Judge Robinson recently granted a motion by a third party to intervene and disqualify an expert. The expert in question had previously served as a testifying expert for Apotex, Inc. in prior litigation relating to Nasonex®. The later-filed litigation in Delaware does not involve Apotex but is related to Nasonex® and involves the same patent. Both the plaintiff Merck and the expert knew that the expert had previously served as an expert for Apotex, but neither gave notice of the new engagemet to Apotex because the expert believed that his engagement by Apotex “ended when that case ended.” Finding that the risk of disclosure of Apotex’s confidential information constituted a sufficient interest that may be affected by the litigation, Judge Robinson allowed Apotex to intervene. Merck Sharp & Dohme Corp. v. Teva Pharmaceuticals USA, Inc., et al., C.A. No. 14-874-SLR-SRF, Memo. Or. at 1-4 (D. Del. Sept. 3, 2015).
Having allowed the intervention, Judge Robinson next considered whether to grant Apotex’s motion to disqualify the expert. Judge Robinson found that the first two requirements for disqualification were indisputably met, i.e., “a confidential relationship existed between Apotex and [the expert], and confidential information was actually disclosed to [the expert].” Id. at 5. Judge Robinson further found that “Apotex’s confidential information is at a substantial risk of disclosures and/or adverse use, by virtue of the fact that Merck has chosen to pursue simultaneous cases against all three generic manufacturers – Teva, Amneal, and Apotex – regarding the [same] patent. In this regard, common sense dictates that generic products (even pharmaceutical generic products) cannot be so dissimilar as to completely alleviate the natural instinct to draw upon past knowledge to solve even new problems, leading to inadvertent use if not disclosure.” This was particularly true because the expert would presumably change positions from the prior litigation, in which he found no infringement, to the Delaware litigation, in which he presumably would find infringement – a “change in position [that] is relevant fodder for discovery, and puts Apotex’s confidential information at risk.” Id. at 5-7. Accordingly, Judge Robinson found that disqualification of the expert was appropriate.