Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Trading Techs. Int'l, Inc. v. BCG Partners, Inc., No. 10 C 715 (N.D. Ill. May 5, 2011) (Kendall, J.).

Judge Kendall denied defendant GL Trade Americas' ("GL") motion to disqualify plaintiff Trading Technologies' ("TT") lead litigation counsel and in-house counsel Borsand, without prejudice to reconsider whether Borsand should be excluded from testifying should he seek to testify. GL alleged that Borsand received confidential information when TT briefly retained a European law firm to represent it in patent prosecution matters without realizing that the firm represented an entity working on behalf of GL. Borsand only had two contacts with the firm, and it was reasonable that during those two contacts no confidential information was transferred to Borsand. As such, the drastic measure of disqualification was not warranted.

GL's request that Borsand be excluded as a trial witness because of his role as lead trial counsel was denied as premature with leave to refile at a later date. The Court could not determine what discovery would show, what facts would be disputed at trial or whether Borsand would even testify at trial.
 

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Scala's Original Beef & Sausage Co., LLC v. Alvarez d/b/a Michaelangelo Foods, No. 09 C 7353, Slip. Op. (N.D. Ill. Dec. 10, 2009) (Dow, J.).

Judge Dow denied defendants' motion to dismiss plaintiff's counsel. Plaintiff's counsel's firm represented the individual defendant and a prior company in a 2006 matter. But that case, a $15,000 contract dispute, ended after counsel spent less than 25 hours on the case. It was irrelevant that while counsel's firm previously represented the individual defendant, counsel never personally represented the individual defendant. The Court, however, was unable to infer that counsel's firm had received confidential information about the individual defendant's finances. Further, the individual defendant's businesses in the two cases were different. And the cases were remote in time and focused on different subject matter – a contract dispute in the earlier case, and contract and trademark issues regarding a new entity in the second. 

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Bone Care Int'l., LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Feb. 2, 2009) (Dow, J.).

Judge Dow denied defendants' motion to prevent plaintiffs from using their preferred technical experts in this patent case.  Pursuant to a Protective Order, plaintiffs notified defendants of their intent to provide three experts with confidential materials.  Defendants objected because defendants had previously retained the same experts in a different patent case in the Northern District.  The Court noted that disqualifying experts was a "drastic measure" taken only when the party seeking disqualification proves a substantial relationship between any acquired confidential information and the expert's testimony.  The two cases these experts were hired for involve different pharmaceutical formulations for treatment of different conditions.  And the experts testified that because of the different technologies, no information gained in defendants' earlier case could impact the present case or benefit defendants in this case.  Additionally, the Court noted that defendants did not have a confidential or privileged relationship with the experts.

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Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc, No. 05 C 4088, Slip Op. (N.D. Ill. Aug. 15, 2008) (Moran, Sen. J.).*

Judge Moran granted declaratory judgment plaintiff Rosenthal Collins Group’s (“RCG”) motion for leave to use an expert witness that declaratory judgment defendant Trading Technologies (“TT”) previously met with. TT met the first prong of the test for expert disqualification. TT had established a confidential relationship with the expert, as proven by the non-disclosure (“NDA”) agreement entered into by TT and the expert. 
 

But the NDA was not enough to meet the second prong of the test, that confidential information requiring disqualification was exchanged. The expert stated that he had two meetings with TT approximately four years before the issuance of this opinion. One meeting was held before the NDA was executed and one after. TT alleged that there were additional meetings, but only had supporting evidence of two meetings. TT also alleged that it discussed litigation strategy, prior art and a relevant court decision with the expert. But based upon an in camera review of TT’s evidence, the Court held that there was not sufficient evidence of an exchange of confidential information. The emails TT provided were one or two lines each and contained no confidential or work product information. And TT did not provide attorney notes or other evidence of confidential or work product information. The Court did acknowledge that one email discussion of a court opinion could have been work product, but the expert’s response was so brief and vague that the Court did not consider it advice. 
 

Finally, TT did not offer evidence that it retained the expert or paid him any fees. TT did argue that it compensated the expert by having TT’s president speak to a trading group the expert owned. But there was no evidence that the speaking engagement was intended to be or was accepted as payment for the expert’s work.

* Click here to read much more about this case in the Blog’s archives and click here for a copy of this opinion.

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