Nellson Northern Operating, Inc. v. Elan Nutrition, LLC
Docket: No. 2:02-CV-0304
Court: District Court, D. Vermont; December 3, 2006; Federal District Court
A Motion by Defendants Elan Nutrition, LLC and Elan Nutrition, Inc. seeking permission to disclose Plaintiff Nellson Northern Operating, Inc.'s confidential information to expert Ann Grev has been granted by the Court. Nellson opposes the motion due to concerns that Grev's prior work with competitors could lead to disclosure of proprietary information. Nellson holds U.S. Patents 6,299,929 and 6,749,886, alleging Elan infringed these patents, which Elan disputes, claiming the patents are invalid based on prior art and procedural deficiencies.
The Court previously established a Protective Order outlining restrictions on disclosing confidential information, which includes requiring experts to agree to the order's terms and notifying the producing party before any disclosure. Elan had previously shared confidential information with Dr. Wayne Moore, Nellson's consent. When Elan sought to share information with Grev, Nellson objected due to her affiliations with competitors. Grev had completed an expert report without using confidential information.
During a hearing on October 18, 2006, Elan's counsel limited the requested disclosures to Dr. Ziegler's expert report and related exhibits. The Court permitted Nellson to depose Grev about her professional activities to assess potential risks of disclosing confidential information. A deposition took place on November 2, 2006, followed by supplemental memoranda from both parties.
Grev worked at Solae and its predecessor companies from 1974 to 2005, primarily focusing on the Ralston Purina protein PP-860, which is described in the patents in dispute as a suitable filler and binder protein for food bars. Her responsibilities included soy protein testing, establishing manufacturing standards, and product development for dry blended beverages. After leaving Solae, Grev became a stay-at-home parent but has engaged in consulting work for Cargill, specifically on soy protein isolates known as 'Prolisse,' which are utilized in protein bars. Her consulting involved advising on the production process and product consistency, as well as evaluating lecithination for beverage mixes. Grev has not worked on any other consulting topics for Cargill and was not aware of their involvement with food bars during her consulting period. She possesses proprietary knowledge of Solae’s processes but did not sign a non-disclosure agreement and claims not to use Solae’s trade secrets in her work for Cargill. Grev distinguishes between proprietary and non-proprietary information based on industry knowledge and concepts developed within Solae. She has signed an Acknowledgment form to comply with a Protective Order.
In the context of a legal dispute, courts weigh the need for a party to access proprietary information against the potential harm to the disclosing party. In this case, Elan has a significant interest in allowing Grev access to specific reports from Dr. Ziegler, which is central to the case.
The evaluation of the patents in question hinges on the properties of proteins, such as water absorption and emulsification, along with the testing techniques for these properties. Grev, an expert in protein work, particularly with soy protein, has relevant experience from her time at Solae, where she focused on a protein mentioned in the patents as suitable for food bars. Although Elan has already engaged Dr. Moore as an expert, it is not restricted to a single expert and may choose others with the requisite expertise. Expert testimony is crucial for understanding the case, and Elan must be allowed to select experts without undue limitations.
Grev requires access to information classified as 'confidential' to adequately respond to Nellson’s expert reports. While Nellson has valid concerns about protecting its confidential information, the risk of disclosure is deemed low, especially since Grev has signed a Protective Order acknowledging her responsibilities. Nellson's argument regarding Grev’s potential inadvertent use of confidential information carries some weight; however, the Court finds that Grev's current professional status and her history of safeguarding proprietary information mitigate this risk. Elan has limited its request to access only Dr. Ziegler’s reports and attachments, minimizing Grev’s exposure to sensitive information.
In conclusion, after weighing Elan's need to engage its chosen expert against Nellson's confidentiality concerns, the Court rules in favor of Elan, allowing Grev access to Dr. Ziegler’s materials to fulfill her role as an expert witness. The Court also addresses concerns about Grev’s credibility based on her earlier declaration regarding Cargill’s involvement with food bars, ultimately finding no bad faith in her previous statements and crediting her current testimony regarding her understanding at the time of the declaration. Thus, the Motion for Leave to Disclose Confidential Information is granted.
