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)

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*E-FILED 09-12-2011*

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NOT FOR CITATION

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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For the Northern District of California

United States District Court

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SYNTHES USA, LLC (f/k/a SYNTHES
(U.S.A.)); SYNTHES USA SALES, LLC; and
SYNTHES, INC.,

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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.,

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No. C09-01201 RMW (HRL)

Defendant.
/

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Attorney Giuseppe Molaro reportedly no longer works on legal matters for plaintiffs

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Synthes USA, LLC, Synthes USA Sales LLC, and Synthes, Inc. (collectively, Synthes).1 He

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did, however, previously prosecute patents for Synthes, including the patent-in-suit, U.S. Patent

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No. 7,429,270 (‘270 patent). Synthes claims that its communications with Molaro re patent

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prosecution are privileged and, further, that Molaro’s work in connection with the ‘270 patent

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prosecution is protected by the attorney work product doctrine. Defendant Spinal Kinetics, Inc.

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(Spinal Kinetics) deposed Molaro and moves for an additional day of deposition. According to

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Spinal Kinetics, Synthes improperly instructed Molaro not to answer foundational questions

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which sought to determine whether any privileged communications exist, as well as the basis

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for the claimed work product protection. Synthes opposes the motion. Upon consideration of

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This court is informed that Synthes, Inc. and Synthes USA Sales LLC recently
have been dismissed for lack of standing.
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the moving and responding papers, as well as the arguments of counsel, this court conditionally

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grants the motion in part and denies it in part.

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There appears to be no dispute that the attorney-client privilege may apply to

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communications between a lawyer and his client generated in connection with patent

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prosecution. See Advanced Cardiovascular Sys., Inc. v. C.R. Bard, Inc., 144 F.R.D. 372, 374

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(N.D. Cal. 1992) (“[T]he view once held by several courts that the attorney-client privilege

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cannot attach to communications or documents generated in connection with proceedings before

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the PTO has been rejected.”). Synthes produced a privilege log listing “confidential

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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

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For the Northern District of California

United States District Court

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that it is entitled to probe the parameters of the privilege. Synthes disagrees and contends that

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defendant is not entitled to know, even at a high level of generality, what documents or other

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information were discussed. On the record presented, this court finds that Synthes was

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overzealous in instructing Molaro not to answer certain questions. Indeed, Synthes takes the

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position that even identifying matters that were not discussed between client and attorney (i.e.,

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matters that cannot, by definition, be privileged) would necessarily reveal the substance of

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matters that were discussed in privileged communications. However, under the circumstances

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presented here, it seems that the most that would be revealed is that communications about

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documents or subjects occurred. Additionally, Molaro should have been permitted to answer

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whether or not his understanding of claim terms is based on his own experience, as opposed to

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instructions or information from Synthes.

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As for the attorney work product doctrine, Synthes says that it has been established that

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litigation (i.e., the instant action) was anticipated by the time the ‘270 patent was being

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prosecuted. Defendant disagrees and argues that it is entitled to probe plaintiff’s assertion of

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the work product protection. On the record presented, questions seeking the basis for the

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assertion of the work product doctrine—i.e., questions asking Molaro when litigation was

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anticipated—are permissible.

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Synthes’ request for an in camera review of materials as to the basis for its assertion of

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the work product doctrine is denied. Although Synthes balked at having Molaro testify about

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foundational matters in deposition, plaintiff apparently had no qualms about supplying the

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claimed factual basis for the work product doctrine in its publicly filed opposition papers.

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At the same time, however, and notwithstanding defendant’s assertions as to its

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noninfringement arguments Judge Whyte rejected on summary judgment, Spinal Kinetics has

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not managed to persuade that Molaro is a critical witness as to any claim or defense in this

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matter. Moreover, claim construction proceedings closed and the deadline to amend pleadings

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passed long before Molaro was deposed.
Accordingly, defendant’s motion to compel is conditionally granted in part and denied

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For the Northern District of California

United States District Court

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in part as follows: Defendant may depose Molaro for one additional hour to have Molaro (1)

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confirm (“yes” or “no”) whether attorney-client privileged communications exist as to topics or

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documents generally (if he knows); (2) identify when litigation was anticipated (if he knows);

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and (3) confirm whether his understanding of claim terms is based on his own experience or

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upon information or instructions communicated by Synthes. This order is, however,

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conditioned on the presiding judge’s determination that the period for fact discovery should be

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re-opened to permit defendant to conduct an additional limited examination of Molaro.

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SO ORDERED.
Dated: September 12, 2011

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HOWARD R. LLOYD
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UNITED STATES MAGISTRATE JUDGE

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5:09-cv-01201-RMW Notice has been electronically mailed to:

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Allan William Jansen [e-mail], [e-mail],
[e-mail]

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Daniel E. Gustafson

[e-mail], [e-mail]

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Ehab Monsef Samuel [e-mail], [e-mail],
[e-mail]

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James W. Geriak [e-mail], [e-mail],
[e-mail], [e-mail]

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Jeffrey Martin Olson

[e-mail], [e-mail], [e-mail]

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Mark Stirrat

[e-mail], [e-mail]

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Matthew Spencer Jorgenson

[e-mail]

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[e-mail], [e-mail], [e-mail]

Paul Howard Meier
For the Northern District of California

United States District Court

Monte M.F. Cooper

[e-mail], [e-mail]

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Robert W. Dickerson

[e-mail]

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Robert William Dickerson

[e-mail], [e-mail]

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Samuel N. Tiu

[e-mail]

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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.

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