Synthes (USA) v. Spinal Kinetics Inc.

Filing 361

Conditional Order by Magistrate Judge Howard R. Lloyd granting in part and denying in part 183 Defendant's Motion to Compel Further Deposition of Giuseppe Molaro.(hrllc2, COURT STAFF) (Filed on 9/12/2011)

Download PDF
1 2 *E-FILED 09-12-2011* 3 4 5 6 NOT FOR CITATION 8 IN THE UNITED STATES DISTRICT COURT 9 FOR THE NORTHERN DISTRICT OF CALIFORNIA 10 SAN JOSE DIVISION 11 For the Northern District of California United States District Court 7 12 SYNTHES USA, LLC (f/k/a SYNTHES (U.S.A.)); SYNTHES USA SALES, LLC; and SYNTHES, INC., 13 14 15 Plaintiffs, v. CONDITIONAL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT’S MOTION TO COMPEL FURTHER DEPOSITION OF GIUSEPPE MOLARO [Re: Docket No. 183] SPINAL KINETICS, INC., 16 No. C09-01201 RMW (HRL) Defendant. / 17 18 Attorney Giuseppe Molaro reportedly no longer works on legal matters for plaintiffs 19 Synthes USA, LLC, Synthes USA Sales LLC, and Synthes, Inc. (collectively, Synthes).1 He 20 did, however, previously prosecute patents for Synthes, including the patent-in-suit, U.S. Patent 21 No. 7,429,270 (‘270 patent). Synthes claims that its communications with Molaro re patent 22 prosecution are privileged and, further, that Molaro’s work in connection with the ‘270 patent 23 prosecution is protected by the attorney work product doctrine. Defendant Spinal Kinetics, Inc. 24 (Spinal Kinetics) deposed Molaro and moves for an additional day of deposition. According to 25 Spinal Kinetics, Synthes improperly instructed Molaro not to answer foundational questions 26 which sought to determine whether any privileged communications exist, as well as the basis 27 for the claimed work product protection. Synthes opposes the motion. Upon consideration of 28 This court is informed that Synthes, Inc. and Synthes USA Sales LLC recently have been dismissed for lack of standing. 1 1 the moving and responding papers, as well as the arguments of counsel, this court conditionally 2 grants the motion in part and denies it in part. 3 There appears to be no dispute that the attorney-client privilege may apply to 4 communications between a lawyer and his client generated in connection with patent 5 prosecution. See Advanced Cardiovascular Sys., Inc. v. C.R. Bard, Inc., 144 F.R.D. 372, 374 6 (N.D. Cal. 1992) (“[T]he view once held by several courts that the attorney-client privilege 7 cannot attach to communications or documents generated in connection with proceedings before 8 the PTO has been rejected.”). Synthes produced a privilege log listing “confidential 9 communications” between specified individuals at Synthes and at Molaro’s firm who communicated about “patent prosecution.” (See Docket 182, Exs. 7-8). Spinal Kinetics argues 11 For the Northern District of California United States District Court 10 that it is entitled to probe the parameters of the privilege. Synthes disagrees and contends that 12 defendant is not entitled to know, even at a high level of generality, what documents or other 13 information were discussed. On the record presented, this court finds that Synthes was 14 overzealous in instructing Molaro not to answer certain questions. Indeed, Synthes takes the 15 position that even identifying matters that were not discussed between client and attorney (i.e., 16 matters that cannot, by definition, be privileged) would necessarily reveal the substance of 17 matters that were discussed in privileged communications. However, under the circumstances 18 presented here, it seems that the most that would be revealed is that communications about 19 documents or subjects occurred. Additionally, Molaro should have been permitted to answer 20 whether or not his understanding of claim terms is based on his own experience, as opposed to 21 instructions or information from Synthes. 22 As for the attorney work product doctrine, Synthes says that it has been established that 23 litigation (i.e., the instant action) was anticipated by the time the ‘270 patent was being 24 prosecuted. Defendant disagrees and argues that it is entitled to probe plaintiff’s assertion of 25 the work product protection. On the record presented, questions seeking the basis for the 26 assertion of the work product doctrine—i.e., questions asking Molaro when litigation was 27 anticipated—are permissible. 28 2 1 Synthes’ request for an in camera review of materials as to the basis for its assertion of 2 the work product doctrine is denied. Although Synthes balked at having Molaro testify about 3 foundational matters in deposition, plaintiff apparently had no qualms about supplying the 4 claimed factual basis for the work product doctrine in its publicly filed opposition papers. 5 At the same time, however, and notwithstanding defendant’s assertions as to its 6 noninfringement arguments Judge Whyte rejected on summary judgment, Spinal Kinetics has 7 not managed to persuade that Molaro is a critical witness as to any claim or defense in this 8 matter. Moreover, claim construction proceedings closed and the deadline to amend pleadings 9 passed long before Molaro was deposed. Accordingly, defendant’s motion to compel is conditionally granted in part and denied 11 For the Northern District of California United States District Court 10 in part as follows: Defendant may depose Molaro for one additional hour to have Molaro (1) 12 confirm (“yes” or “no”) whether attorney-client privileged communications exist as to topics or 13 documents generally (if he knows); (2) identify when litigation was anticipated (if he knows); 14 and (3) confirm whether his understanding of claim terms is based on his own experience or 15 upon information or instructions communicated by Synthes. This order is, however, 16 conditioned on the presiding judge’s determination that the period for fact discovery should be 17 re-opened to permit defendant to conduct an additional limited examination of Molaro. 18 19 SO ORDERED. Dated: September 12, 2011 20 HOWARD R. LLOYD 21 UNITED STATES MAGISTRATE JUDGE 22 23 24 25 26 27 28 3 1 5:09-cv-01201-RMW Notice has been electronically mailed to: 2 Allan William Jansen,, 3 Daniel E. Gustafson, 4 5 Ehab Monsef Samuel,, 6 James W. Geriak,,, 7 Jeffrey Martin Olson,, 8 Mark Stirrat, 9 Matthew Spencer Jorgenson 10,, Paul Howard Meier For the Northern District of California United States District Court Monte M.F. Cooper, 11 12 Robert W. Dickerson 13 Robert William Dickerson, 14 Samuel N. Tiu 15 16 Counsel are responsible for distributing copies of this document to co-counsel who have not registered for e-filing under the court’s CM/ECF program. 17 18 19 20 21 22 23 24 25 26 27 28 4

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?