Thursday, October 16, 2008 1:53:14 PM
new court filing, great read.. this is getting very interesting, SOLM..
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 1 of 15
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
SOLOMON TECHNOLOGIES, INC.,
Plaintiff,
v. CASE NO. 8:05-cv-1702-T-27MAP
TOYOTA MOTOR CORPORATION,
TOYOTA MOTOR SALES, U.S.A., INC.,
TOYOTA MOTOR ENGINEERING AND
MANUFACTURING NORTH AMERICA, INC.,
and TOYOTA MOTOR MANUFACTURING
KENTUCKY, INC.,
Defendants.
/
SOLOMON’S MOTION TO GRANT SOLOMON’S EXPERT, PROFESSOR EMADI,
ACCESS TO DOCUMENTS DESIGNATED CONFIDENTIAL BY TOYOTA,
OR, IN THE ALTERNATIVE, TO WITHDRAW THE
CONFIDENTIALITY DESIGNATION FROM THOSE DOCUMENTS
Plaintiff Solomon Technologies, Inc. (“Solomon”) hereby moves for entry of an order
granting Solomon’s expert, Professor Ali Emadi, access to documents designated as
confidential by Defendants Toyota Motor Corporation, Toyota Motor Sales, U.S.A., Inc.,
Toyota Motor Engineering and Manufacturing North America, Inc. and Toyota Motor
Manufacturing Kentucky, Inc. (collectively, “Toyota”) under the Protective Order in the prior
ITC proceedings. Alternatively, Solomon moves for the withdrawal of the confidentiality
designation from those documents.
Toyota has objected to providing Prof. Emadi access to the documents it designated
confidential on the basis that Prof. Emadi’s start-up company, located at the Illinois Institute
of Technology, is a competitor of Toyota and owns competitive or related patents and patent applications. Toyota’s objections have no merit and do not justify depriving Solomon of its
choice of expert or depriving the Court of the testimony of one of the preeminent authorities
in the field of hybrid vehicles. Indeed, Toyota’s objections are so completely without merit
that they appear to be simply an excuse for Toyota’s true concern—that Toyota does not
want someone as highly qualified as Prof. Emadi serving as Solomon’s expert. Significantly,
Prof. Emadi is currently serving as an expert in a litigation adverse to General Motors
Corporation—General Motors did not make the same objection that Toyota makes here.
I. FACTUAL BACKGROUND
On September 16, 2008, Solomon proposed to Toyota that, given the upcoming
deadline for Solomon’s opposition to Toyota’s motion to dismiss/motion for summary
judgment and the fact that there is not yet a protective order in this case, the parties proceed
under the terms of the protective order from the earlier ITC proceedings. Toyota agreed to
proceed in that manner for the purposes of its pending motion (but not for other purposes).
(Declaration of Kenneth L. Stein dated October 15, 2008 (“Stein Decl.”), Ex. 1). Section 3
of the ITC’s Protective Order permits information designated as confidential to be shown to a
party’s expert. (Stein Decl., Ex. 2 at 2-3). Section 15 provides a mechanism for a party to
object to the disclosure of confidential information to the other party’s expert prior to the
actual disclosure of such information to that expert:
15. No less than ten days (or any other period of time designated by
administrative law judge) prior to the initial disclosure to the proposed expert
of any confidential information submitted in accordance with paragraph 2, the
party proposing to use such expert shall submit in writing the name of such
proposed expert and his or her educational and employment history to the
supplier. If the supplier objects to the disclosure of such confidential business
information to such proposed expert as inconsistent with the language or
intent of this order or on other grounds, it shall notify the recipient in writing
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 2 of 15
3
of its objection and the grounds therefore prior to the initial disclosure. If the
dispute is not resolved on an informal basis within ten days of receipt of such
notice of objection, motion may be made to the administrative law judge for a
ruling on such objection….
(Id. at 9).
On September 28, 2008, pursuant to Section 15 of the ITC’s Protective Order,
Solomon advised Toyota that it would like to subscribe Professor Ali Emadi under the
Protective Order and provided his curriculum vitae to Toyota. (Stein Decl., Ex. 3). In
response, Toyota objected to Prof. Emadi on the basis that “he is or reasonably could become
a competitor of Toyota in the field of technology involved in this action, and owns directly
competitive or related patents and/or patent applications.” (Stein Decl., Ex. 4).
On October 2, 2008, Solomon advised Toyota that it believed that Toyota’s objection
to Prof. Emadi was unreasonable. (Stein Decl., Ex. 5). In particular, Solomon told Toyota
that Prof. Emadi’s company, which is located at the Illinois Institute of Technology, simply
does not compete with Toyota. And, even if it did, that, in and of itself, would not be
grounds for refusing him access to materials that Toyota has designated as confidential.
Solomon explained that it is not unusual for technical experts to be active in businesses
relating to their areas of technical expertise or for technical experts to have patents in their
areas of expertise. (See id.).
Solomon further told Toyota that, significantly, Toyota cannot reasonably contend
that it will suffer any commercial harm whatsoever by permitting Prof. Emadi access to its
documents. (See id.). As Solomon explained, the structure and operation of Toyota’s
accused vehicles are, at this point, well known. The vehicles are publicly available and can
be disassembled and tested. In addition, Toyota has numerous published patents and patent
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 3 of 15
4
applications on its transaxles and hybrid drive systems (which are the relevant components of
the accused vehicles) that contain schematics that are virtually identical to schematics,
designated confidential by Toyota, of the accused vehicles. Toyota, in fact, identified in the
ITC action hundreds of patents and patent applications owned by Toyota that relate to
Toyota’s accused devices and which describe the structure and operation of those devices.
(See id.)
Solomon further advised Toyota that if Toyota did not withdraw its objection to the
disclosure of its documents to Prof. Emadi, Solomon would file the present motion. (See id.).
Toyota responded on October 2, 2008 by asking Solomon to identify the documents it
wanted to show Prof. Emadi. (Stein Decl., Ex. 6). Solomon understandably took Toyota’s
request to mean that Toyota would work cooperatively to resolve this matter and consider
giving Prof. Emadi access to at least some of the documents that Toyota had designated
confidential—and, in particular, at least some “confidential” documents regarding the
structure and operation of Toyota’s accused vehicles, including schematics, which Solomon
had identified earlier. In that spirit of cooperation, Solomon sent Toyota two emails
identifying the documents that it may want to show Prof. Emadi in connection with Toyota’s
pending motion. (Stein Decl., Exs. 7 and 8). On October 9, 2008, Toyota advised Solomon
that it would not permit Prof. Emadi to have access to “any information or documents
designated by Toyota as confidential.” (Stein Decl., Ex. 9).
II. LEGAL STANDARD
In considering objections to a proposed expert’s access to materials designated as
confidential, the courts “balance the movant’s interest in selecting the consultant most
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 4 of 15
5
beneficial to the case, considering the specific expertise of this consultant and whether other
consultants possess similar expertise, against the disclosing party’s interest in protecting
confidential commercial information from disclosure to competitors.” Nellson N. Operating,
Inc. v. Elan Nutrition, LLC, 238 F.R.D. 544, 546 (D. Vt. 2006). In applying that balancing
test, courts have recognized that parties should not be limited to experts who do not currently
work in their field of expertise. Id. at 547; see also United States Gypsum Co. v. LaFarge N.
Am., Inc., No. 03 C 6027, 2004 WL 816770, at *1, 4 (N.D. Ill. Mar. 2, 2004) (the court
granting motion to permit disclosure of protected information to defendant’s expert under
protective order over plaintiff’s objection to the expert on the grounds that the expert is a
consultant to “many of [plaintiff’s] principal competitors”). As one court has explained, the
standard cannot be whether or not an expert works with competitors, because “f it was,
then a litigant could successfully object to any active industry consultant in any high
technology litigation, thereby giving it the power of veto over its adversary’s choice of
expert.” Advanced Semiconductor Materials America Inc. v. Applied Materials Inc., 43
U.S.P.Q.2d 1381, 1383-84 (N.D. Cal. 1996); Wainwright v. Washington Metropolitan Area
Transit Authority, 163 F.R.D. 391 (D.D.C. 1995) (the court granting motion to compel
discovery, subject to a protective order, over disclosing party’s objection to disclosing
proprietary information to the other side’s expert, who is a competitor). Where, as here,
expert testimony “will be essential to understanding the parties’ claims,” each party “must
have latitude to choose the experts that it believes have the necessary expertise and ability to
convey highly technical information to the Court.” Nellson N. Operating, Inc. v. Elan
Nutrition, LLC, 238 F.R.D. at 547.
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 5 of 15
6
The party seeking protection from disclosure, here Toyota, has the burden of showing
a risk of suffering an unfair competitive disadvantage. See Streck, Inc. v. Research &
Diagnostic Systems, Inc., 250 F.R.D. 426, 430 (D. Neb. 2008); see also Advanced
Semiconductor Materials America, 43 U.S.P.Q.2d at 1384 (“Access to Applied’s highly
confidential information is necessary in order for ASMA’s experts to effectively testify
regarding those claims. Therefore, absent compelling reasons urging the contrary, ASMA
must be permitted to present the experts who it believes possess the ability to convey highly
technical information to lay persons, and those experts must be permitted access to Applied’s
confidential information.”); United States Gypsum Co., 2004 WL 816770, at *1 (“The burden
is on USG to show the type of confidential information that will need to be disclosed to
Lafarge’s expert, that this information will be useful to USG’s competitors, and that
Lafarge’s expert is in a position that could allow the information to be used by
competitors.”). In addition, that party “cannot rely solely upon conclusory statements, but
must present evidence of specific damage likely to result.” Streck, Inc. v. Research &
Diagnostic Systems, Inc., 250 F.R.D. at 430.
As to whether the designation of particular information as protected under a
protective order is proper, the party seeking protection must “establish that ‘information
sought is confidential and that its disclosure might be harmful.’” Rice v. United States, 39
Fed. Cl. 747, 750 n. 7 (1997).
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 6 of 15
7
III. ARGUMENT
A. Professor Emadi is Highly Qualified to be an Expert in this Case
and His Testimony will Provide Valuable Assistance to the Court.
Professor Emadi is one of the pre-eminent authorities on hybrid electric vehicles,
which are the type of vehicles accused of patent infringement in this case. He is currently a
professor of electrical engineering and the director of the Electric Power and Power
Electronics Center and Grainger Laboratories at Illinois Institute of Technology (IIT) in
Chicago, where he has established research and teaching facilities, as well as courses in
power electronics, motor drives, and vehicular power systems. (Declaration of Professor Ali
Emadi dated October 15, 2008 (“Emadi Decl.”) at ¶ 1). He is also the Founder, President and
Chief Technology Officer of Hybrid Electric Vehicle Technologies, Inc.—an IIT start-up
company. (Id.).
Prof. Emadi has received numerous awards and recognitions, including the Eta Kappa
Nu Outstanding Young Electrical Engineer of the Year 2003 for his outstanding
contributions to hybrid electric vehicle conversion. (Id. at ¶ 2). He also directed a team of
students to design and build a novel motor drive, which won the First Place Overall Award of
the 2003 IEEE/DOE/DOD International Future Energy Challenge for Motor Competition.
(Id.). Prof Emadi is the principal author/co-author of over 210 journal and conference papers
as well as several books, including Vehicular Electric Power Systems: Land, Sea, Air, and
Space Vehicles (Marcel Dekker, 2003), Energy Efficient Electric Motors (Marcel Dekker,
2004), and Modern Electric, Hybrid Electric, and Fuel Cell Vehicles: Fundamentals, Theory,
and Design (CRC Press, 2004). (Id. at ¶ 3). He is also the editor of the Handbook of
Automotive Power Electronics and Motor Drives (Marcel Dekker, 2005). (Id.).
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 7 of 15
8
Prof. Emadi is also the founding General Chair of the 1st IEEE Vehicle Power and
Propulsion Conference, the 2005 General Chair of the SAE International Future
Transportation Technology Conference, the current Chair of the IEEE Vehicle Power and
Propulsion Steering Committee, Chair of the Technical Committee on Transportation Power
Electronics of the IEEE Power Electronics Society, Chair of the Power Electronics Technical
Committee of the IEEE Industrial Electronics Society, and the Chair of the 2007 IEEE
International Future Energy Challenge. (Id. at ¶ 4). In addition, he is the Editor (North
America) of the International Journal of Electric and Hybrid Vehicles and has been the Guest
Editor-in-Chief of the Special Issue on Automotive Power Electronics and Motor Drives,
IEEE Transactions on Power Electronics, Guest Editor of the Special Section on Hybrid
Electric and Fuel Cell Vehicles, IEEE Transactions on Vehicular Technology and Guest
Editor of the Special Section on Automotive Electronics and Electrical Drives, IEEE
Transactions on Industrial Electronics. (Id.).
As can be seen from Prof. Emadi’s complete curriculum vitae (Emadi Decl., Ex. 1),
Prof. Emadi is eminently qualified to serve as an expert in this case. He would serve as an
invaluable resource in explaining the technical issues present here to the Court and jury.
B. Toyota’s Objections to Prof. Emadi are Unreasonable and Do Not
Justify Depriving Solomon of its Choice of Expert.
As mentioned above, Toyota objects to Prof. Emadi having access to documents
designated as confidential by Toyota on the basis that Prof. Emadi’s start-up company at the
Illinois Institute of Technology is a competitor of Toyota and owns competitive or related
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 8 of 15
9
patents and patent applications. (See Stein Decl., Ex. 4).1 Toyota’s objections are meritless
for four reasons.
1. Complete Information about Toyota’s Accused Products is
Publicly Available.
This case does not involve closely guarded trade secrets, secret methods of
manufacture, secret chemical formulations or the like that cannot be discerned by the
public—instead, it involves hybrid vehicles, and in particular, their transaxles, each of which
has been sold in the United Stares and is readily available. The information that Toyota
seeks to withhold from Prof. Emadi can be discerned simply by purchasing an accused
vehicle, observing and testing its operation, and taking it apart to determine its structural
components. (Emadi Decl. at ¶ 8). There is, however, no reason to put Solomon to that
expense and effort when the information is already available in Toyota’s documents.
In addition, Toyota has already published detailed information regarding the accused
vehicles and their transaxles through its numerous patent filings. In the ITC action, Toyota,
in fact, identified hundreds of its patents and patent applications that relate to Toyota’s
accused devices and which describe the structure and operation of those devices. Many of
those patents and patent applications contain schematics that are virtually identical to those
of the accused vehicles.2 Since Toyota was required in those patents and patent applications
1 In Toyota’s October 9, 2008 email, Toyota objects to Prof. Emadi solely on the basis of his
patents. (Stein Decl., Ex. 9). It is not clear, therefore, whether Toyota has dropped its
objection to Prof. Emadi on the basis that his start-up company at IIT is supposedly a
competitor of Toyota.
2 Toyota has designated the schematics of its accused vehicles as confidential and they
cannot be filed at this time without leave of Court. If the Court believes that seeing those
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 9 of 15
10
to disclose the best mode of making those inventions, Toyota cannot credibly argue here that
they disclose devices that are materially different from the accused vehicles. See 35 U.S.C.
§ 112, ¶ 1 (“The specification … shall set forth the best mode contemplated by the inventor
of carrying out his invention.”). Also, since Toyota was required in those patents and patent
applications to describe its inventions in sufficient detail so as to enable one skilled in the art
to make the invention, it cannot credibly argue here that the description of the devices
described in those patents is somehow lacking. See 35 U.S.C. § 112, ¶ 1 (“The specification
shall contain a written description of the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
art to which it pertains, or with which it is most nearly connected, to make and use the
same….”). Toyota has thus publicly disclosed the very information that it seeks to prevent
Prof. Emadi from seeing.
2. Toyota Cannot Credibly Assert that Prof. Emadi’s
Company is a Competitor of Toyota or that its Documents
Should be Withheld from Prof. Emadi on that Basis.
Contrary to Toyota’s assertion, Prof. Emadi’s company, Hybrid Electric Vehicle
Technologies, Inc. (“HEVT”), is not a competitor of Toyota. (See Emadi Decl. at ¶ 6).
Toyota is a multi-billion dollar corporation that is one of the largest automobile
manufacturers in the world. HEVT, in contrast, is a start-up venture at the Illinois Institute of
Technology that does not manufacture automobiles or other vehicles and does not currently
have any commercial products. (See Emadi Decl. at ¶ 6). It strains credulity to assert, as
schematics and comparing them to those in Toyota’s patents would be useful in deciding this
motion, Solomon welcomes the opportunity to do so in an in camera review.
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 10 of 15
11
Toyota does, that HEVT is a competitor of Toyota or imply that HEVT can cause
commercial harm to Toyota.
Moreover, the premise of Toyota’s argument—that Prof. Emadi can be refused access
to Toyota’s documents because he is a competitor—is misplaced. Many of the most
knowledgeable experts in this field are employed in the industry or serve as consultants to
automotive-related companies. (See Emadi Decl. at ¶ 11). Accordingly, Toyota’s argument,
if accepted, would give Toyota a virtual veto power over Solomon’s choice of expert—a
result that courts have rejected. Advanced Semiconductor Materials America Inc. v. Applied
Materials Inc., 43 U.S.P.Q.2d at 1383-84 (disapproving of giving a party that power over the
other side’s choice of expert).
3. Prof. Emadi’s Patents and Patent Applications are Not
Relevant to this Case.
Toyota has never attempted to explain how Prof. Emadi’s patents and patent
applications are adverse to Toyota, other than its conclusory statements to that effect. But
even if Toyota did have an explanation, that would not justify withholding Toyota’s
“confidential” documents from Prof. Emadi. If Prof. Emadi could somehow make some use
of those documents in connection with his patent filings (and Solomon does not believe that
he could), Prof. Emadi could equally make use of the publicly available information
regarding Toyota’s accused products mentioned above. In other words, there is no
justification for withholding information from Prof. Emadi based his patent filings when, if
Prof. Emadi was so inclined, he could get the identical information from publicly available
sources.
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 11 of 15
12
In addition, it is not unusual for experts to have patents in their areas of expertise. If
Toyota is permitted to exclude Solomon’s choice of expert on that basis, it would, again, give
Toyota undue power over that choice. See id.
Toyota’s alleged concern about Prof. Emadi’s patents and applications is, moreover,
implausible. Prof. Emadi has three issued patents and seven pending application. (Emadi
Decl., Ex. 1, p. 28). The issued patents have defined scopes that are not impacted by any
information that Prof. Emadi may now see. The seven pending applications were all filed in
2007 and 2008 (see id.)—they post-date the Toyota transaxles accused of infringement in this
action and cannot cover those transaxles.3
4. Prof. Emadi has Agreed to Abide by the Terms of the
Protective Order, which Adequately Protects Toyota.
Prof. Emadi has agreed to abide by the terms of the Protective Order from the earlier
ITC proceedings, which, by agreement of the parties, governs the treatment of confidential
information for the purposes of Toyota’s pending motion to dismiss/for summary judgment.
(See Emadi Decl., Ex. 2; Stein Decl., Ex. 1). Toyota has no basis whatsoever for believing
the Prof. Emadi would violate the Protective Order and misuse confidential information
provided to him. Indeed, Prof. Emadi is currently serving as an expert in another case for a
party that is adverse to General Motors Corporation. (See Emadi Decl. at ¶ 9). General
Motors did not raise any concern in that case about his having access to documents that it
3 Significantly, Toyota knew about Prof. Emadi’s patent filings before asking Solomon to
identify the documents it wished to show him. If Toyota was truly concerned about showing
Prof. Emadi any of its confidential documents, which is its position now, it would not have
asked Solomon to go through that exercise.
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 12 of 15
13
designated confidential and his only obligation there was to sign onto the protective order in
that case. (Id.).
C. In the Alternative, This Court Should Order that Toyota’s
Confidentiality Designations Be Withdrawn.
Toyota cannot establish that information regarding the structure and operation of its
accused devices is “confidential and that its disclosure might be harmful,” as it is required to
do to seek protection of that information under a protective order. See Rice v. United States,
39 Fed. Cl. at 750 n. 7. As explained above, that information can be readily discerned and
derived from public sources, such as Toyota’s accused products themselves and Toyota’s
published patents and patent applications. Toyota simply cannot be harmed by the disclosure
of what is already publicly available.
IV. CONCLUSION
For the foregoing reasons, Solomon respectfully requests that this Court grant Prof.
Emadi access to documents designated as confidential by Toyota or, in the alternative, order
that the confidentiality designation on documents relating to the structure and operation of
Toyota’s accused devices be withdrawn.
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 13 of 15
14
Certification Under Local Rule 3.01(g)
Counsel for Solomon certifies that they have conferred with counsel for Toyota and
the parties have been unable to resolve the dispute referenced herein.
Respectfully submitted,
s/ Katherine C. Donlon
Katherine C. Donlon, FBN 0066941
kacy.donlon@fowlerwhite.com
Fowler White Boggs Banker P.A.
P.O. Box 1438
Tampa, FL 33601
813/228-7411
813/229-8313 (Fax)
Kenneth L. Stein
KStein@jenner.com
Joseph Diamante
JDiamante@jenner.com
Richard H. An
RAn@jenner.com
Jenner & Block LLP
919 Third Avenue, 37th Floor
New York, NY 10022-2908
212-891-1600
212-891-1699 (Fax)
Attorneys for Plaintiff Solomon Technologies,
Inc.
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 14 of 15
15
CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on October 16, 2008, I electronically filed the foregoing
with the Clerk of the Court by using the CM/ECF system which will send a notice of
electronic filing to the following:
William C. Guerrant, Jr., Esq.
Hill, Ward, & Henderson, P.A.
Bank of America Bldg., Suite 3700
101 E. Kennedy Blvd.
Tampa, FL 33602
Michael V. O’Shaughnessy, Esq.
Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P.
901 New York Avenue, N.W.
Washington, DC 20001-4413
I FURTHER CERTIFY that I mailed the foregoing document and the notice of
electronic filing by first-class mail to the following non-CM/ECF participant(s):
James R. Barney, Esq.
John F. Hornick, Esq.
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
901 New York Ave., NW
Washington, DC 20001
s/ Katherine C. Donlon
Attorney
"God Bless America our Troops and our Children"......... don't forget to, Let Freedom Ring!
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 1 of 15
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
SOLOMON TECHNOLOGIES, INC.,
Plaintiff,
v. CASE NO. 8:05-cv-1702-T-27MAP
TOYOTA MOTOR CORPORATION,
TOYOTA MOTOR SALES, U.S.A., INC.,
TOYOTA MOTOR ENGINEERING AND
MANUFACTURING NORTH AMERICA, INC.,
and TOYOTA MOTOR MANUFACTURING
KENTUCKY, INC.,
Defendants.
/
SOLOMON’S MOTION TO GRANT SOLOMON’S EXPERT, PROFESSOR EMADI,
ACCESS TO DOCUMENTS DESIGNATED CONFIDENTIAL BY TOYOTA,
OR, IN THE ALTERNATIVE, TO WITHDRAW THE
CONFIDENTIALITY DESIGNATION FROM THOSE DOCUMENTS
Plaintiff Solomon Technologies, Inc. (“Solomon”) hereby moves for entry of an order
granting Solomon’s expert, Professor Ali Emadi, access to documents designated as
confidential by Defendants Toyota Motor Corporation, Toyota Motor Sales, U.S.A., Inc.,
Toyota Motor Engineering and Manufacturing North America, Inc. and Toyota Motor
Manufacturing Kentucky, Inc. (collectively, “Toyota”) under the Protective Order in the prior
ITC proceedings. Alternatively, Solomon moves for the withdrawal of the confidentiality
designation from those documents.
Toyota has objected to providing Prof. Emadi access to the documents it designated
confidential on the basis that Prof. Emadi’s start-up company, located at the Illinois Institute
of Technology, is a competitor of Toyota and owns competitive or related patents and patent applications. Toyota’s objections have no merit and do not justify depriving Solomon of its
choice of expert or depriving the Court of the testimony of one of the preeminent authorities
in the field of hybrid vehicles. Indeed, Toyota’s objections are so completely without merit
that they appear to be simply an excuse for Toyota’s true concern—that Toyota does not
want someone as highly qualified as Prof. Emadi serving as Solomon’s expert. Significantly,
Prof. Emadi is currently serving as an expert in a litigation adverse to General Motors
Corporation—General Motors did not make the same objection that Toyota makes here.
I. FACTUAL BACKGROUND
On September 16, 2008, Solomon proposed to Toyota that, given the upcoming
deadline for Solomon’s opposition to Toyota’s motion to dismiss/motion for summary
judgment and the fact that there is not yet a protective order in this case, the parties proceed
under the terms of the protective order from the earlier ITC proceedings. Toyota agreed to
proceed in that manner for the purposes of its pending motion (but not for other purposes).
(Declaration of Kenneth L. Stein dated October 15, 2008 (“Stein Decl.”), Ex. 1). Section 3
of the ITC’s Protective Order permits information designated as confidential to be shown to a
party’s expert. (Stein Decl., Ex. 2 at 2-3). Section 15 provides a mechanism for a party to
object to the disclosure of confidential information to the other party’s expert prior to the
actual disclosure of such information to that expert:
15. No less than ten days (or any other period of time designated by
administrative law judge) prior to the initial disclosure to the proposed expert
of any confidential information submitted in accordance with paragraph 2, the
party proposing to use such expert shall submit in writing the name of such
proposed expert and his or her educational and employment history to the
supplier. If the supplier objects to the disclosure of such confidential business
information to such proposed expert as inconsistent with the language or
intent of this order or on other grounds, it shall notify the recipient in writing
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 2 of 15
3
of its objection and the grounds therefore prior to the initial disclosure. If the
dispute is not resolved on an informal basis within ten days of receipt of such
notice of objection, motion may be made to the administrative law judge for a
ruling on such objection….
(Id. at 9).
On September 28, 2008, pursuant to Section 15 of the ITC’s Protective Order,
Solomon advised Toyota that it would like to subscribe Professor Ali Emadi under the
Protective Order and provided his curriculum vitae to Toyota. (Stein Decl., Ex. 3). In
response, Toyota objected to Prof. Emadi on the basis that “he is or reasonably could become
a competitor of Toyota in the field of technology involved in this action, and owns directly
competitive or related patents and/or patent applications.” (Stein Decl., Ex. 4).
On October 2, 2008, Solomon advised Toyota that it believed that Toyota’s objection
to Prof. Emadi was unreasonable. (Stein Decl., Ex. 5). In particular, Solomon told Toyota
that Prof. Emadi’s company, which is located at the Illinois Institute of Technology, simply
does not compete with Toyota. And, even if it did, that, in and of itself, would not be
grounds for refusing him access to materials that Toyota has designated as confidential.
Solomon explained that it is not unusual for technical experts to be active in businesses
relating to their areas of technical expertise or for technical experts to have patents in their
areas of expertise. (See id.).
Solomon further told Toyota that, significantly, Toyota cannot reasonably contend
that it will suffer any commercial harm whatsoever by permitting Prof. Emadi access to its
documents. (See id.). As Solomon explained, the structure and operation of Toyota’s
accused vehicles are, at this point, well known. The vehicles are publicly available and can
be disassembled and tested. In addition, Toyota has numerous published patents and patent
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 3 of 15
4
applications on its transaxles and hybrid drive systems (which are the relevant components of
the accused vehicles) that contain schematics that are virtually identical to schematics,
designated confidential by Toyota, of the accused vehicles. Toyota, in fact, identified in the
ITC action hundreds of patents and patent applications owned by Toyota that relate to
Toyota’s accused devices and which describe the structure and operation of those devices.
(See id.)
Solomon further advised Toyota that if Toyota did not withdraw its objection to the
disclosure of its documents to Prof. Emadi, Solomon would file the present motion. (See id.).
Toyota responded on October 2, 2008 by asking Solomon to identify the documents it
wanted to show Prof. Emadi. (Stein Decl., Ex. 6). Solomon understandably took Toyota’s
request to mean that Toyota would work cooperatively to resolve this matter and consider
giving Prof. Emadi access to at least some of the documents that Toyota had designated
confidential—and, in particular, at least some “confidential” documents regarding the
structure and operation of Toyota’s accused vehicles, including schematics, which Solomon
had identified earlier. In that spirit of cooperation, Solomon sent Toyota two emails
identifying the documents that it may want to show Prof. Emadi in connection with Toyota’s
pending motion. (Stein Decl., Exs. 7 and 8). On October 9, 2008, Toyota advised Solomon
that it would not permit Prof. Emadi to have access to “any information or documents
designated by Toyota as confidential.” (Stein Decl., Ex. 9).
II. LEGAL STANDARD
In considering objections to a proposed expert’s access to materials designated as
confidential, the courts “balance the movant’s interest in selecting the consultant most
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 4 of 15
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beneficial to the case, considering the specific expertise of this consultant and whether other
consultants possess similar expertise, against the disclosing party’s interest in protecting
confidential commercial information from disclosure to competitors.” Nellson N. Operating,
Inc. v. Elan Nutrition, LLC, 238 F.R.D. 544, 546 (D. Vt. 2006). In applying that balancing
test, courts have recognized that parties should not be limited to experts who do not currently
work in their field of expertise. Id. at 547; see also United States Gypsum Co. v. LaFarge N.
Am., Inc., No. 03 C 6027, 2004 WL 816770, at *1, 4 (N.D. Ill. Mar. 2, 2004) (the court
granting motion to permit disclosure of protected information to defendant’s expert under
protective order over plaintiff’s objection to the expert on the grounds that the expert is a
consultant to “many of [plaintiff’s] principal competitors”). As one court has explained, the
standard cannot be whether or not an expert works with competitors, because “f it was,
then a litigant could successfully object to any active industry consultant in any high
technology litigation, thereby giving it the power of veto over its adversary’s choice of
expert.” Advanced Semiconductor Materials America Inc. v. Applied Materials Inc., 43
U.S.P.Q.2d 1381, 1383-84 (N.D. Cal. 1996); Wainwright v. Washington Metropolitan Area
Transit Authority, 163 F.R.D. 391 (D.D.C. 1995) (the court granting motion to compel
discovery, subject to a protective order, over disclosing party’s objection to disclosing
proprietary information to the other side’s expert, who is a competitor). Where, as here,
expert testimony “will be essential to understanding the parties’ claims,” each party “must
have latitude to choose the experts that it believes have the necessary expertise and ability to
convey highly technical information to the Court.” Nellson N. Operating, Inc. v. Elan
Nutrition, LLC, 238 F.R.D. at 547.
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The party seeking protection from disclosure, here Toyota, has the burden of showing
a risk of suffering an unfair competitive disadvantage. See Streck, Inc. v. Research &
Diagnostic Systems, Inc., 250 F.R.D. 426, 430 (D. Neb. 2008); see also Advanced
Semiconductor Materials America, 43 U.S.P.Q.2d at 1384 (“Access to Applied’s highly
confidential information is necessary in order for ASMA’s experts to effectively testify
regarding those claims. Therefore, absent compelling reasons urging the contrary, ASMA
must be permitted to present the experts who it believes possess the ability to convey highly
technical information to lay persons, and those experts must be permitted access to Applied’s
confidential information.”); United States Gypsum Co., 2004 WL 816770, at *1 (“The burden
is on USG to show the type of confidential information that will need to be disclosed to
Lafarge’s expert, that this information will be useful to USG’s competitors, and that
Lafarge’s expert is in a position that could allow the information to be used by
competitors.”). In addition, that party “cannot rely solely upon conclusory statements, but
must present evidence of specific damage likely to result.” Streck, Inc. v. Research &
Diagnostic Systems, Inc., 250 F.R.D. at 430.
As to whether the designation of particular information as protected under a
protective order is proper, the party seeking protection must “establish that ‘information
sought is confidential and that its disclosure might be harmful.’” Rice v. United States, 39
Fed. Cl. 747, 750 n. 7 (1997).
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III. ARGUMENT
A. Professor Emadi is Highly Qualified to be an Expert in this Case
and His Testimony will Provide Valuable Assistance to the Court.
Professor Emadi is one of the pre-eminent authorities on hybrid electric vehicles,
which are the type of vehicles accused of patent infringement in this case. He is currently a
professor of electrical engineering and the director of the Electric Power and Power
Electronics Center and Grainger Laboratories at Illinois Institute of Technology (IIT) in
Chicago, where he has established research and teaching facilities, as well as courses in
power electronics, motor drives, and vehicular power systems. (Declaration of Professor Ali
Emadi dated October 15, 2008 (“Emadi Decl.”) at ¶ 1). He is also the Founder, President and
Chief Technology Officer of Hybrid Electric Vehicle Technologies, Inc.—an IIT start-up
company. (Id.).
Prof. Emadi has received numerous awards and recognitions, including the Eta Kappa
Nu Outstanding Young Electrical Engineer of the Year 2003 for his outstanding
contributions to hybrid electric vehicle conversion. (Id. at ¶ 2). He also directed a team of
students to design and build a novel motor drive, which won the First Place Overall Award of
the 2003 IEEE/DOE/DOD International Future Energy Challenge for Motor Competition.
(Id.). Prof Emadi is the principal author/co-author of over 210 journal and conference papers
as well as several books, including Vehicular Electric Power Systems: Land, Sea, Air, and
Space Vehicles (Marcel Dekker, 2003), Energy Efficient Electric Motors (Marcel Dekker,
2004), and Modern Electric, Hybrid Electric, and Fuel Cell Vehicles: Fundamentals, Theory,
and Design (CRC Press, 2004). (Id. at ¶ 3). He is also the editor of the Handbook of
Automotive Power Electronics and Motor Drives (Marcel Dekker, 2005). (Id.).
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Prof. Emadi is also the founding General Chair of the 1st IEEE Vehicle Power and
Propulsion Conference, the 2005 General Chair of the SAE International Future
Transportation Technology Conference, the current Chair of the IEEE Vehicle Power and
Propulsion Steering Committee, Chair of the Technical Committee on Transportation Power
Electronics of the IEEE Power Electronics Society, Chair of the Power Electronics Technical
Committee of the IEEE Industrial Electronics Society, and the Chair of the 2007 IEEE
International Future Energy Challenge. (Id. at ¶ 4). In addition, he is the Editor (North
America) of the International Journal of Electric and Hybrid Vehicles and has been the Guest
Editor-in-Chief of the Special Issue on Automotive Power Electronics and Motor Drives,
IEEE Transactions on Power Electronics, Guest Editor of the Special Section on Hybrid
Electric and Fuel Cell Vehicles, IEEE Transactions on Vehicular Technology and Guest
Editor of the Special Section on Automotive Electronics and Electrical Drives, IEEE
Transactions on Industrial Electronics. (Id.).
As can be seen from Prof. Emadi’s complete curriculum vitae (Emadi Decl., Ex. 1),
Prof. Emadi is eminently qualified to serve as an expert in this case. He would serve as an
invaluable resource in explaining the technical issues present here to the Court and jury.
B. Toyota’s Objections to Prof. Emadi are Unreasonable and Do Not
Justify Depriving Solomon of its Choice of Expert.
As mentioned above, Toyota objects to Prof. Emadi having access to documents
designated as confidential by Toyota on the basis that Prof. Emadi’s start-up company at the
Illinois Institute of Technology is a competitor of Toyota and owns competitive or related
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 8 of 15
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patents and patent applications. (See Stein Decl., Ex. 4).1 Toyota’s objections are meritless
for four reasons.
1. Complete Information about Toyota’s Accused Products is
Publicly Available.
This case does not involve closely guarded trade secrets, secret methods of
manufacture, secret chemical formulations or the like that cannot be discerned by the
public—instead, it involves hybrid vehicles, and in particular, their transaxles, each of which
has been sold in the United Stares and is readily available. The information that Toyota
seeks to withhold from Prof. Emadi can be discerned simply by purchasing an accused
vehicle, observing and testing its operation, and taking it apart to determine its structural
components. (Emadi Decl. at ¶ 8). There is, however, no reason to put Solomon to that
expense and effort when the information is already available in Toyota’s documents.
In addition, Toyota has already published detailed information regarding the accused
vehicles and their transaxles through its numerous patent filings. In the ITC action, Toyota,
in fact, identified hundreds of its patents and patent applications that relate to Toyota’s
accused devices and which describe the structure and operation of those devices. Many of
those patents and patent applications contain schematics that are virtually identical to those
of the accused vehicles.2 Since Toyota was required in those patents and patent applications
1 In Toyota’s October 9, 2008 email, Toyota objects to Prof. Emadi solely on the basis of his
patents. (Stein Decl., Ex. 9). It is not clear, therefore, whether Toyota has dropped its
objection to Prof. Emadi on the basis that his start-up company at IIT is supposedly a
competitor of Toyota.
2 Toyota has designated the schematics of its accused vehicles as confidential and they
cannot be filed at this time without leave of Court. If the Court believes that seeing those
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to disclose the best mode of making those inventions, Toyota cannot credibly argue here that
they disclose devices that are materially different from the accused vehicles. See 35 U.S.C.
§ 112, ¶ 1 (“The specification … shall set forth the best mode contemplated by the inventor
of carrying out his invention.”). Also, since Toyota was required in those patents and patent
applications to describe its inventions in sufficient detail so as to enable one skilled in the art
to make the invention, it cannot credibly argue here that the description of the devices
described in those patents is somehow lacking. See 35 U.S.C. § 112, ¶ 1 (“The specification
shall contain a written description of the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
art to which it pertains, or with which it is most nearly connected, to make and use the
same….”). Toyota has thus publicly disclosed the very information that it seeks to prevent
Prof. Emadi from seeing.
2. Toyota Cannot Credibly Assert that Prof. Emadi’s
Company is a Competitor of Toyota or that its Documents
Should be Withheld from Prof. Emadi on that Basis.
Contrary to Toyota’s assertion, Prof. Emadi’s company, Hybrid Electric Vehicle
Technologies, Inc. (“HEVT”), is not a competitor of Toyota. (See Emadi Decl. at ¶ 6).
Toyota is a multi-billion dollar corporation that is one of the largest automobile
manufacturers in the world. HEVT, in contrast, is a start-up venture at the Illinois Institute of
Technology that does not manufacture automobiles or other vehicles and does not currently
have any commercial products. (See Emadi Decl. at ¶ 6). It strains credulity to assert, as
schematics and comparing them to those in Toyota’s patents would be useful in deciding this
motion, Solomon welcomes the opportunity to do so in an in camera review.
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Toyota does, that HEVT is a competitor of Toyota or imply that HEVT can cause
commercial harm to Toyota.
Moreover, the premise of Toyota’s argument—that Prof. Emadi can be refused access
to Toyota’s documents because he is a competitor—is misplaced. Many of the most
knowledgeable experts in this field are employed in the industry or serve as consultants to
automotive-related companies. (See Emadi Decl. at ¶ 11). Accordingly, Toyota’s argument,
if accepted, would give Toyota a virtual veto power over Solomon’s choice of expert—a
result that courts have rejected. Advanced Semiconductor Materials America Inc. v. Applied
Materials Inc., 43 U.S.P.Q.2d at 1383-84 (disapproving of giving a party that power over the
other side’s choice of expert).
3. Prof. Emadi’s Patents and Patent Applications are Not
Relevant to this Case.
Toyota has never attempted to explain how Prof. Emadi’s patents and patent
applications are adverse to Toyota, other than its conclusory statements to that effect. But
even if Toyota did have an explanation, that would not justify withholding Toyota’s
“confidential” documents from Prof. Emadi. If Prof. Emadi could somehow make some use
of those documents in connection with his patent filings (and Solomon does not believe that
he could), Prof. Emadi could equally make use of the publicly available information
regarding Toyota’s accused products mentioned above. In other words, there is no
justification for withholding information from Prof. Emadi based his patent filings when, if
Prof. Emadi was so inclined, he could get the identical information from publicly available
sources.
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In addition, it is not unusual for experts to have patents in their areas of expertise. If
Toyota is permitted to exclude Solomon’s choice of expert on that basis, it would, again, give
Toyota undue power over that choice. See id.
Toyota’s alleged concern about Prof. Emadi’s patents and applications is, moreover,
implausible. Prof. Emadi has three issued patents and seven pending application. (Emadi
Decl., Ex. 1, p. 28). The issued patents have defined scopes that are not impacted by any
information that Prof. Emadi may now see. The seven pending applications were all filed in
2007 and 2008 (see id.)—they post-date the Toyota transaxles accused of infringement in this
action and cannot cover those transaxles.3
4. Prof. Emadi has Agreed to Abide by the Terms of the
Protective Order, which Adequately Protects Toyota.
Prof. Emadi has agreed to abide by the terms of the Protective Order from the earlier
ITC proceedings, which, by agreement of the parties, governs the treatment of confidential
information for the purposes of Toyota’s pending motion to dismiss/for summary judgment.
(See Emadi Decl., Ex. 2; Stein Decl., Ex. 1). Toyota has no basis whatsoever for believing
the Prof. Emadi would violate the Protective Order and misuse confidential information
provided to him. Indeed, Prof. Emadi is currently serving as an expert in another case for a
party that is adverse to General Motors Corporation. (See Emadi Decl. at ¶ 9). General
Motors did not raise any concern in that case about his having access to documents that it
3 Significantly, Toyota knew about Prof. Emadi’s patent filings before asking Solomon to
identify the documents it wished to show him. If Toyota was truly concerned about showing
Prof. Emadi any of its confidential documents, which is its position now, it would not have
asked Solomon to go through that exercise.
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designated confidential and his only obligation there was to sign onto the protective order in
that case. (Id.).
C. In the Alternative, This Court Should Order that Toyota’s
Confidentiality Designations Be Withdrawn.
Toyota cannot establish that information regarding the structure and operation of its
accused devices is “confidential and that its disclosure might be harmful,” as it is required to
do to seek protection of that information under a protective order. See Rice v. United States,
39 Fed. Cl. at 750 n. 7. As explained above, that information can be readily discerned and
derived from public sources, such as Toyota’s accused products themselves and Toyota’s
published patents and patent applications. Toyota simply cannot be harmed by the disclosure
of what is already publicly available.
IV. CONCLUSION
For the foregoing reasons, Solomon respectfully requests that this Court grant Prof.
Emadi access to documents designated as confidential by Toyota or, in the alternative, order
that the confidentiality designation on documents relating to the structure and operation of
Toyota’s accused devices be withdrawn.
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 13 of 15
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Certification Under Local Rule 3.01(g)
Counsel for Solomon certifies that they have conferred with counsel for Toyota and
the parties have been unable to resolve the dispute referenced herein.
Respectfully submitted,
s/ Katherine C. Donlon
Katherine C. Donlon, FBN 0066941
kacy.donlon@fowlerwhite.com
Fowler White Boggs Banker P.A.
P.O. Box 1438
Tampa, FL 33601
813/228-7411
813/229-8313 (Fax)
Kenneth L. Stein
KStein@jenner.com
Joseph Diamante
JDiamante@jenner.com
Richard H. An
RAn@jenner.com
Jenner & Block LLP
919 Third Avenue, 37th Floor
New York, NY 10022-2908
212-891-1600
212-891-1699 (Fax)
Attorneys for Plaintiff Solomon Technologies,
Inc.
Case 8:05-cv-01702-JDW-MAP Document 40 Filed 10/16/2008 Page 14 of 15
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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on October 16, 2008, I electronically filed the foregoing
with the Clerk of the Court by using the CM/ECF system which will send a notice of
electronic filing to the following:
William C. Guerrant, Jr., Esq.
Hill, Ward, & Henderson, P.A.
Bank of America Bldg., Suite 3700
101 E. Kennedy Blvd.
Tampa, FL 33602
Michael V. O’Shaughnessy, Esq.
Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P.
901 New York Avenue, N.W.
Washington, DC 20001-4413
I FURTHER CERTIFY that I mailed the foregoing document and the notice of
electronic filing by first-class mail to the following non-CM/ECF participant(s):
James R. Barney, Esq.
John F. Hornick, Esq.
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
901 New York Ave., NW
Washington, DC 20001
s/ Katherine C. Donlon
Attorney
"God Bless America our Troops and our Children"......... don't forget to, Let Freedom Ring!
"God Bless America our Troops and our Children"......... don't forget to, Let Freedom Ring!
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