Expert Who Files Patent Applications Not Barred From Receiving Confidential Information

Endo Pharmaceuticals Inc. et al v. Par Pharmaceutical Companies Inc. et al

Case Number: 1:12-cv-09261-TPG (Dkt. 76)

The court denied plaintiffs’ motion to bar Par’s expert Professor Midian from receiving any of their confidential information unless he agreed to a patent prosecution bar.  The court said that simply because Omidian was a researcher in the field-at-issue did not render him unsuitable: 

It is normal, however, for experts to conduct research in the fields for which their expertise is sought, and it is not surprising that breakthrough research might result in a patent application based on their work.  Where an expert is barred by a court, the expert is typically either consults with or is employed by a business that is in competition with the party providing the information.  Plaintiffs have provided no evidence that Professor Omidian is in the business of manufacturing or selling pharmaceuticals or that he has some consultancy or employment relationship with such a business.

With respect to the fact that Omidian had applied for patents previously, the court said that this activity did not matter:

Plaintiffs assert that it is Professor Omidian’s pursuit of patent applications that distinguishes him from other experts in this case who also conduct research.  But it is not clear why this fact is of great significance. Professor Omidian is a researcher at a university and plaintiffs are equally harmed under their theory if he or any other expert were to publish research that made use of their information.  Such published research could be used by anyone to obtain an advantage over plaintiffs in the marketplace.

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