Mylan Technologies, Inc. v. Zydus Noveltech, Inc., No. S0041-09 CnC (Crawford, J., Dec. 21, 2012)

[The text of this Vermont trial court opinion is unofficial. It has been reformatted from the original. The accuracy of the text and the
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                                                       STATE OF VERMONT

SUPERIOR COURT                                                                                         CIVIL DIVISION
Chittenden Unit                                                                                        Docket No.: S0041-09 CnC

MYLAN TECHNOLOGIES, INC.
and MYLAN INC.

           v.

ZYDUS NOVELTECH, INC., SHARAD K. GOVIL,
CADILA HEALTHCARE, LTD., PANKAJ PATEL and
SUNIL ROY

        DECISION ON MYLAN’S MOTION TO PRECLUDE DAVID J. ENSCORE FROM
                    SERVING AS AN ADVERSE EXPERT WITNESS

        This case involves a trade secrets claim between competitors in the generic
pharmaceutical industry, and specifically the sub-part of that industry dealing with transdermal
drug delivery systems. Plaintiffs Mylan Technologies, Inc. and Mylan, Inc. (collectively,
“Mylan”) allege that defendant Dr. Sharad Govil took important trade secrets when he left his
position as a senior Mylan executive and scientist and joined defendant Zydus Noveltech, Inc.
Mylan also alleges that Zydus Noveltech, its parent company Cadila Healthcare, Ltd. (Cadila),
and two of Cadila’s executives are liable under various theories for their alleged role in Dr.
Govil’s departure.

         Mylan has filed a Rule 26 motion seeking an order precluding Dr. David J. Enscore from
serving as an adverse witness against Mylan. Mylan hired Dr. Enscore as a non-testifying expert
in early 2010 to assist with Mylan’s defense of Grange v. Mylan Laboratories, Inc., a products
liability suit that has since settled. Mylan maintains that in the course of his work on the Grange
case, Dr. Enscore obtained in-depth, privileged information on a question that overlaps one of
the issues in this trade secrets case: whether Mylan’s design choices for Fentanyl resulted in a
valuable, superior product. Defendants Zydus Noveltech, Inc. and Dr. Govil (collectively,
“Zydus”) oppose Mylan’s motion, arguing that Dr. Enscore’s service as a non-testifying expert
in a now-settled products liability case is not connected to the prosecution of this case in a way
that would support his disqualification.

                                                             BACKGROUND

       In or around early 2010, Mylan contacted Dr. Enscore as a potential expert for Mylan in
the Grange litigation. The plaintiffs in that case had sued Mylan, alleging that due to a design
and manufacturing defect, some of Mylan’s transdermal patches contain and deliver fentanyl—a
powerful pain medicine—in excessive amounts, and that such a defective fentanyl patch caused
Ronald Grange, Sr. to die of a fentanyl overdose. Grange v. Mylan Labs., Inc., No. 1:07-CV-
107, 2008 WL 4813311, at *1 (D. Utah Oct. 31, 2008) (reciting allegations of complaint); see
also Hoar Aff., Ex. D at ¶ 11 (Grange first amended complaint, filed June 24, 2009). In or
around early February 2010, Mylan formally retained Dr. Enscore, and he and Mylan entered
into a confidentiality agreement on February 5, 2010. Under the agreement, Mylan agreed to
provide Dr. Enscore with certain confidential information necessary to permit him to evaluate the
issues, and Dr. Enscore agreed not to disclose that information, with certain sensible exceptions
(e.g., sharing the information with Dr. Enscore’s consultants or employees, or disclosing the
information under legal compulsion or with Mylan’s prior written consent). See Cuthbertson
Decl. Ex. B (Confidentiality Agreement). The confidentiality agreement defined “confidential
information” as including “all notes, books, papers, diagrams, documents, reports, e-mail,
memoranda, visual observations, oral communications and all other data or information in
whatever form, disclosed by one Party and/or its affiliates to the other Party and/or its affiliates,
including those made prior to the execution of this Agreement.” Id. The confidentiality
agreement did not include any non-compete language.

       After Dr. Enscore entered into the confidentiality agreement, he had telephonic and in-
person contact with Mylan scientists and attorneys. Cuthbertson Decl. ¶ 5. He attended an all-
day meeting at Mylan’s Pennsylvania headquarters with Mylan in-house counsel, outside
counsel, scientists, and others. In the words of Clem Trischler—who assisted Mylan in
defending the Grange case as outside counsel—Dr. Enscore received

       a host of detailed, non-public information about Mylan’s development process for
       its Fentanyl transdermal drug product. He received internal, non-public Mylan
       documents, and he was present when Mylan scientists described non-public
       information about how and why they made design choices for the Fentanyl
       product. The discussion was very detailed and in-depth.

Trischler Decl. ¶ 8. Mylan says that Dr. Enscore was also made privy to attorney work product
and attorney-client privileged communications, whose subject matter included “Mylan’s legal
strategy for highlighting certain of the design choices Mylan scientists made when developing
Fentanyl and Mylan’s legal strategy for explaining why the product reflects superior design
choices and thus is a valuable, well-developed product.” Id. ¶ 9; see also Cuthbertson Decl. ¶ 10.

       Dr. Enscore has supplied an affidavit describing his role in the Grange litigation as
follows:

               The focus of my work was to review and comment on a report that had
       been prepared by an expert for the plaintiff, which stated in part that the Mylan
       patch was defective and caused an overdose of fentanyl that resulted in the death
       of the plaintiff’s relative.

               As part of my work to respond to the plaintiff’s expert report, I reviewed
       certain Mylan documents that described the composition and manufacture of its
       fentanyl patch. The main documents I reviewed were “development reports,”
       which describe a manufacturer’s design choices for its product and provide the
       rationale for the final design. Additional materials included product development
       and bioequivalence testing sections of the Abbreviated New Drug Application
       (ANDA) that a generic manufacturer like Mylan submits to the FDA to obtain

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       approval of its generic product. I also reviewed at least some parts of the
       “Chemistry, Manufacturing, and Controls” (CMC) section of the ANDA, which is
       the part of the ANDA that describes the product formulation, its stability and how
       it will be manufactured. Additionally, I reviewed some exemplar batch records
       for manufacture of the product.

               My discussions with the attorneys for Mylan centered on my explanation
       of what I thought was inaccurate in the report from the plaintiffs’ expert as to
       technical and pharmaceutical issues, specifically, if the Mylan fentanyl patch was
       defective and if the patch delivered an overdose of fentanyl. There were a
       number of points in the report of the plaintiff’s expert that I thought were
       incorrect, and I explained my opinion to the attorneys for Mylan.

                I did not recognize any of these discussions as the attorneys telling me
       their litigation strategy, except I knew of course that Mylan, as the manufacturer
       of a generic pharmaceutical in a product liability case, would take the position
       that its product was not defective, did not cause the patient’s death, and had been
       approved by the FDA as bioequivalent to the already-approved innovator product.

Enscore Aff. ¶¶ 2–5 (filed Oct. 30, 2012).

       Dr. Enscore was not a testifying expert in the Grange case—he did not file any affidavit,
and he did not testify in any deposition or court hearing. He did prepare work that he submitted
to Mylan’s attorneys, but Mylan did not release a report from Dr. Enscore to any opposing party.
The Grange case settled before trial, and Dr. Enscore’s work on behalf of Mylan in that case
concluded in 2010.

        As part of Mylan’s trade-secrets claim in this case, Mylan will have to show that Zydus
took a trade secret—i.e., information that “derives independent economic value, actual or
potential, from not being generally known to, and not being readily ascertainable by proper
means by, other persons who can obtain economic value from its disclosure or use.” 9 V.S.A.
§ 4601(3). On September 7, 2012, Zydus disclosed Dr. Enscore as a proposed expert witness
adverse to Mylan. Zydus says that it is asking Dr. Enscore to evaluate questions like: “(i) if
Mylan’s claimed trade secrets really are such, or to the contrary if they are reasonably available
in the public domain, and (ii) the extent (if any) to which Zydus Noveltech’s proposed products
are based on anything confidential to Mylan.” Zydus’s Mem. in Opp’n at 2 (filed Oct. 26, 2012);
see also id. at 16 (asserting that Dr. Enscore’s work for Zydus would “focus on whether
manufacturing processes for transdermal products contain trade secrets and whether those trade
secrets were misappropriated by Zydus Noveltech.”). In his affidavit, Dr. Enscore states that he
understands that he should not discuss with Zydus’s lawyers in this case the discussions he had
with the Mylan attorneys in the Grange case. Enscore Aff. ¶ 6. He says that:

       It will be easy for me to refrain from doing that because I do not remember details
       of those discussions, except for certain things I remember telling them about the
       report of the plaintiff’s expert in the product liability case. I also promise that I



                                                3
         will not in the future disclose to the defendants’ lawyers here anything about
         those discussions if I remember more about them in the future.

Id.

                                                    ANALYSIS

        There is no question that the court has the power to disqualify an expert. See Lyman v.
Pfizer, Inc., No. 2:09-cv-262, 2011 WL 3843956, at *2 (D. Vt. Aug. 30, 2011); In re
Ambassador Grp., Inc., Litig., 879 F. Supp. 237, 241 (E.D.N.Y. 1994) (“It is inherently within a
court’s power to disqualify an expert.”). Compared to cases raising questions about attorney
disqualification, cases involving expert disqualification are relatively rare. See Ambassador, 879
F. Supp. at 241–42. Of that already rare category of cases, the subset in which courts grant the
disqualification of experts is even smaller. See Lyman at *2 (“[C]ases that grant disqualification
[of experts] are rare.” (quoting Koch Ref. Co. v. Jennifer L. Boudreaux M/V, 85 F.3d 1178, 1181
(5th Cir. 1996))); see also Hewlett-Packard Co. v. EMC Corp., 330 F. Supp. 2d 1087, 1092
(N.D. Cal. 2004) (“[D]isqualification [of experts] is a drastic measure that courts should impose
only hesitantly, reluctantly, and rarely.”).

        In the absence of a Vermont Supreme Court case setting forth a standard for expert
disqualification based on a conflict of interest, the court looks to the analytical framework
employed in other jurisdictions. See Haner v. State, No. 290-7-07 Bncv (Vt. Super. Ct. May 12,
2010) (Wesley, J.), available at http://www.vermontjudiciary.org/20062010%20TCdecisioncvl/
2010-5-19-2.pdf (looking to Colorado and Texas cases for a standard for evaluating a claim of
expert disqualification on the basis of a conflict of interest). The federal courts have generally
coalesced around a two-part inquiry, asking: “1) was it objectively reasonable for the moving
party to conclude that a confidential relationship existed; and 2) did the moving party disclose
confidential information to the expert?” Lyman at *2; see also Ambassador, 879 F. Supp. at 242;
accord Haner (citing state court cases). “Some courts have considered a third factor: whether the
public interest would be served by allowing or not allowing the expert to testify.” Lyman at *2.1

        Mylan argues that there is a fourth factor in the analysis: the confidential information it
shared with Dr. Enscore in Grange must be relevant to the present case. See Mem. of Law in
Supp. of Pls.’ Mot at 6 (filed Oct. 11, 2012). The court concludes that this is not a separate
factor in the test, but that it is part of the analysis of the second prong. See Return Mail, Inc. v.

1
  Some cases also suggest that, in addition to the multi-factor inquiry—or perhaps as an extreme instance of that
inquiry—there might also be a bright-line test under which disqualification results every time an expert switches
sides in the same case. See Rhodes v. E.I. Du Pont de Nemours & Co., 558 F. Supp. 2d 660, 664 (S.D.W.Va. 2008)
(noting lack of clarity as to whether there is a bright-line rule); compare Return Mail, Inc. v. United States, No. 11-
130 C, 2012 WL 5866140, at *2 (Fed. Cl. Nov. 16, 2012) (stating that expert side-switching is a “clear-cut case for
disqualification”); with Life Technologies Corp. v. Biosearch Technologies, Inc., No. C-12-00852 WHA, 2012 WL
1604710, at * (N.D. Cal. May 7, 2012) (“There is no bright-line rule for expert disqualification.”). Here, as in
Lyman, this case does not involve side-switching within the same litigation. Lyman at *4 (“This is not a case of an
expert who has ‘switched sides’ in the same litigation after having received confidential information.”). In any case
Mylan does not argue for the application of a bright-line test, so the court does not comment on or apply any such
test.


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United States, No. 11-130 C, 2012 WL 5866140, at *4 (Fed. Cl. Nov. 16, 2012) (describing
second inquiry as whether the moving party disclosed any confidential information relevant to
the issues in the present case);2 Ascom Hasler Mailing Sys., Inc. v. U.S. Postal Serv., 267 F.R.D.
9, 12 (D.D.C. 2010) (concluding that the first prong was met, but not the second prong because it
was “inconceivable that any thing [the consultant] did in the Pitney Bowes case could have
influenced his work in this case”); Lacroix v. BIC Corp., 339 F. Supp. 2d 196, 199–200 (D. Mass
2004) (articulating second prong as “whether the moving party disclosed confidential
information to the expert that is relevant to the current litigation” (emphasis added));
Ambassador, 879 F. Supp. at 243 (noting that, in order to warrant disqualification, the
confidential information transmitted by the moving party must have been “disqualifying
information”).

        “Although most expert disqualification cases involve a testifying expert, courts employ
the same test in determining whether to disqualify a consulting expert.” Lacroix, 339
F. Supp. 2d at 199. The court will therefore apply the test described above to this case. As the
party seeking Dr. Enscore’s disqualification, Mylan has the burden of proof. Lyman at *3.

1. Was it objectively reasonable for Mylan to conclude that a confidential relationship
existed with Dr. Enscore?

         There are a variety of factors that courts consider when determining whether it was
reasonable for the moving party to believe that there was a confidential relationship. See
Hewlett-Packard Co. v. EMC Corp., 330 F. Supp. 2d 1087, 1093 (N.D. Cal. 2004) (listing
factors). Here, the most relevant factors are that Mylan and Dr. Enscore entered into a formal
confidentiality agreement that explicitly defined “confidential information” very broadly. After
Dr. Enscore executed the agreement, Mylan gave Dr. Enscore access to its scientists and
documents, including development reports and batch records. Cf. Lyman at *3 (brief
consultation with a neuropharmacologist on textbook questions, where the consultant was not
provided with any confidential documents and did not enter into a formal confidentiality
agreement, was insufficient to meet the first prong). The court concludes that Mylan has shown
that it was objectively reasonable for it to conclude that its communications with Dr. Enscore
would be maintained in confidence. This does not end the inquiry, however. Lyman at *2
(“Only if the answers to both questions are ‘yes,’ should the expert be disqualified.” (emphasis
added)).

2. Did Mylan disclose disqualifying confidential information to Dr. Enscore?

        Mylan argues that, in the course of his work on the Grange case, Dr. Enscore received
“privileged information from attorneys and insights from Mylan scientists on an issue directly
relevant to trade secret law—whether a product at issue has independent economic value . . . .”
Mem. of Law in Supp. of Pls.’ Mot at 5. Mylan maintains that:

2
 Zydus cites Return Mail in a letter to the court dated November 28, 2012. In a letter dated December 3, 2012,
Mylan asserts that Zydus’s November 28 letter is unauthorized, and contends that Return Mail does not add
anything to the parties’ existing briefs. The court appreciates that the Return Mail opinion was not public until after
briefing on the pending motion was complete, which explains why neither party cited it in their original briefs.
Since Mylan took the opportunity to provide its analysis of Return Mail, the court sees no harm in considering it.

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       It makes no difference that product liability law and trade secret law differ in
       some respects, because they share a common denominator: a party must show that
       the choices that went into its product design resulted in a valuable product—one
       that is “safe” in product liability parlance, and one that has “economic value” in
       trade secret parlance.

Id. at 7. Zydus argues that: (1) Dr. Enscore reviewed only purely “technical” documents, which
are not privileged and must be produced by Mylan in discovery in this case; (2) to the extent
Mylan shared its legal strategy for defending the Grange case with Dr. Enscore, that is not
grounds for disqualification; and (3) any exposure to confidential information in the Grange case
is irrelevant to this litigation. Zydus’s Mem. in Opp’n at 9–16. According to Zydus, the only
common thread between the Grange case and this case is that they both involve transdermal
products. Id. at 14. Mylan replies that Dr. Enscore gained knowledge about Mylan’s legal
strategy for how best to emphasize the value of its design choices for the fentanyl product, and
that the same legal strategy would overlap with Mylan’s strategy in this case about how best to
satisfy the “independent economic value” requirement in this trade secrets case. Reply at 3 (filed
Nov. 9, 2012).

         Mylan plainly shared scientific information with Dr. Enscore, but that sort of technical
information does not qualify for present purposes as confidential information. See Lyman at *3
(“[P]urely technical information is not confidential.” (quoting Koch Ref. Co. v. Jennifer L.
Boudreaux M/V, 85 F.3d 1178, 1181 (5th Cir. 1996))). The technical information necessary to
evaluate the existence of a trade secret in this case may not be public, but it is discoverable in
this litigation. See Reply at 3 (conceding that the features of Mylan’s product are discoverable).
If Dr. Enscore did not already obtain that technical information in Grange, he will be able to do
so in this case, subject to the July 2, 2009 amended Stipulation and Protective Order.

         Mylan’s argument is focused instead on the alleged communication of litigation strategy
with Dr. Enscore. Reply at 2 (“Mylan’s distinct point is that when Dr. Enscore worked on
[Grange], he obtained non-discoverable, attorney-client privileged information about the
thinking of Mylan’s attorneys regarding the value of its product design choices for Fentanyl and
their strategy for emphasizing their value.”). It is true that confidential information includes
discussion of the retaining party’s strategies in the litigation. Koch, 85 F.3d at 1182. In this
case, however—similar to Lyman— Mylan’s defense strategy in the Grange case “would appear
to be self-evident.” Lyman at *3. Dr. Enscore states as much when he notes that he knew that
Mylan “would take the position that its product was not defective, did not cause the patient’s
death, and had been approved by the FDA as bioequivalent to the already-approved innovator
product.” Enscore Aff. ¶ 5. Undoubtedly the Grange litigation was about whether Mylan’s
product was safe, and all other things being equal, a safer product is a more valuable product.
But aside from those general propositions, Mylan has not explained precisely what it thinks Dr.
Enscore knows that might be used against it in this trade secrets case. Ultimately, although this
case and Grange both involve transdermal drug delivery products, that is where the similarities
end. The court concludes that Mylan has not met its burden on the second prong.




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3. Public policy considerations

        “The policy objectives favoring disqualification include preventing conflicts of interest
and maintaining the integrity of the judicial process.” Koch, 85 F.3d at 1182 (quotation omitted).
“The main policy objectives militating against disqualification are ensuring that parties have
access to expert witnesses who possess specialized knowledge and allowing experts to pursue
their professional calling.” Id. at 1183. “Courts have also expressed concern that if experts are
too easily subjected to disqualification, unscrupulous attorneys and clients may attempt to create
an inexpensive relationship with potentially harmful experts solely to keep them from the
opposing party.” Id. Therefore, “courts have considered whether another expert is available and
whether the opposing party had time to hire him or her before trial.” Id.

         Here, Dr. Enscore has valuable specialized knowledge that might assist the court to
understand the evidence. For the reasons above, the court does not believe that he has a conflict
in this case that would undermine the integrity of the judicial process in this case. As to whether
another expert might be available, Mylan argues that Zydus has already disclosed one other
expert, and should be able to select an expert to replace Dr. Enscore if necessary. For its part,
Zydus contends that disqualifying Dr. Enscore would impose a severe hardship because of the
difficulty of finding experts in transdermal drug development who are not conflicted because
they work for or are affiliated with Mylan’s competitors. Mylan replies that Zydus’s contention
is empty rhetoric without any factual support. Although the record is sparse concerning what
Zydus’s alternatives might be, the court is unconvinced that disqualification is required just
because it might be possible for Zydus to obtain a different expert. If that were so,
disqualification would be the rule rather than the exception. The court does not believe that this
consideration outweighs the analysis above.

                                             ORDER

       Because plaintiffs have not met their burden of proving disqualification, their motion to
preclude Dr. Enscore from serving as an adverse expert witness (filed Oct. 11, 2012) is denied.

Dated at Burlington this ___ day of December 2012.

                                                     ______________________________
                                                     Geoffrey W. Crawford
                                                     Superior Court Judge




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