GPNE v. Apple: Court Precludes Retention of Experts Where Expert Had Consulted for Apple's Competitors

by Jeffer Mangels Butler & Mitchell LLP

Plaintiff GPNE Corporation ("GPNE") filed a patent infringement action against Apple. As part of its case, GPNE wanted to retain two experts, Ghobad Heidari and Kamran Etemad, and Apple objected for two reasons. First, as explained by the court, Apple argued that if Heidari and Etemad are given access to Apple's confidential information (as would be required for them to act as experts), Apple would suffer extreme prejudice in the marketplace as both Heidari and Etemad are active in patenting mobile technology. Second, Apple argued that the patent prosecution bar within the protective order prohibited Heidari and Etemad from being granted access to its proprietary information, as both men have patent applications now pending before the Patent and Trademark Office.

After citing some recent decisions from the Northern District of California on experts, the court considered the risk to Apple if Heidari were granted access to its confidential information. "Heidari presents precisely the same risks as the expert in Symantec. He is an active consultant in the field at issue. In the very recent past, he has worked for several of Apple's competitors, and there has been no representation or agreement that he will not do so again in the very near future. Apple points out several ways in which the information to which he would be exposed as an expert in this case could influence his work as a consultant on patent licensing, reverse engineering, and portfolio management, even if he were to make his best efforts to cabin the information off in his mind, and the court finds these concerns persuasive. Furthermore, despite the concerns raised by Apple, GPNE has not identified any unique qualifications or knowledge that make Heidari better suited than any other expert to serve."

Accordingly, the court decided to grant Apple's motion. "Weighing GPNE's lack of specific need against the discrete concerns raised by Apple, the court reaches concludes that the risk outweighs the benefit and GRANTS Apple's motion for a protective order as to Heidari."

With respect to the other expert, Mr. Etemad, the court found Apple's arguments less persuasive. "Apple's arguments are less discrete and therefore less persuasive as to the danger posed by Etemad's "day job" at the FCC. The concerns raised by Apple stem from the fact that the FCC has the power to request information from Apple and decide whether its products are in compliance with existing legal standards. It is unclear to the court- and Apple has not clearly identified- any way in which the information to which Etemad would be privy as an expert in this matter would be harmful to Apple if disclosed to a regulatory agency. Apple's concerns are therefore not sufficiently particularized to outweigh GPNE's interest in selecting its own expert."

The court also was not persuaded that the patent prosecution bar in the protective order barred the retention of Mr. Etemad. "The patent prosecution bar in the protective order in this case provides Apple with similarly little relief. The language of the order requires that the individual not participate in the drafting, amending, advising, or maintenance of a patent application before the PTO after they are granted access to "attorney's eyes only" information under the protective order. Etemad has indicated that he is willing to forego any such involvement with the applications that he has pending, and particularly because many of the patents involved appear to be assigned to other entities, the court has no reason to discredit that representation."

Accordingly, the court barred the retention of the expert with ongoing work for Apple's competitors, but permitted the retention of the other expert as his work in regulating the mobile industry was not sufficient to preclude his retention.

GPNE Corp. v. Apple Inc., Case No. 5:12-cv-2885-LHK (PSG) (N.D. Cal. March 13, 2014)

Written by:

Jeffer Mangels Butler & Mitchell LLP

Jeffer Mangels Butler & Mitchell LLP on:

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