United States District Court, N.D. California
ORDER REGARDING 5/21/14 JOINT DISCOVERY LETTER Dkt. No. 39
KANDIS A. WESTMORE, Magistrate Judge.
On May 21, 2014, the parties filed a joint discovery letter regarding Plaintiff TVIIM, LLC's intention to designate Eric Knight as an expert under the Patent Local Rule 2-2 Interim Model Protective Order. (Joint Letter, Dkt. No. 39 at 4.) Defendant McAfee, Inc. objects to this expert designation on the separate grounds that Mr. Knight is an employee of a McAfee competitor and is a named inventor on the sole asserted patent. (Joint Letter at 6-7.)
On May 30, 2014, the joint letter was referred to the undersigned for resolution. Upon review of the joint letter, the Court finds that this matter is suitable for resolution without further briefing or oral argument pursuant to Civil Local Rule 7-1(b), and finds that Mr. Knight is not an expert pursuant to the Patent Local Rule 2-2 Interim Model Protective Order.
On October 2, 2013, Plaintiff TVIIM, LLC filed a case against Defendant McAfee, Inc. alleging infringement of U.S. Patent No. 6, 889, 168 ("168 Patent"). (Compl., Dkt. No. 1.) Eric Knight is a named inventor of the 168 Patent. (168 Patent, Compl., Ex. A.)
On March 25, 2014, Plaintiff disclosed its intent to designate Eric Knight as an "expert" under the Patent Local Rule 2-2 Interim Model Protective Order ("Protective Order"). (Joint Letter at 4.) Two weeks later, McAfee objected to Mr. Knight's expert designation on the grounds that he "(1) was currently an employee of a Party competitor and (2) was a former employee of TVIMM." (Joint Letter at 4.) During the parties' meet and confer, Plaintiff allegedly explained that Mr. Knight was never its employee and described that Mr. Knight's current employer (Northrup Grumman Aerospace Systems) is also not a competitor of McAfee's. Id.
McAfee contends that Mr. Knight has been involved with ImmuneSoft, Mr. Knight's "new" company, for more than ten years. (Joint Letter at 6.) ImmuneSoft is purportedly a "consumer security software company." Id. McAfee, therefore, contends that ImmuneSoft is a competitor which would preclude Mr. Knight's designation as an "expert" under the Protective Order. Id. at 6-7. McAfee further contends that Mr. Knight's status as a named inventor on the sole asserted patent makes him a percipient witness to material facts in this litigation. (Joint Letter at 7.)
II. LEGAL STANDARD
In October 2013, the United States District Court for the Northern District of California issued the Patent Local Rule 2-2 Interim Model Protective Order (hereafter "Protective Order"), which defines an "expert" as
a person with specialized knowledge or experience in a matter pertinent to the litigation who (1) has been retained by a Party or its counsel to serve as an expert witness or as a consultant in this action, (2) is not a past or current employee of a Party or of a Party's competitor, and (3) at the time of retention, is not anticipated to become an employee of a Party or of a Party's competitor.
(Protective Order ¶ 2.7.)
McAfee objects to Mr. Knight's expert designation on the grounds that he is currently employed by a McAfee competitor and that he is a named inventor on ...