).
14
While Sprint is correct that the First Amended Protective Order (ECF No. 498) places the burden on
the party seeking the disclosure of confidential information to an expert or consultant, this does not
change Sprint’s burden in moving to disqualify Mr. Storch as an expert for High Point. The courts are
generally in accord that the party seeking disqualification of an expert bears the burden of demonstrating
that disqualification is appropriate. Koch Ref., 85 F.3d at 1181.
15
Hewlett-Packard, 330 F. Supp. 2d at 1093 (citing Mayer v. Dell, 139 F.R.D. 1, 3 (D.D.C. 1991)).
8
sufficiently substantial to make disqualification or some other judicial remedy appropriate.”16
Initially, a court must determine whether the party seeking disqualification and the expert had a
relationship in which it would be reasonably expected that any communication between them
would be maintained in confidence by the expert.17
The majority of expert disqualification cases can generally be grouped into two
categories: Experts who obtained confidential information while serving as a consultant or
expert to the opposing party, or experts who obtained confidential information while serving as a
former employee of the opposing party. A few courts have considered motions to disqualify
experts who were neither consulted as experts nor were employees of the opposing party.18 In
Dyna-Drill Technologies Inc. v. Conforma Clad Inc.,19 the court granted the defendant’s motion
to disqualify the plaintiff’s expert who was an employee of the defendant’s predecessor and was
substantially involved in the development of the alleged trade secrets at issue in the case.
Though the defendant never sought to retain the plaintiff’s expert, the court found that because
the expert was an employee of the defendant’s predecessor and was substantially involved in the
development of the alleged trade secrets at issue in the case, the defendant could reasonably
expect that it had the type of relationship with the expert whereby certain communications would
16
Paul v. Rawlings Sporting Goods Co., 123 F.R.D. 271, 278 (S.D. Ohio 1988).
17
In re Ambassador Grp., Inc., Litig., 879 F. Supp. 237, 243 (E.D.N.Y. 1994).
18
See Dyna-Drill Techs. Inc. v. Conforma Clad Inc., No. H-03-05599, 2005 WL 5979403 (S.D. Tex.
May 16, 2005) (expert was employee of the defendant’s predecessor company); U.S. ex rel. Cherry Hill
Convalescent Ctr., Inc. v. Healthcare Rehab Sys., Inc., 994 F. Supp. 244, 249-50 (D.N.J. 1997) (expert
was the first party’s accountant during the time that the actions complained of allegedly occurred and the
litigation was first instituted); Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., No. 95 Civ.
8833(RPP), 2000 WL 42202, at *4 (S.D.N.Y Jan. 19, 2000) (expert was an outside consultant for the first
party predating the litigation); Marvin Lumber & Cedar Co. v. Norton Co., 113 F.R.D. 588, 590-91 (D.
Minn. 1986) (expert was a consulting engineer for the first party at the time he was retained as an expert
for the other party).
19
2005 WL 5979403.
9
remain in confidence. It further commented that “the confidential relationship would seem to be
stronger between an employer and a long-time employee than between an employer and a
sometime expert.”20
In this case, Sprint contends that there is no dispute that a confidential relationship
existed between it and Mr. Storch. While Mr. Storch was employed at Clearwire, it was publicly
disclosed that Sprint and Clearwire were parties to certain non-disclosure and confidentiality
agreements with respect to certain confidential information disclosed during their negotiations.
Mr. Storch’s frequent access to Sprint’s confidential information is, moreover, premised upon
the existence of a confidential relationship. The existence of multiple agreements between Sprint
and Clearwire incorporating confidentiality provisions and the ongoing and extensive
confidential communications from Sprint to Clearwire and Mr. Storch show that Sprint is
objectively reasonable in believing that a confidential relationship existed. In the SprintClearwire 2008 transaction agreement, both companies committed that they each would
hold, and will cause their respective Affiliates and Representatives to hold, in
confidence . . . all confidential documents and information concerning any other
Party or any Affiliate of another Party that has come into the possession or
knowledge of the Receiving Party in the course of negotiating, entering into or
performing this Agreement.21
Given that agreement, Sprint asserts that it correctly believed that it had a confidential
relationship with Clearwire and, by extension, Clearwire’s employee, Mr. Storch.
Mr. Storch is neither a former expert or consultant for Sprint, nor a former employee of
Sprint. Instead, by all accounts, he was employed as vice president of operations, project
management, construction, and engineering at the Sprint-affiliated company Clearwire. In that
20
Id. at *1.
May 7, 2008 Sprint and Clearwire Transaction Agreement, Ex. 7 to Sprint’s Motion to Disqualify
(ECF No. 820-9).
21
10
role, he was provided Sprint’s confidential information while working on certain joint projects
between Clearwire and Sprint. One of those projects was the construction of a nationwide
broadband network based on WiMAX technology, a project that was ultimately not
implemented. Mr. Storch received Sprint’s confidential information in connection with his work
on the Sprint-Clearwire projects.
High Point does not offer much argument to refute Sprint’s contention that it had a
confidential relationship with Mr. Storch while he was employed at Clearwire and working on
joint projects with Sprint, one of which was a project to construct a national broadband network
based on WiMAX technology. Sprint has made a sufficient showing that it had a reasonable
belief that it had a confidential relationship with Clearwire at the time it disclosed confidential
information to Mr. Storch. The Sprint-Clearwire 2008 transaction agreement further extends that
confidential relationship to affiliates and representatives of Clearwire, which would include Mr.
Storch in his capacity as one of its vice-presidents. Sprint has established that it had a prior
confidential relationship with High Point’s expert, Mr. Storch, at the time it disclosed
confidential information to him.
2.
Whether Disclosure of Sprint’s Confidential Information to Mr.
Storch Warrants Disqualification
Having established that Sprint had a confidential relationship with Mr. Storch, the Court
must next determine whether, during that confidential relationship, Sprint disclosed privileged or
confidential information that warrants the disqualification of Mr. Storch from serving as a
technical expert or consultant to High Point in this case. Sprint argues that disqualification of Mr.
Storch is warranted here because he received confidential information relevant to the technology
at issue in this case. It urges the Court to follow the courts that have disqualified experts who
have received confidential technical information wholly unrelated to issues of privileges. It
11
argues that disqualification of an expert is warranted when that expert receives the opposing
party’s non-privileged confidential technical or business information, and disqualification should
not be limited to confidential information protected by the attorney-client privilege. Sprint cites
several cases where courts have disqualified experts who gained technical confidential
information concerning the patent or technology at issue in the litigation.22
Not surprising, High Point advances the opposite position. It contends that
disqualification is not warranted where the expert only receives confidential information that
relates to purely technical or business information that is discoverable in litigation. It argues that
the nature of the alleged confidential information to which Mr. Storch was exposed is not the
type of confidential information that would warrant his disqualification. High Point urges the
Court to distinguish between confidential information that relates to purely technical or business
information that is discoverable in litigation, and information that relates to confidential
communications concerning legal strategies or other litigation-related issues that is privileged
and not otherwise subject to discovery. High Point argues that such a distinction makes sense
because a party’s confidential business or technical information is subject to discovery in the
ordinary course of litigation. If an expert has only been exposed to that type of information, the
party seeking to retain that expert can obtain that same information through routine discovery,
and therefore does not obtain any unfair or untoward litigation advantage by retaining the expert
22
See e.g., Oracle Corp. v. DrugLogic, Inc., No. C-11-00910 JCS, 2012 WL 2244305, at *7 (N.D. Cal.
June 15, 2012) (disqualifying expert who had access to relevant technical information); Lifewatch Serv.
Inc. v. Braemer Inc., No. 09-cv-6001, 2010 WL 3909483, at *2 (N.D. Ill. Sept. 28, 2010) (“With regard to
the second part of the test, courts have disqualified experts in patent infringement cases where the expert
has gained confidential information concerning the patent or technology at issue in the litigation.”); Alien
Tech. Corp. v. Intermec, Inc., No. 3:060-CV-51, 2007 WL 4261972, at *2 (D.N.D. Nov. 30, 2007)
(disqualifying expert because, among other things, he was knowledgeable about plaintiff’s “product line”
and “future strategies”). See also Brett, 2001 WL 36162670, at *1 (excluding expert whose knowledge
was “intertwined with the technology at issue”); WesternGeco LLC v. Ion Geophysical Corp., No. 091827, 2010 WL 2266610, at *2 (S.D. Tex. June 2, 2010) (disqualifying former employee as expert).
12
that would warrant disqualification. According to High Point, it makes no difference, as a
practical matter, whether the expert became aware of that information via discovery taken in the
litigation or some other independent route, and there is no reason to disqualify the expert. By
contrast, if the expert is exposed to confidential information relating to a party’s litigation
strategies, analysis of the strengths or weaknesses of the case, or other similar privileged or
litigation-related confidential information, then an adverse party potentially would gain an unfair
advantage by retaining the expert and thereby accessing information that would not be otherwise
discoverable. In support of its argument, it cites to cases where courts have made such a
distinction.23
Reviewing the parties’ arguments, the Court is convinced of the merits of limiting
disqualification of a party’s expert to situations where the expert received privileged confidential
communications or documents pertaining to litigation, which may reflect information subject to
the work-product doctrine or attorney-client privilege. The Court agrees with the line of cases
making a distinction between confidential information that relates to purely technical or business
information that is discoverable in litigation, and information that relates to confidential
communications concerning legal strategies or other litigation-related issues that is privileged
and not otherwise subject to discovery. For example, several courts in ruling on motions to
disqualify expert have defined “confidential information” essentially as information “of either
particular significance or [that] which can be readily identified as either attorney work product or
within the scope of the attorney-client privilege.”24 These cases refer to confidential information
23
Koch Ref. 85 F.3d at 1181-82; In re JDS Uniphase Corp. Sec. Litig., No. C-02-1486 CW (EDL),
2006 WL 2845212, at *3 (N.D. Cal. Sept. 29, 2006); Cherry Hill, 994 F. Supp. at 252; Nikkal Indus., Ltd.
v. Salton, Inc., 689 F. Supp. 187, 191 (S.D.N.Y. 1988).
24
JDS Uniphase, 2006 WL 2845212, at *3; Hewlett-Packard, 330 F. Supp. 2d at 1094; Cherry Hill,
994 F. Supp. at 248; Paul, 123 F.R.D. at 278; Nikkal, 689 F. Supp. at 191-92.
13
as including discussion of the party’s “strategy in the litigation, the kinds of experts [the party]
expected to retain, [the party’s] view of the strengths and weaknesses of each side, the role of
each of the [party’s] experts to be hired and anticipated defenses.”25 At least one court has found
that “communication based upon technical information as opposed to legal advice” is not
considered privileged for purposes of disqualifying an expert.26 “Unlike attorney-client
communications, discussions between parties or counsel and experts do not carry the
presumption that confidential information was exchanged.”27
The Court therefore holds that disqualification of an expert—where the expert in question
is neither a former expert or consultant nor a former employee of the party seeking
disqualification—should be limited to situations where the expert received confidential
information or communications concerning legal strategies or other litigation-related issues that
would not otherwise be subject to discovery, as discussed in Koch Refining Co. v. Boudreaux.28
As the expert disqualification doctrine derives from legal principles surrounding attorney
conflicts of interest and cases where its purpose is to protect privileges such as the attorney-client
privilege, this limitation seems appropriate.
In this case, Sprint claims that Mr. Storch received at least the following confidential
information that warrants his disqualification from serving as an expert or consultant to High
Point:
25
Mayer, 139 F.R.D. at 4.
Nikkal, 689 F. Supp. at 191-92 (declining to disqualify the defendant’s expert witness as the record
was void of any evidence that privileged communication was discussed).
26
27
Stencel v. Fairchild Corp., 174 F. Supp. 2d 1080, 1083 (C.D. Cal. 2001).
28
85 F.3d at 1181.
14
“[I]nformation contained in a data warehouse concerning the engineering team
and spectrum holdings of Sprint’s Xohm business unit.”
Sprint’s “frequency information” and “site-specific engineering information.”
A hard drive and CDs containing Sprint site development information.
A backhaul analysis prepared by Sprint.
Pricing information for Sprint services involving dedicated internet access over a
network.
An e-mail and spreadsheet reflecting Sprint’s network design strategy for CDMA
sites.
A detailed map showing Sprint’s estimated coverage for Northern California and
Sprint’s strategic considerations in that region.
Sprint has not argued that the technical information disclosed to Mr. Storch constituted
litigation strategy or attorney work product, or otherwise falls within an attorney-client privilege.
The nature of the confidential information described by Sprint also does not suggest that any of
the information constitutes privileged confidential communications. The manner in which Mr.
Storch received the information—through his employment with a Sprint-affiliated company
working with Sprint on a joint project to construct a nationwide broadband network—makes it
seem doubtful that Sprint would have disclosed confidential information or communications
concerning legal strategies or other litigation-related issues that would not otherwise be subject
to discovery.
Even if the Court adopted Sprint’s position that disqualification of an expert is warranted
when that expert receives the opposing party’s non-privileged confidential technical or business
information, the Court would not have found disqualification of Mr. Storch was warranted here.
15
While Sprint claims that it has submitted several examples of Mr. Storch’s receipt of confidential
information regarding the design, constituent equipment, and backhaul interconnections in
Sprint’s CDMA infrastructure network, a review of the sealed exhibits filed in support of its
motion to disqualify do not support its claims. The Court sees evidence that Mr. Storch received
a hard disk drive and CDs containing preliminary site development work for the joint SprintClearwire WiMAX project
(Exhibit
8);
a spreadsheet
containing the site name,
latitude/longitude, and height of cell towers on existing iDEN/CDMA sites and a sample plot of
cell tower coverage in Northern California (Exhibit 9); backhaul analysis for Clearwire assigned
territories (Exhibit 10); and a draft agreement containing pricing services by Sprint involving
dedicated internet access over a network (Exhibit 11).29 The Court is not convinced that this
confidential information that Sprint disclosed to Mr. Storch, while he was a vice president at the
Sprint-affiliated company Clearwire, constitutes relevant technical information concerning the
specific technology at issue in this lawsuit and that would warrant disqualifying Mr. Storch from
serving in any capacity to High Point in this case. Sprint has failed to show how information Mr.
Storch may have seen would warrant his disqualification from serving as a technical consultant
or expert to High Point in this case, which involves Sprint’s CDMA infrastructure equipment.
When compared to cases where disqualification of an expert has been granted, the manner in
which Mr. Storch received the confidential information and the nature of the information
allegedly disclosed is much too attenuated from the technology and issues in this case to warrant
the drastic sanction of disqualification. Accordingly, Sprint’s motion to disqualify John Storch as
an expert witness for High Point in this litigation is denied.
29
ECF No. 821.
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III.
MOTION FOR ORDER PERMITTING DISCLOSURE OF CONFIDENTIAL
INFORMATION TO JOHN STORCH
The Court next considers whether Mr. Storch should be permitted to view information
designated as “Confidential Materials” under the parties’ Protective Order. High Point has filed
a Motion for an Order Permitting Disclosure of Confidential Information to John Storch. It
requests an order permitting it to disclose confidential materials, as defined in the Protective
Order, produced in discovery to Mr. Storch. In support of its motion, High Point states that it has
retained Mr. Storch as an expert witness and he has agreed to abide by the terms of the Protective
Order.
Sprint objects to allowing High Point to disclose confidential materials to Mr. Storch on
the same grounds it asserted in support of its motion to disqualify him, namely that he previously
obtained relevant Sprint confidential information during the course of his work on a nationwide
broadband network projection while employed with a Sprint-affiliated company. For essentially
the same reasons the Court denied Sprint’s motion to disqualify Mr. Storch as an expert for High
Point, the Court overrules Sprint’s objections to allowing Mr. Storch access to its confidential
information.
High Point has complied with the provisions of the Protective Order pertaining to experts
and the Court has overruled Sprint’s objections to allowing High Point to disclose confidential
materials to Mr. Storch. High Point is therefore permitted to disclose Confidential Materials, as
defined in the Protective Order, to its technical expert John Storch, subject to any other
applicable terms and conditions of the Protective Order.
IT IS THEREFORE ORDERED THAT Sprint’s Cross-Motion to Disqualify John
Storch as an Expert for High Point SARL (ECF NO. 819) is denied.
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IT IS FURTHER ORDERED THAT High Point’s Motion for an Order Permitting
Disclosure of Confidential Information to John Storch (ECF No. 805) is granted. High Point is
hereby permitted to disclose Confidential Materials, as defined in the parties’ First Amended
Protective Order, to High Point’s technical expert John Storch, subject to any other applicable
terms and conditions of the Protective Order.
IT IS SO ORDERED.
Dated this 8th day of February, 2013, at Kansas City, Kansas.
s/ David J. Waxse
David J. Waxse
U. S. Magistrate Judge
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