Berall v. Verathon Inc. et al

Filing 372

MEMORANDUM & ORDER: denying 363 Letter Motion to Compel. To the extent and for the reasons stated above, Defendant's motion to compel Plaintiff to produce the Disputed Documents (dkt. no. 363) is DENIED. The Clerk of the Court shall close the open motion (dkt. no. 363). SO ORDERED. (Signed by Judge Loretta A. Preska on 12/27/2021) (ama)

Case 1:10-cv-05777-LAP Document 372 Filed 12/27/21 Page 1 of 8

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
JONATHAN BERALL, M.D., M.P.H.,
Plaintiff,

No. 10-CV-5777 (LAP)

-against-

MEMORANDUM & ORDER

TELEFLEX MEDICAL INCORPORATED,
Defendant.

LORETTA A. PRESKA, Senior United States District Judge:
Before the Court is Defendant Teleflex Medical
Incorporated’s (“Teleflex”) request to file a motion to compel
documents bearing Bates Nos. BERALL-0028222-28226 and
BERALL-0028717-28724 (collectively, the “Disputed Documents”),
which Plaintiff produced on May 17, 2021 and clawed back on
May 26, 2021 pursuant to the Stipulated Protective Order (dkt.
no. 252).

(See dkt. nos. 363, 367.)

opposes the motion.

Plaintiff Dr. Berall

(See dkt. no. 365.)

The Court considers

the parties’ letter motions as the briefing on Defendant’s
motion to compel.

The Court assumes the parties’ familiarity

with the facts and procedural history of the case.

For the

reasons set forth below, Defendant’s request to compel
production of the Disputed Documents is DENIED.
I.

DISCUSSION
Teleflex seeks to compel Dr. Berall to produce e-mail

communications sent by Dr. Berall to (1) Vassilios Pipis on

1

Case 1:10-cv-05777-LAP Document 372 Filed 12/27/21 Page 2 of 8

January 4, 2012 and (2) to Debra Bartron on May 15, 2017.1
id. at 1.)

(See

In each e-mail, Dr. Berall forwards an e-mail chain

between Dr. Berall and his attorney, Zeev Pearl, beginning on
January 11, 2011.2

(See id.)

Dr. Berall’s current counsel

represents that Dr. Berall “discusses his mental impressions of
his representation by PCZL[,] their legal strategies, and the
status of the attorney-client relationship” in the e-mail chain
between Dr. Berall and Mr. Pearl.

(Id.)

Teleflex raises two

arguments for why this Court should compel production of the
Disputed Documents: (1) the work-product doctrine does not
protect the Disputed Documents because they were not prepared
“in anticipation of litigation” and (2) Dr. Berall waived the
attorney-client privilege over the e-mail chain with Mr. Pearl
because Dr. Berall forwarded the chain to non-lawyer third
parties.

(See dkt. no. 363 at 1, 3.)

The Court analyzes each

argument in turn.
a. Work-Product Protection
Teleflex argues that the Disputed Documents are not
protected by work-product immunity because they were not created
“in anticipation of litigation” or because of the threat of

1

Teleflex states that its motion to compel is limited to the
sub-part of the Disputed Documents regarding Airtraq LLC
(“Airtraq”). (See dkt. no. 363 at 1 n.1.)
2 Other attorneys at Mr. Pearl’s law firm, Pearl Cohen Zadek
Latzer (“PCZL”), were Dr. Berall’s initial attorneys of record
in the instant dispute. (See dkt. no. 365 at 1.)
2

Case 1:10-cv-05777-LAP Document 372 Filed 12/27/21 Page 3 of 8

litigation; rather, the e-mail chain between Dr. Berall and Mr.
Pearl originated after Dr. Berall voluntarily dismissed his
action against Airtraq on October 21, 2010, and “Plaintiff did
not anticipate any future litigation with Airtraq.”
nos. 27, 363 at 3.)

(See dkt.

“A document is prepared in anticipation of

litigation if there is the threat of some adversary proceeding,
the document was prepared because of that threat and the
document was created after that threat became real.”

In re

Grand Jury Proc., No. M-11-189 (LAP), 2001 WL 1167497, at *13
(S.D.N.Y. Oct. 3, 2001).
Although Dr. Berall discusses the Airtraq litigation in the
Disputed Documents, the Disputed Documents concern the instant
dispute.3

(See dkt. no. 365 at 3.)

On July 30, 2010, Dr Berall

initiated this action against Verathon Inc., Pentax of America,
Inc., Karl Storz Endoscopy-America, Inc., Aircraft Medical,
Ltd., LMA North America, Inc., and AirTraq LLC for alleged
infringement of U.S. Patent No. 5,827,178 (the “‘178 Patent”)
based on Defendants’ distribution of various video

3

Dr. Berall states that “[r]elated to Airtraq, Dr. Berall
relates to Mr. Pearl prior communications between him and the
PCZL attorneys regarding the previous version of the Airtraq
product available at that time, the litigation strategy
regarding that product, and whether or not that product
infringes his patent.” (Dkt. no. 365 at 1-2.)
3

Case 1:10-cv-05777-LAP Document 372 Filed 12/27/21 Page 4 of 8

laryngoscopes.4

(See dkt. no. 1.)

Teleflex’s argument that a

party may not receive work-product immunity over communications
with counsel regarding the instant dispute if the communications
discuss litigation strategy concerning a former defendant in the
case is unpersuasive.
The legal advice provided to Dr. Berall regarding the
Airtraq litigation--which Dr. Berall subsequently relayed to Mr.
Pearl in the Disputed Documents--also receives work-product
immunity as the underlying communications concern a prior
litigation related to the instant dispute, i.e., whether or not
certain video laryngoscopes infringe the ‘178 Patent.

Federal

Rule of Civil Procedure 26(b)(3) “protects materials prepared
for any litigation or trial as long as they were prepared by or
for a party to the subsequent litigation.”

F.T.C. v. Grolier

Inc., 462 U.S. 19, 25 (1983); see also Cohen v. City of New
York, 255 F.R.D. 110, 124 (S.D.N.Y. 2008) (“Consistent with
Grolier, the weight of authority now clearly favors protecting
work product that was generated as part of an earlier
litigation, at least where . . . that litigation is related to

4

On November 4, 2021, Dr. Berall filed a Second Amended
Complaint against Teleflex, “which added a new claim against
Teleflex for infringement of the ‘178 patent based on its
distribution of the Airtraq laryngoscopes.” (See dkt. nos. 351,
363 at 1.) Teleflex began distributing Airtraq laryngoscopes in
2015. (See dkt. no. 363 at 1.)
4

Case 1:10-cv-05777-LAP Document 372 Filed 12/27/21 Page 5 of 8

the current suit.”).

Accordingly, the date of the Disputed

Documents does not preclude work-product immunity.
While Teleflex rests its argument on the date of the
Disputed Documents, the Court must also analyze (1) whether the
Disputed Documents qualify as work-product, and (2) whether Dr.
Berall waived that protection.

Dr. Berall argues that the

Disputed Documents are “opinion work-product” protected against
disclosure because Dr. Berall states his mental impressions of
PCZL’s representation in the instant dispute and PCZL’s
“litigation strategy regarding [the Airtraq] product.”
dkt. no. 365 at 1-2.)

The Court agrees.

(See

“The work product

doctrine, which is embodied in Rule 26(b)(3) of the Federal
Rules of Civil Procedure, protects from discovery documents,
things and mental impressions of a party or his representative,
particularly his attorney, developed for or in anticipation of
litigation or trial.

The purpose of the doctrine is to permit a

party and its attorneys to prepare for litigation with a
‘certain degree of privacy,’ and without undue interference or
fear of intrusion or exploitation of one’s work by an
adversary.”

CSC Recovery Corp. v. Daido Steel Co., No.

94CIV.9214 (LAP)(THK), 1997 WL 661122, at *3 (S.D.N.Y. Oct. 22,
1997) (citation omitted); see also In re Initial Pub. Offering
Sec. Litig., 249 F.R.D. 457, 460 (S.D.N.Y. 2008) (noting that
opinion work-product is “typically given absolute protection”).
5

Case 1:10-cv-05777-LAP Document 372 Filed 12/27/21 Page 6 of 8

To receive protection for opinion work-product, Dr. Berall
must show “a real, rather than speculative concern that the work
product will reveal counsel’s thought processes in relation to
pending or anticipated litigation.”

In re Grand Jury Subpoena

Dated July 6, 2005, 510 F.3d 180, 184 (2d Cir. 2007) (internal
quotation marks and citation omitted).
burden.

Dr. Berall has met that

Because the Disputed Documents contain Dr. Berall’s

“mental impressions of his representation by PCZL,” PCZL’s
“litigation strategy regarding [the Airtraq] product,” and
PCZL’s opinion on “whether or not [the Airtraq] product
infringes [the ‘178] patent,” the Court finds that Dr. Berall
demonstrated a real concern that the Disputed Documents will
reveal PCZL’s legal strategy regarding the instant dispute.
Finally, the Court analyzes whether Dr. Berall waived
opinion work-product immunity by forwarding his e-mail chain
with Mr. Pearl to Mr. Pipis and Ms. Bartron.

“A waiver of work-

product protection occurs ‘if the party has voluntarily
disclosed the work-product in such a manner that it is likely to
be revealed to his adversary.’”

In re Grand Jury Proc., 2001 WL

1167497, at *20 (citation omitted).

Dr. Berall did not waive

work-product immunity by forwarding his e-mail chain with Mr.
Pearl to Mr. Pipis and Ms. Bartron because the disclosure did
not “substantially increase[] the opportunity” for Teleflex (or
other potential adversaries) to obtain the e-mail chain between
6

Case 1:10-cv-05777-LAP Document 372 Filed 12/27/21 Page 7 of 8

Dr. Berall and Mr. Pearl.

Williams v. Bridgeport Music, Inc.,

300 F.R.D. 120, 123 (S.D.N.Y. 2014); see also Nat’l Ass’n for
the Advancement of Colored People v. E. Rampao Cent. Sch. Dist.,
No. 17-cv-8943 (CS)(JCM), 2019 WL 12248031, at *4 (S.D.N.Y. Mar.
14, 2019) (“Unlike the attorney-client privilege, work product
protection is not automatically waived by disclosure to third
parties.”).

Mr. Pipis and Ms. Bartron were members of the

Advisory Board of Dr. Berall’s company, Camera Screen
Laryngoscope, Inc.

(See dkt. no. 365 at 2.)

Thus, it is

reasonable to assume that neither Mr. Pipis nor Ms. Bartron
would disclose the e-mail chain between Dr. Berall and Mr. Pearl
to potential adversaries.5

Accordingly, the Disputed Documents

are protected from disclosure by the work-product doctrine.
b. Attorney-Client Privilege
Because the Court finds that the Disputed Documents are
protected from disclosure by the work-product doctrine, the
Court need not examine the attorney client privilege.

5

The fact that Mr. Pipis and Ms. Bartron are Dr. Berall’s
business advisors does not destroy the work-product privilege.
See Schaeffler v. United States, 806 F.3d 34, 43 (2d Cir. 2015)
(“Documents prepared in anticipation of litigation are work
product, even when they are also intended to assist in business
dealings.”).
7

Case 1:10-cv-05777-LAP Document 372 Filed 12/27/21 Page 8 of 8

II.

CONCLUSION

To the extent and for the reasons stated above, Defendant’s
motion to compel Plaintiff to produce the Disputed Documents
(dkt. no. 363) is DENIED.

The Clerk of the Court shall close

the open motion (dkt. no. 363).
SO ORDERED.
Dated:

December 27, 2021
New York, New York
__________________________________
LORETTA A. PRESKA
Senior United States District Judge

8