The PTAB in Fujifilm Corp. v. Sony Corp. (IPR 2017-01267 & 2017-01268) granted permission to the patentee to file a motion to disqualify an expert for the petitioner. APJ Kokoski, after a teleconference, granted permission to file the motion.
Expert witnesses are not subject to the more familiar rules that govern loyalty and attorneys. To disqualify an expert, the decision explained:
Disqualification of an expert is a drastic measure we hesitate to impose except when absolutely necessary. See LaCroix v. BIC Corp., 339 F. Supp. 2d 196, 199 (D. Mass 2004) (noting that “courts are generally reluctant to disqualify expert witnesses”). To resolve a motion to disqualify an expert, district courts generally apply a two-prong test to determine (1) whether it is objectively reasonable for the moving party to believe that it had a confidential relationship with the expert; and (2) whether the moving party disclosed confidential information to the expert that is relevant to the current proceeding. Id. at 199–200. A court is compelled to disqualify an expert only when the answers to both inquiries is affirmative. Wang Labs., Inc. v. Toshiba Corp., 762 F. Supp. 1246, 1248 (E.D. Va. 1991); see Agila Specialties Inc. v. Cephalon, Inc., Case IPR2015-00503, slip. op. at 4 (PTAB Aug. 19, 2015) (Paper 13).
It will be interesting to see if the patentee can meet this standard, but a takeaway is to monitor for conflicts (and to check to see, for example, if a prosecution bar in a prior case might prohibit conduct that the ‘common law’ of expert disqualification might not reach.