Bianco MD vs Globus Medical Inc

Filing 195

MEMORANDUM AND ORDER regarding 186 Motion for reconsideration. Signed by Judge William C. Bryson on 1/6/14. (bas, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

SABATINO BIANCO, MD,
Plaintiff,
v.

GLOBUS MEDICAL, INC.,
Defendant.

§
§
§
§
§
§
§
§
§
§

CASE NO. 2:12-CV-147-WCB

MEMORANDUM AND ORDER
On January 3, 2014, the Court heard oral argument on the December 31, 2013, motion by
Globus Medical, Inc., for reconsideration of the Court’s prior order denying transfer of this case
to the United States District Court for the Eastern District of Pennsylvania (Dkt. No. 186).
Because the date of trial is imminent, the Court entered an oral order at the conclusion of the oral
argument denying the motion and providing a brief explanation for the Court’s reasons. This
written memorandum and order provides a more comprehensive record of the arguments made in
support of the motion and the Court’s reasons for denying it.
BACKGROUND
Early in the proceedings in this case, defendant Globus Medical, Inc., moved (Dkt. No.
24) to transfer venue to the Eastern District of Pennsylvania under 28 U.S.C. § 1404(a). One of
the arguments Globus made at that time in favor of transfer was that the parties had executed
three written nondisclosure agreements, each of which contained a clause providing that any

1

disputes between the parties arising under the agreements “shall be brought and heard either in
Pennsylvania commonwealth courts or Federal District courts located within 50 miles of
Philadelphia.” When it filed its initial transfer motion, Globus stated that it was aware of only
the three written nondisclosure agreements that were executed by Globus and Dr. Bianco during
the course of their business relationship.
On November 15, 2012, the Court denied the motion to transfer in a detailed order (Dkt.
No. 44). In addressing Globus’s argument that the forum-selection clauses in the nondisclosure
agreements required that the case be transferred, the Court acknowledged that the presence of a
forum-selection clause “would normally weigh strongly in favor of transfer.” However, the
Court held that there was no governing forum-selection clause in this case because (1) the
nondisclosure agreements executed in September 2007, in March 2008, and in June 2009,
together with their associated forum-selection clauses, were not in force at the time of the June
2007 disclosure that forms the basis for Dr. Bianco’s claims, and (2) that Globus had admitted
that no nondisclosure agreement was in place when it received Dr. Bianco’s disclosures in June
2007. 1 After considering the other factors bearing on the transfer issue, the Court denied the
motion to transfer.

1

In addition to stating in its motion to transfer that it was aware of only the three written
agreements (the September 2007, March 2008, and June 2009 agreements), Globus stated on the
same day, in its response to Dr. Bianco’s motion for a preliminary injunction, that “Globus was
not bound by any confidentiality agreement relating to any materials Bianco provided to Globus
in July [sic: June] 2007,” that there was no “confidentiality agreement with Globus in 2007 that
would obligate Globus to keep his new ideas confidential,” that “Globus never signed an
agreement relating to Bianco’s alleged confidential information until the middle of 2009 when it
executed the 2009 NDA,” and that “at the time Bianco provided materials to Globus in 2007
relating to the Bianco Concept, Globus was not bound by any written agreement as to sharing or
use of the technology” (Dkt. No. 25, at 2, 5).

2

On December 31, 2013, less than two weeks before the scheduled trial date, Globus filed
the present motion for reconsideration of the denial of its previous motion to transfer. The new
motion was predicated on a decision of the United States Supreme Court issued on December 3,
2013. That decision, Atlantic Marine Construction Co. v. U.S. District Court for the Western
District of Texas, No. 12-929 (U.S. Dec. 3, 2013), held that in an action arising under a contract,
a forum-selection clause in that contract may be enforced by a motion to transfer under section
1404, and that when such a clause is applicable, it should be given controlling weight in all but
the most exceptional cases.
DISCUSSION
In its motion for reconsideration, Globus takes the position that the parties both agree that
they executed a confidentiality agreement prior to plaintiff’s disclosure in June 2007, even
though the record contains no written evidence of such an agreement. 2 Globus further contends
that all of its confidentiality agreements contain forum-selection clauses providing that disputes
arising from the agreements will be resolved in state or federal courts in the Philadelphia area.
For that reason, Globus argues that the Court should treat the putative June 2007 agreement as
containing such a clause and should grant a transfer based on that clause.
1. The Supreme Court’s recent decision does not affect the grounds on which this Court
previously denied the motion to transfer. As noted, this Court accepted the proposition that a

2

Globus has not explained the reason for its change in position as to whether there was a
confidentiality agreement in June 2007. Although it states in its motion that “Plaintiff and
Globus agree that the parties executed a confidentiality agreement prior to Plaintiff’s disclosure
in June 2007,” that statement is supported only by citations to Dr. Bianco’s representations to
that effect, which are consistent with the position Dr. Bianco has taken in his complaint and ever
since. Nonetheless, the Court will accept Globus’s new position on the existence of the June
2007 agreement as a judicial admission to that effect.
3

forum-selection clause should be given great weight but ruled that there was no governing
forum-selection clause at issue in this case. Nothing has changed with respect to that ground of
decision except for Globus’s belated change of position with respect to whether the parties
entered into a confidentiality agreement in June 2007. It is therefore incorrect for Globus to
suggest that the Supreme Court’s recent decision requires a different decision on the transfer
issue from the one made in response to Globus’s original transfer motion.
2.

As the Court noted in its previous order, there are three written nondisclosure

agreements between the parties as to which the record contains documentary evidence: an
agreement dated September 20, 2007; an agreement dated March 8, 2008, and an agreement
dated June 22, 2009. The first two of those agreements are nonmutual in nature; that is, they
identify Globus as the “disclosing party” and Dr. Bianco as the “recipient” of the confidential
disclosures, and they impose duties of confidentiality on Dr. Bianco as the recipient, not on
Globus, the disclosing party. As the Court previously explained, those agreements grant no
rights to Dr. Bianco, and thus Dr. Bianco’s claims in this case do not arise under those
agreements. The last of the three agreements, dated June 22, 2009, grants rights to both Globus
and Dr. Bianco, but as the Court explained in its earlier order, that agreement postdated (by two
years) the disclosures at issue in this case.
3. Globus makes two arguments as to why the motion for reconsideration should be
granted.
First, it relies on its change of position with regard to the existence of a nondisclosure
agreement in June 2007, and it asserts through its counsel that Globus’s nondisclosure
agreements always contain forum-selection clauses designating courts in the Philadelphia area as

4

the proper venue for disputes arising under those agreements. As to whether the June 2007
agreement was mutual or unilateral, Globus points to Dr. Bianco’s deposition testimony in which
he stated that he had signed a confidentiality agreement in or around June 2007. While Dr.
Bianco acknowledged that Globus had insisted on his signing the June 2007 agreement in order
for him “to be able to see or participate in their new, developing technology,” and so that he
“could not go and disclose the secret that they were developing to other company or people,” he
stated that in his opinion, the June 2007 agreement “implied that if I had any conversation about
my ideas with them, I would be protected from Globus using this without my permission.”
The Court is not prepared to conclude, based on Dr. Bianco’s statement—that he believed
the June 2007 agreement “implied” that his confidences would be protected—that the June 2007
agreement was a mutual nondisclosure agreement. It is significant that the agreement signed
three months later, in September 2007, was a unilateral agreement, as was the agreement signed
six months after that, in March 2008. Of the written agreements before the court, only the 2009
agreement is a mutual nondisclosure agreement. It is difficult to credit the view that the June
2007 agreement, unlike its two immediate successor agreements, was a mutual nondisclosure
agreement, because that view is supported by nothing more than Dr. Bianco’s conclusion that the
June 2007 agreement “implied” that his confidences would be protected. Finding insufficient
evidence that there was a mutual nondisclosure agreement executed by the parties in June 2007,
the Court concludes that any agreement signed at that time gave no enforceable rights to Dr.
Bianco. For that reason, even if that agreement contained a forum-selection clause, it would

5

have no effect on this case, because this case does not arise under the June 2007 agreement,
which protected only Globus. 3
In order to base a transfer order on the June 2007 agreement, the Court would also have
to find that the agreement contained a forum-selection clause similar to the ones in the later
nondisclosure agreements. Globus relies on the assertion of counsel, unsupported by evidence,
that Globus’s nondisclosure agreements all contain forum-selection clauses. 4 The Court is not
prepared to transfer this case, at this late date in the proceedings, based on a supposition
supported only by counsel’s assertion of what the June 2007 agreement must have contained.
Second, Globus argues that the June 2009 mutual nondisclosure agreement grants Dr.
Bianco rights with respect to his earlier disclosures in June 2007, and thus the dispute in this case
can be characterized as arising under the June 2009 agreement, which contains a forum-selection
clause directing that the case be tried in the Philadelphia area.
The Court, in its November 2012 order denying transfer, specifically addressed and
rejected that argument, holding that the post-June 2007 agreements did not govern the June 2007
disclosure that gave rise to this case. Globus is simply seeking reconsideration of that already3

This finding, which is necessary to the resolution of a pretrial motion, is necessarily
made by the Court under a preponderance standard and based on the limited evidentiary showing
made in connection with the transfer motions. It does not necessarily foreclose the issue of the
existence of a June 2007 mutual nondisclosure agreement from being submitted to the jury if the
Court concludes that the evidence at trial as to the existence of such a mutual agreement is
sufficient to withstand a motion for judgment as a matter of law on that issue.
4

The only evidence relating to this issue is in an affidavit of a Globus officer filed with
the original transfer motion, which stated that “[a]ll of the NDAs that Bianco signed contained a
forum selection clause.” But that statement referred only to the September 2007, March 2008,
and June 2009 agreements (all of which plainly contain such a clause). The statement was made
at a time when Globus did not acknowledge that there was a June 2007 agreement, and thus the
statement is of no evidentiary value in supporting counsel’s assertion that the June 2007
agreement contained such a clause.
6

decided issue. This Court has studied the June 2009 agreement and has concluded that it is not
retroactive in effect, i.e., it does not give Dr. Bianco protections with regard to disclosures that
he made in June 2007, two years before the execution of the June 2009 agreement. If it were
given retroactive effect, the 2009 agreement would bar the future use of information that had
been disclosed and freely used prior to the execution of the agreement, effecting a kind of “clawback” of rights with respect to information previously disclosed by one party and lawfully used
by the other. In the absence of a clear expression of intent to make the agreement operate
retroactively in such an unusual manner, the Court will not interpret the June 2009 agreement to
have that effect.
4. Finally, Globus’s motion for reconsideration is denied on the additional ground of
untimeliness. The Court’s ruling in this respect is not based on Globus’s counsel’s failure to file
the motion promptly after the Supreme Court’s December 3, 2013, ruling in the Atlantic Marine
Construction Co. case. Busy trial lawyers cannot reasonably be expected to be aware of recent
Supreme Court decisions within a matter of days of their release. But that is not the crux of the
timeliness problem with Globus’s motion for reconsideration, as the merits of the motion do not
turn on the Supreme Court’s decision. Instead, the motion is based on (1) an argument as to the
June 2007 agreement that was made possible by a change in Globus’s position as to the existence
of that agreement, and (2) an argument as to the June 2009 agreement that was raised and
rejected in the original order denying transfer in November 2012. Since the Supreme Court’s
decision had no material effect on those issues, Globus’s failure to seek reconsideration of the
denial of the transfer motion promptly after its entry in November 2012 makes its current motion
untimely.

7

There is no suggestion that the two grounds on which Globus’s motion for
reconsideration is actually based—its acceptance of Dr. Bianco’s longstanding position that the
parties executed a nondisclosure agreement in June 2007, and its contention that the June 2009
mutual nondisclosure agreement should be given retroactive effect to bar the use of information
given to Globus prior to the date of the agreement—arose only within the last several days or
weeks. In short, nothing happened on or after December 3, 2013, that gave Globus an excuse for
seeking reconsideration of its original transfer motion 14 months after the original order denying
transfer, and less than two weeks before trial. See Peteet v. Dow Chem. Co., 868 F.2d 1428,
1436 (5th Cir. 1989); United States v. Polizzi, 500 F.2d 856, 901 (9th Cir. 1974); McGrawEdison Co. v. Van Pelt, 350 F.2d 361, 363-64 (8th Cir. 1965); Salem Radio Representatives, Inc.
v. Can Tel Mkt. Support Grp., 114 F. Supp. 2d 553, 558 (N.D. Tex. 2000); Federal Trade
Comm’n v. Multinet Mktg., LLC, 959 F. Supp. 394, 395 (N.D. Tex. 1997).
It is so ORDERED.
SIGNED this 6th day of January, 2014.

__________________________________________
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE

8