University of Virginia Patent Foundation v. General Electric Company
Filing
128
MEMORANDUM OPINION. Signed by Magistrate Judge Joel C. Hoppe on 11/20/15. (jcj)
UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF VIRGINIA
Charlottesville Division
UNIVERSITY OF VIRGINIA
PATENT FOUNDATION,
Plaintiff,
v.
GENERAL ELECTRIC COMPANY
d/b/a GE HEALTHCARE,
Defendant.
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Civil Action No. 3:14cv51
MEMORANDUM OPINION
By:
Joel C. Hoppe
United States Magistrate Judge
Before the Court is Defendant General Electric Company’s (“GE”) motion to prevent
disclosure of its confidential information to Plaintiff University of Virginia Patent Foundation’s
(“UVAPF”) proposed expert. ECF No. 77. The matter has been thoroughly briefed by both
parties, see ECF Nos. 77-1 (GE’s brief in support), 90 (UVAPF’s response in opposition), 93
(GE’s reply brief), 99 (UVAPF’s surreply), and the Court heard oral argument on September 21,
2015. Having considered the relevant case law and the parties’ briefs, exhibits, and oral
arguments, the Court GRANTS IN PART and DENIES IN PART GE’s motion.
I. Factual and Procedural History
This case concerns two patents related to magnetic resonance (“MR”) imaging. UVAPF
alleges that GE, a manufacturer of MR technologies, infringed upon Patent No. RE44,644 (the
‘644 patent), titled “Method and apparatus for spin-echo-train MR imaging using prescribed
signal evolutions.” UVAPF later filed an amended complaint which added RE45,725 (the ‘725
patent), a continuation of the ‘644 patent. ECF No. 77. The parties are in discovery and have
begun exchanging confidential materials under a protective order entered on June 18, 2015. ECF
No. 63. Among these materials is GE’s “highly confidential technical information,” including
“source code related to the operation of GE’s MR systems.” GE’s Br. in Supp. 1. GE designated
this material “CONFIDENTIAL OUTSIDE COUNSEL EYES ONLY” (“Confidential
1
Materials”) affording it the highest level of protection under the protective order. 1 Paragraph 10
of the protective order requires a party intending to disclose Confidential Materials to an expert
to notify opposing counsel and allow them five days to object.
On July 6, 2015, UVAPF notified GE that it intended to use Dr. Klaus Jürgen Hennig as a
consultant and expert in the case and provided information on Dr. Hennig as required under the
protective order. GE’s Br. in Supp. Ex. A. GE objected and requested additional information. Id.
at 3. The parties exchanged emails from July 11 to July 21 and met and conferred on July 21, but
they were unable to resolve the dispute.
Dr. Hennig is a professor and the co-chairman and scientific director of the Department
of Radiology, Medical Physics at the University Medical Center in Freiburg, Germany. Hennig
Decl. ¶ 1, ECF No. 90; GE’s Br. in Supp. Ex. A, at 6 (Dr. Hennig’s curriculum vitae). Dr.
Hennig is “a respected and accomplished MR scientist,” GE’s Br. in Supp. 1, with many
publications, inventions, and consulting projects to his credit. Id.; id. Ex. A at 6–7.
GE has two primary objections to the disclosure of its Confidential Materials to Dr.
Hennig. First, GE is concerned about Dr. Hennig’s relationship with GE’s rivals, especially
Siemens Healthcare, which it describes as “by far GE’s largest competitor,” GE Br. in Supp. 3.
Id. at 3–6, 9–11. The University Medical Center Freiburg collaborates with multiple companies
involved in MR technology through the Center’s MR Development and Application Center
(“MRDAC”), including collaborations with Siemens since approximately 1993. Hennig Decl. ¶
5; GE Br. in Supp. 3–4. In addition, Dr. Hennig has personally consulted with Siemens in the
1
The protective order reserves the designation CONFIDENTIAL OUTSIDE COUNSEL EYES
ONLY for “information of a commercially sensitive nature such as a trade secret that a
producing party or producing third party determines in good faith is likely to cause significant
competitive harm to its existing or prospective commercial relationships if disclosed to third
parties or select employees or agents of the receiving party.” Protective Order ¶ 1.b.
2
past with projects typically involving “reports about highlights from scientific meetings,
assessment of new technologies and their market perspective, as well as strategic advice . . .
relating to the market in developing countries.” Hennig Decl. ¶ 7. Dr. Hennig has also given
numerous presentations at meetings and conferences organized by Siemens. Id. ¶ 8; GE Br. in
Supp. 5–6. GE is concerned that Dr. Hennig will inadvertently disclose its Confidential Materials
to its biggest market competitor. GE Br. in Supp. 9–11.
Secondly, GE objects to Dr. Hennig as an independent inventor. GE indentifies two
pending patent applications of Dr. Hennig’s that it contends are related to its Confidential
Materials. GE Br. in Supp. 6–8, 11–12. GE argues that Dr. Hennig’s involvement in these
applications would violate the prosecution bar. Id. GE also argues that UVAPF has too narrowly
read the bar’s prohibitions and fears that Dr. Hennig consequently does not appreciate the full
scope of the bar. Id.
UVAPF contends that disclosure of GE’s materials to Dr. Hennig does not present a
significant risk of competitive injury because his direct consultation with Siemens has ended and
both his past work and current collaborations through the MRDAC do not relate to the
technology at issue in this suit. UVAPF Br. in Opp. 14–16. UVAPF further argues that Dr.
Hennig possesses a unique level of expertise in the specific technology at issue and that the only
other individuals with comparable knowledge are the inventor of the patent-in-suit and four
people who have significant ties to GE. Id. at 6–9; UVAPF Surreply 1–4. Finally, UVAPF
argues that GE has publicly disclosed the part of its confidential materials relevant to this
lawsuit. UVAPF Br. in Opp. 9–14.
3
Concerning the patent prosecution bar, UVAPF defends its interpretation of the bar’s
scope and asserts that none of Dr. Hennig’s pending patents present the risk of violating the bar
because they concern unrelated technology. Id. at 16–20.
II. Discussion
Federal Rule of Civil Procedure 26(c)(1) authorizes courts to enter protective orders that
restrict the disclosure of information exchanged in discovery for good cause, such as
preservation of confidential commercial information and trade secrets. In re Violation of Rule
28(D), 635 F.3d 1352, 1357 (Fed. Cir. 2011); Brown Bag Software v. Symantec Corp., 960 F.2d
1465, 1469–70 (9th Cir. 1992). When the parties have entered into a protective order, as they
have here, a party seeking to modify or extend that order to address a specific witness bears “the
burden of proving good cause, which requires a showing that specific prejudice or harm will
result if the protective order is not granted.” In re Roman Catholic Archbishop of Portland in
Oregon, 661 F.3d 417, 424 (9th Cir. 2011) (quotations and citations omitted); see Violation of
Rule 28(D), 635 F.3d at 1357; Isis Pharm., Inc. v. Santaris Pharma A/S Corp., No. 11cv2214,
2013 WL 3367575, at *3 (S.D. Cal. July 5, 2013). The party seeking to use an expert “bears the
burden of showing that there are not other experts available or that those who are available will
be less useful than” its chosen expert. Saso Golf, Inc. v. Nike, Inc., No. 08 C 1110, 2009 WL
3242112, at *2 (N.D. Ill. Oct. 5, 2009). The Court must then “balance the [receiving party’s]
interest in selecting the consultant most beneficial to its case, considering the specific expertise
of this consultant and whether other consultants possess similar expertise, against the disclosing
party's interest in protecting confidential commercial information from disclosure to
competitors.” BASF Corp. v. United States, 321 F. Supp. 2d 1373, 1378 (Ct. Int’l Trade 2004).
4
A.
Specific Harm
To meet its initial burden of demonstrating harm, GE must “show the type of confidential
information that will need to be disclosed to [UVAPF’s] expert, that this information will be
useful to [GE’s] competitors, and that [UVAPF’s] expert is in a position that could allow the
information to be used by competitors.” U.S. Gypsum Co. v. Lafarge N. Am., Inc., No. 03 C
6027, 2004 WL 816770, at *1 (N.D. Ill. Mar. 2, 2004).
GE has provided a rough description of the Confidential Materials it has disclosed thus
far. The central disclosures in dispute are the source code for GE’s MR scanners and the
technical documents describing its implementation. GE has produced “over 500 standalone
documents consisting of over 17,000 pages and the Pulse Sequence Computer,” which contains
114,000 lines of source code and roughly 100 pages of attendant documents. GE Reply Br. 11–
12. At oral argument, counsel agreed that the key section of code dealing with flip angle
calculation is only 700 lines long, but that those lines reference multiple subroutines described in
other parts of the source code.
UVAPF argues that GE could not suffer harm from the disclosure of this information
because the formulas its source code uses to calculate flip angles have been publicly disclosed in
GE’s patents or in published articles by various MR scientists. UVAPF Br. in Opp. 9–14.
Although some formulas in the source code may be publicly available, GE contends that the rest
of the code and the technical documents describing it contain confidential GE information and
trade secrets that would be useful to its competitors. GE Reply Br. 11–13. The Court agrees. The
parties’ stipulated protective order provides heightened protection for source code, see Protective
Order ¶ 8, and courts have found that source code presents a “self-evident” risk of harm from
disclosure. Telebuyer, LLC v. Amazon.com, Inc., No. 13cv1677, 2014 WL 5804334, at *2 (W.D.
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Wash. July 7, 2014) (quoting Rivera v. NIBCO, Inc., 384 F.3d 822, 827 (9th Cir. 2004)).
Additionally, Dr. Reed Busse, GE’s Global MR Research Manager, provided a declaration with
a non-exhaustive list of confidential GE technologies described in its source code and other
technical documents. 2 Busse Decl. ¶ 8, ECF No. 93-2. GE has made a sufficient showing that the
information in its technical documents would be useful to its competitors.
The final consideration is whether providing Confidential Materials to Dr. Hennig may
lead to its use by GE’s competitors. GE does not argue that Dr. Hennig would intentionally use
the information he might view as an expert witness to aid Siemens or any other entity. GE Br. in
Supp. 1 (“GE has no reason to doubt [Dr. Hennig’s] integrity.”). Dr. Hennig has agreed to be
bound by the protective order and has signed an acknowledgment form, which was provided to
GE as required under paragraph 10 of the protective order. UVAPF Br. in Opp. 4 & n.5. Rather,
GE argues that as an active consultant and inventor in the same field as technology disclosed in
the Confidential Materials, Dr. Hennig may divulge or use knowledge gained in this litigation
through the simple imperfections of human nature. See GE Br. in Supp. 10–11 (citing U.S.
Gypsum Co., 2004 WL 816770, at *1).
Courts evaluate the risk of inadvertent disclosure by examining any ties or relationships
between the proposed expert and the disclosing party’s competitors. Generally, an ongoing
consulting relationship with a competitor presents a high risk of inadvertent disclosure, while a
past or attenuated relationship does not. See, e.g., Symantec Corp., 2012 WL 3582974, at *2–3
2
The source code and other technical documents provided to GE’s counsel for
production to UVAPF concern numerous other confidential GE technologies
including Fast/Turbo Spin Echo data encoding schemes, parallel imaging (which
may be utilized with high-density RF coils), phase pre-winding and rewinding
pulses, phase correction techniques, non-contrast enhanced MR angiography, T2prep pulses, multi-species signal nulling, and techniques for acquiring signal in
the presence of strong dephasing fields such as near metal implants.
Busse Decl. ¶ 8.
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(finding the president of a company that offered consulting and analysis in the field at issue
presented a substantial risk of inadvertent disclosure); GPNE Corp. v. Apple Inc., No.
5:12cv2885, 2014 WL 1027948, at *2 (N.D. Cal. Mar. 13, 2014) (upholding objection to expert
who actively consulted with Apple’s competitors, but denying objection to expert who worked at
the FCC); Advanced Semiconductor Materials Am. Inc. v. Applied Materials Inc., No. 95-20169,
1996 WL 908654, at *3 (N.D. Cal. Oct. 28, 1996) (finding little risk of disclosure from expert
who had not consulted on the technology at issue for four years).
Dr. Hennig has an ongoing indirect relationship with Siemens through his employer and a
past direct relationship, having “on occasion worked for Siemens as a consultant in [his] personal
capacity.” Hennig Decl. ¶¶ 5–7. Dr. Hennig is the head of the University Medical Center
Freiburg’s MRDAC, which interfaces between the university and industry members and has
collaborated with Siemens since 1993. Id. ¶ 5; GE’s Br. in Supp. Ex. A, at 6. His direct
consultation “typically included reports about highlights from scientific meetings, assessment of
new technologies and their market perspective as well as strategic advice . . . relating to the
market in developing countries.” Hennig Decl. ¶ 7. He has also given presentations at meetings
organized by Siemens about technology that he helped develop. Id. ¶ 8.
Dr. Hennig’s direct relationship with Siemens does not appear to relate to the technology
at issue in this suit. 3 His consulting projects did not involve developing or implementing pulse
sequences and did not lead to him advising Siemens on such technology. Indeed, his direct
3
GE argues that the technology in dispute is “spin-echo sequences for imaging an object and
scanners that implement them,” and includes in that definition each technological area touched
upon by a claim of the patents-in-suit, such as a main magnet system, a gradient magnet system,
and radio-frequency transmitters and receivers. GE Reply Br. 5. This scope is too broad,
effectively encompassing any expert who consults in MR or in a slew of other fields whose
technology MR incorporates. While the Court does not ascribe to the very narrow scope UVAPF
advocates, the technology at issue when considering Dr. Hennig’s competitive activity cannot
include every component of a MR imaging system.
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consultation did not involve actually developing any technology. His presentations have been
summaries of his own or others’ research in other areas. To a large degree, Dr. Hennig’s direct
interactions with Siemens have consisted of him summarizing and explaining various MR
technologies. By Dr. Hennig’s sworn declaration, none of these have been related to the patentsin-suit. 4
Dr. Hennig’s work through the MRDAC presents a closer question. Those collaborations,
at least, involve development of new MR technology, are ongoing, and will continue in the
future. GE’s apprehension that the knowledge Dr. Hennig gains from consulting in this case
could seep, through no fault or intention of his own, into technologies the MRDAC develops
with Siemens is the general type of concern that other courts have recognized. See, e.g.,
Symantec Corp. v. Acronis Corp., No. 11-5310, 2012 WL 3582974, at *1 (N.D. Cal. Aug. 20,
2012) (“[T]here is a tangible risk that [the proposed expert] will not be able to separate the
highly confidential information he gleans from reviewing Defendant’s source code with his
consulting and publication work in that same technical field.”); BASF Corp., 321 F. Supp. 2d at
1380 (“It is very difficult for the human mind to compartmentalize and selectively suppress
information once learned, no matter how well-intentioned the effort may be to do so.”).
Nevertheless, the Court finds that circumstances in this case temper the threat of
inadvertent disclosure. The MRDAC works with Siemens on finite projects, rather than generally
attempting to improve Siemens’s MR technology. As such, there would have to be an overlap
between the specific project undertaken and some confidential knowledge gained by Dr. Hennig
before even the possibility of inadvertent disclosure arises. Dr. Hennig has sworn, and the Court
is satisfied with its own in-camera review, that no MRDAC project has related to the technology
Of course, should Dr. Hennig renew a personal consulting relationship with Siemens or another
of GE’s competitors, the Court’s assessment of the risk of disclosure may change.
4
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in the patents-in-suit. Dr. Hennig is the head of the MRDAC and presumably has extensive
control over his own involvement in research collaborations. Going forward, the nature of the
MRDAC and Siemens’s finite projects provides an easy and obvious method for Dr. Hennig to
spot the potential for inadvertent disclosure and take precautions against it. Furthermore, the
MRDAC already has experience maintaining confidentiality between competitors. Besides
Siemens, the MRDAC has active collaborations with Bruker and Esaote, which GE identifies as
competitors with itself and Siemens in the market for MR technology. See Hennig Decl. ¶ 6; GE
Br. in Supp. 3.
Beyond his consulting activities, Dr. Hennig presents an additional risk of inadvertent
disclosure as an independent inventor. When examining patent prosecution bars, courts approach
the inadvertent disclosure analysis by asking whether the person who will view confidential
information engages in “competitive decision-making.” See, e.g., In re Deutsche Bank Trust Co.
Ams., 605 F.3d 1373, 1378 (Fed. Cir. 2010); Brown Bag Software, 960 F.2d at 1470. As
someone “‘substantially engaged’ in patent prosecution who ha[s] ‘the opportunity to control the
content of patent applications,’” an “expert witness who prepares or applies for patents [himself]
is undoubtedly a competitive decision-maker.” Applied Signal Tech., Inc. v. Emerging Mkts.
Commc'ns, Inc., No. C-09-02180, 2011 WL 197811, at *5 (N.D. Cal. Jan. 20, 2011) (quoting
Deutsche Bank, 605 F.3d at 1380). Rather than finite and externally defined projects like those
undertaken by the MRDAC, an inventor’s endeavors are naturally driven by his own creativity
and ingenuity, presenting a greater opportunity for subconscious use of material gleaned from
other sources. Litigants and courts acknowledge this risk by applying safeguards: in this case, a
prosecution bar and Dr. Hennig’s signed acknowledgement to abide by the protective order.
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B.
Dr. Hennig’s Uniqueness
UVAPF contends that there is not another individual with comparable expertise to Dr.
Hennig available to testify. UVAPF Br. in Supp. 6–9. In his declaration, Dr. Hennig states that
there are “only a handful of researchers” with significant expertise in the subfield of the claimed
invention, “a pulse sequence for a magnetic resonance scanner that uses variable-flip-angle
refocusing pulses to extend the spin echo train for the sequence.” Hennig Decl. ¶ 2. He names
himself, Dr. Reed Busse, and John Mugler, a named inventor on the ‘644 patent, as the top three
in the field, followed by “R. Scott Hinks (Chief Scientist at GE), Patrick Le Roux (retired GE
physicist), and David Aslop (a longtime GE collaborator currently at Beth Israel Deaconess
Medical Center).” Id. at ¶ 3. Dr. Hennig is “not aware of any other scientists who have published
significantly or otherwise have substantial expertise in this particular area.” Id. Plaintiff’s
counsel contacted Dr. Aslop, who indicated he was not interested in being a witness and did not
respond to further inquiries. Joseph DePumpo Decl., August 13, 2015, ¶¶ 2–5, ECF No. 90.
UVAPF thus concluded that Dr. Hennig is the only expert with substantial expertise who is not a
current or former GE employee or an inventor of the patents-in-suit.
As a counter-argument, GE asserts that the field of experts is much broader than the
subfield identified by UVAPF. 5 A party’s unnecessarily narrow definition of an expert’s field
may provide a false impression that the expert is unique. On the other hand, the technology at
issue may concern a highly specialized field from which the pool of experts is limited. UVAPF
insists that it needs Dr. Hennig precisely because the subfield of MR imaging technology
concerning “the use of variable flip-angle pulses to extend the spin-echo train” is highly
specialized. UVAPF Br. in Opp. 6-7; Hennig Decl. ¶ 2.
5
GE notes that the International Society for Magnetic Resonance in Medicine has over 8,000
members. GE Br. in Supp. 13.
10
In his declaration, Dr. Busse disagrees with Dr. Hennig’s conclusion that only six
scientists have substantial expertise in variable-flip-angle refocusing pulses. Busse Decl. ¶ 12.
Dr. Busse cites ten scholarly articles on the subject dating back to 1994 to demonstrate that the
technique has been widely known for 20 years. Id. ¶¶ 13–19. He highlights the many authors and
co-authors of these articles and concludes that the techniques at issue “have become well-known
to, and well-understood by, the MR community,” such that he estimates “hundreds are familiar
with these techniques.” Id. ¶ 20.
The support Dr. Busse provides for GE’s argument partly undermines its position. Of the
ten articles cited by Dr. Busse, the lead author for eight of them is one of the six individuals
identified by Dr. Hennig. See Hennig Decl. ¶ 3; Busse Decl. ¶¶ 13–19; UVAPF Surreply 3.
UVAPF has also put forward evidence that Dr. Hennig has been the primary author for eight
landmark research papers on spin-echo train pulse sequences, six of which also dealt with
variable flip angles. UVAPF Surreply 3 & n.6. While UVAPF has not proven that Dr. Hennig is
the only individual with knowledge of the relevant technological niche, it has demonstrated that
his expertise outstrips that of other potential candidates. Furthermore, Dr. Hennig stands out
because he is not affiliated with GE or the patents-in-issue and is willing to testify against GE.
See RR Donnelley & Sons Co. v. Xerox Corp., No. 12 C 6198, 2013 WL 6696652, at *2 (N.D.
Ill. Dec. 19, 2013) (denying Xerox’s motion to exclude the plaintiff’s expert when few experts
existed in the relevant field and the majority of those experts worked for Xerox); Saso Golf, 2009
WL 3242112, at *4 (granting an expert access to some confidential materials even though he
actively consulted with Nike’s competitors because he was one of the few willing to testify
against Nike). UVAPF has made a sufficient showing “that there are not other experts available
11
or that those who are available will be less useful than [Dr. Hennig].” U.S. Gypsum Co., 2004
WL 816770, at *1.
C.
Balance of Interests
When a party does not present evidence that its desired expert is unique, Courts reject the
expert on its opponent’s showing of potential harm. See, e.g., Symantec Corp., 2012 WL
3582974, at *3 (denying an expert who “actively consults with Defendant's competitors” access
to its confidential materials because the defendant did not make “a showing that he possesses
unique knowledge which no other experts possess”); GPNE Corp., 2014 WL 1027948, at *2
(“GPNE has not identified any unique qualifications or knowledge that make Heidari better
suited than any other expert to serve.”). Conversely, courts are willing to accept greater risks of
inadvertent disclosure when the proposed expert possesses unique expertise. See, e.g., Isis
Pharm., 2013 WL 3367575, at *6–7 (granting expert access to confidential information “[b]ased
on the small size and highly specialized nature of the [relevant] industry” despite finding the
expert’s ongoing consulting posed “some potential risk of inadvertent disclosure of defendants'
confidential information”). This willingness stems largely from courts’ recognition that
prohibiting disclosure of information to such an expert may unreasonably impair a party’s ability
to prosecute its case. Id. at *7.
The Court finds that Dr. Hennig’s value to UVAPF as a uniquely qualified witness
outweighs the potential harm from his review of GE’s Confidential Materials. Dr. Hennig
presents some risk of inadvertent disclosure, especially as an independent inventor. Nevertheless,
the evidence provided by both parties shows that there are few individuals with significant
publications and expertise in the niche field at issue and that Dr. Hennig is the only expert with
such high qualifications who is willing and able to testify in this case. The danger of inadvertent
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misuse is eased by the indirect nature of Dr. Hennig’s consulting work through the MRDAC and
his agreement to abide by the protective order and the patent prosecution bar. See Promega
Corp. v. Applera Corp., No. 01-C-244-C, 2002 WL 32359938, at *8 (W.D. Wis. June 7, 2002)
(“I conclude that defendants’ interest in selecting Dr. Gibbs as their expert, in conjunction with
the safeguards defendants have proposed, outweighs plaintiff’s speculative fear that it will suffer
competitive injury as a result of disclosing to Dr. Gibbs.”).
The Court’s finding is particularly influenced by the presence of the prosecution bar,
which is analyzed and defined in the following section. See Applied Signal, 2011 WL 197811 at
*1 (“[C]ourts authorize the inclusion of patent prosecution bars in protective orders as a less
drastic alternative to the disqualification of counsel or experts.”). In short, if Dr. Hennig receives
or reviews Confidential Materials of a proprietary and technical nature concerning technologies
within GE’s accused products, he may not develop patents in those technologies until a year after
the completion of this litigation. The bar would also be violated if he receives or reviews
Confidential Materials related to any of his active patent applications, providing a substantive
limitation on Dr. Hennig’s review. 6 Considering the steps required to take this case through trial
and the possibility of an Inter Partes Review and appeal of the district court’s judgment to higher
courts, Dr. Hennig will be bound by the prosecution bar for years after his service as an expert.
The Court finds that this bar provides appropriate additional protection against inadvertent
disclosure in the area where it is needed most—Dr. Hennig’s activity as an independent inventor.
6
GE provides evidence that there is overlap between some of the technology disclosed in its
Confidential Materials and Dr. Hennig’s patent applications. Compare Busse Decl. ¶ 8 (“phase
pre-winding and rewinding pulses”), with Hennig Decl. ¶ 9 (“prewinding pulses in MR
sequences”). UVAPF denies this issue by reading the prosecution bar very narrowly. UVAPF Br.
in Opp. 16–20. With the bar clearly defined by this opinion, UVAPF and Dr. Hennig can
reevaluate the risk of violating the bar and restrict his access to portions of the Confidential
Materials if necessary.
13
In granting Dr. Hennig access to GE’s Confidential Materials, the Court imposes one
additional safeguard: UVAPF may disclose only technical documents to Dr. Hennig. In its reply
brief, GE argues that Dr. Hennig has worked as a business as well as a technical consultant to
GE, citing to Dr. Hennig’s statements that he provided “strategic advice to Siemens . . . relating
to the market in developing countries,” and presented his research at conferences organized by
Siemens as “part of [its] marketing strategy.” GE Reply Br. 6 & nn.7–8; see Hennig Decl. ¶¶ 7–
8. GE thus identifies a further risk of harm from Dr. Hennig’s review of sales, marketing, and
strategic planning materials that are included in GE’s Confidential Materials. While the Court is
not convinced that Dr. Hennig acted, or will act, as a business consultant, Dr. Hennig’s unique
worth as an expert is tied to his extensive experience with variable-flip-angle refocusing pulses.
Outside that area of expertise, Dr. Hennig is not distinctive. UVAPF may want an expert to
review GE’s sales, marketing, and strategic planning materials at some point in this litigation. In
balancing the parties’ competing interests, the Court finds it appropriate to limit the disclosure of
non-technical information to Dr. Hennig, who after all was chosen for his niche technical
knowledge. See U.S. Gypsum Co., 2004 WL 816770, at *3 (“It would also seem that financial
and customer information that may be disclosed because [it is] possibly relevant to the issue of
damages is not the type of information that need be provided to a technical expert.”).
D.
Prosecution Bar
The parties disagree on the scope of the prosecution bar. Protective Order ¶ 7(iv). GE
argues that the plain language of the bar prohibits persons from working on patents related to any
Confidential Material they receive. GE Br. in Supp. 6–8, 11–12; GE Reply Br. 13–15. GE
identifies two of Dr. Hennig’s pending patent applications that it believes fall under the bar and
expresses concern that there are more. Id.
14
When the Court reviewed the parties’ proposed protective orders in June, it addressed
various aspects of the prosecution and acquisition bars, see Memorandum & Order, June 11,
2015, at 10, ECF No. 61, but did not analyze the subject matter covered by the prosecution bar,
which reads:
Persons entitled to access “CONFIDENTIAL OUTSIDE COUNSEL EYES
ONLY” materials shall not provide input to, or participate in the drafting,
amending, or prosecution of patent applications, including reissue patent
applications, related to the “CONFIDENTIAL OUTSIDE COUNSEL EYES
ONLY” material actually received or reviewed by the person for the duration of
one year following completion of this case.
Protective Order ¶ 7(iv). GE’s interpretation is an accurate reading of the prosecution bar. Upon
direct review, however, the Court finds that the bar’s language is vague.
Courts evaluating prosecution bars “must be satisfied that the kind of information that
will trigger the bar is relevant to the preparation and prosecution of patent applications before the
PTO.” Deutsche Bank, 605 F.3d at 1381. A bar whose subject matter depends only upon a
party’s classification of what information it considers confidential lacks the requisite specificity
to comply with this directive. See Opperman v. Path, Inc., No. 13cv453, 2013 WL 5643334, at
*2 (N.D. Cal. Oct. 15, 2013) (rejecting a proposed bar to prosecution of patents related to
confidential materials received and requiring a new version “that identifies with sufficient
specificity the information that would trigger it and that is tailored to apply only to information
that is relevant to the preparation or prosecution of patent applications.”). Because prosecution
bars are justified by the potential for inadvertent disclosure, they must be tailored to “reflect the
risk presented by the disclosure of proprietary competitive information.” Deutsche Bank, 605
F.3d at 1381; see also Eon Corp. IP Holdings, LLC v. AT & T Mobility LLC, 881 F. Supp. 2d
254, 258 (D.P.R. 2012) (finding a bar on prosecuting patents relating to the subject matter of the
confidential information to be “circular and vague”).
15
The subject matter of the prosecution bar should start with the patents-in-suit. Applied
Signal Tech, 2011 WL 197811, at *3 (“[T]he proper subject matter of the proposed prosecution
bar in this case should be coextensive with the subject matter of the patents-in-suit.”); Telebuyer,
2014 WL 5804334, at *4 (same); EPL Holdings, LLC v. Apple, Inc., No. 12cv4306, 2013 WL
2181584, at *5 (N.D. Cal. May 20, 2013) (same); Eon Corp., 881 F. Supp. 2d at 258 (same). In
cases where the dispute—and therefore the discovery—is narrowed to the technology described
in the patents-in-suit, that scope alone may be a sufficient definition for a prosecution bar. In this
case, however, UVAPF alleges that its patent has been violated by many complex GE products,
which contain more technologies than just those claimed in the patents-in-suit. UVAPF
requested discovery related to all of these products, including “at least six different pulse
sequences [and] 32 different MR scanners.” GE Reply Br. 13 n.10. GE has shown that their
responsive discovery for the sequences and scanners includes descriptions of other confidential
GE technologies outside the scope of the patents-in-suit. See Busse Decl. ¶ 8. Anyone who
reviews these materials becomes at risk of inadvertently disclosing confidential information
when they act in those respective technological areas.
In order to reflect the risk of inadvertent disclosure, the prosecution bar’s subject matter
must extend beyond that of the patents-in-suit in the same manner as the proprietary competitive
information at issue has been extended by the breadth of UVAPF’s allegations. See Deutsche
Bank, 605 F.3d at 1381. The bar should not, however, extend to material that is not relevant to
“the preparation and prosecution of patent applications.” Id. The prosecution bar should thus
encompass the subject matter of the patents-in-suit and the proprietary7 technical aspects of GE’s
7
The Court includes “proprietary” in recognition of the reality that litigants can be overinclusive in their designation of confidential information. See James Juo & David J. Pitman, A
Prosecution Bar in Patent Litigation Should Be the Exception Rather Than the Rule, 15 Va. J.L.
16
products that allegedly infringe these patents. See, e.g., PPC Broadband, Inc. v. Times Fiber
Commc'ns, Inc., No. 5:13cv460, 2014 WL 859111, at *2 (N.D.N.Y. Mar. 5, 2014) (analyzing a
prosecution bar that covered materials “concerning the non-public, technical product features
disclosed” in discovery identified as highly confidential).
“Courts have the inherent power to modify protective orders, including protective orders
arising from a stipulation by the parties.” SmithKline Beecham Corp. v. Synthon Pharm., Ltd.,
210 F.R.D. 163, 166 (M.D.N.C. 2002); see also In re Kolon Indus. Inc., 479 F. App'x 483, 486
(4th Cir. 2012). In light of issues related above, and the parties’ disagreement about the scope of
the prosecution bar, the Court finds good cause to modify the prosecution bar as follows:
Persons entitled to access “CONFIDENTIAL OUTSIDE COUNSEL EYES
ONLY” materials shall not provide input to, or participate in the drafting,
amending, or prosecution of patent applications, including reissue patent
applications, related to “CONFIDENTIAL OUTSIDE COUNSEL EYES ONLY”
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 and is the
“CONFIDENTIAL OUTSIDE COUNSEL EYES ONLY” material actually
received or reviewed by the person for the duration of one year following
completion of this case.
Through Dr. Busse, GE has offered evidence that two of Dr. Hennig’s current patent
applications concern technology in GE’s accused products. 8 Prosecution of these patents could
violate the prosecution bar as defined above. Whether the prosecution bar attaches to these
technologies for Dr. Hennig, however, depends on whether he actually receives or reviews
& Tech. 43, 68 & n.171 (2010) (“Unfortunately, the highest level of confidentiality provided for
in a protective order often becomes the default designation in practice.”). The patent bar only
applies to materials that meet the protective order’s definition of “CONFIDENTIAL OUTSIDE
COUNSEL EYES ONLY” as “commercially sensitive information . . . likely to cause significant
competitive harm” by its disclosure. Protective Order ¶ 1.b. If alongside GE’s confidential
technologies a document describes a commonplace and widely-known aspect of MRI
technology, the bar would only attach to the confidential material.
8
Although Dr. Hennig has agreed to be bound by the patent prosecution bar, he has not sworn
off further prosecution activities. Such a concession would obviate GE’s cause for concern. See
GPNE, 2014 WL 1027948, at *2.
17
Confidential Materials describing them. The Court declines to deny Dr. Hennig access to GE’s
Confidential Materials based upon a speculative and avoidable violation of the prosecution bar.
Dr. Hennig’s uniqueness as an expert is tied to his self-described specialized knowledge
in using “variable-flip-angle refocusing pulses to extend the spin echo train for [a pulse]
sequence.” Hennig Decl. ¶ 2; see generally id. ¶¶ 2–4. Dr. Hennig is confident that none of his
current patent applications relate to that technology. Id. ¶ 9. The Court sees no imminent
violation of the prosecution bar from Dr. Hennig reviewing the Confidential Materials directly
related to flip-angle refocusing pulse sequence formulas. Beyond that, the Court lacks the
information necessary to adjudicate Dr. Hennig’s potential violation of the prosecution bar. This
analysis is best performed through communication between UVAPF, who possess GE’s
Confidential Materials, and Dr. Hennig, who knows the contents of his patent applications. With
careful disclosure, UVAPF should be able to have its preferred expert review the Confidential
Materials related to his expertise, while avoiding any conflicts presented by the prosecution bar.
Dr. Hennig, like any other expert in this case, must agree to be bound by the protective order,
which subjects violators to contempt proceedings and is “generally accepted as an effective way
of protecting sensitive information while granting trial counsel limited access to it for purposes
of the litigation.” Deutsche Bank, 605 F.3d at 1378. If UVAPF requires analysis of Confidential
Materials that relate to one of Dr. Hennig’s applications, UVAPF may employ another expert
who does not have active patent applications in that technology.
The Court recognizes that Dr. Hennig possesses unique expertise in the particular
technology raised by the patents-in-suit. The Court also recognizes that Dr. Hennig presents a
heightened risk of inadvertent misuse as an active inventor and the breadth of accused
instrumentalities in this case has led GE to disclose confidential technologies beyond those
18
directly claimed by the patents-in-suit. In this situation, the Court finds that a clear record of
what Confidential Materials Dr. Hennig reviews will benefit GE, UVAPF, and Dr. Hennig.
Therefore, UVAPF will maintain a record of which Confidential Materials Dr. Hennig receives
or reviews and provide a copy of this record to Dr. Hennig and GE as it is updated. This record
should be created and disclosed in the same manner as the Pulse Sequence Print Log in the
protective order. See Protective Order ¶ 8(v).
III. Conclusion
For the reasons stated above, the Court grants GE’s motion as to non-technical materials
such as sales, marketing, and strategic planning materials, and denies it as to technical materials.
UVAPF must keep a record of the Confidential Materials Dr. Hennig receives or reviews and
provide a copy of it to Dr. Hennig and GE as it is updated.
Furthermore, the prosecution bar in paragraph seven of the Stipulated Protective Order
will be amended to state the following:
Persons entitled to access “CONFIDENTIAL OUTSIDE COUNSEL EYES
ONLY” materials shall not provide input to, or participate in the drafting,
amending, or prosecution of patent applications, including reissue patent
applications, related to “CONFIDENTIAL OUTSIDE COUNSEL EYES ONLY”
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 and is
actually received or reviewed by the person for the duration of one year following
completion of this case.
A separate order will enter.
ENTER: November 20, 2015
Joel C. Hoppe
United States Magistrate Judge
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