Braun et al v. Medtronic Sofamor Danek et al

Filing 295

MEMORANDUM DECISION AND ORDER granting 284 Expedited Motion to Remove Claimed Privilege Designation. Signed by Magistrate Judge Dustin B. Pead on 8/27/13 (alt)

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION

JOHN T. BRAUN, MD

MEMORANDUM DECISION
& ORDER

Plaintiff,
Case No. 2:10-CV-1283
v.
MEDTRONIC SOFAMOR DANEK, INC.,
Defendants.

United States District Court
Judge Robert Shelby
Magistrate Judge Dustin Pead

This matter was referred to Magistrate Judge Dustin B. Pead by District Judge Robert
Shelby pursuant to 28 U.S.C. § 636(b)(1)(A). Currently pending before the Court is Plaintiff’s
“Expedited Motion To Remove Claimed Privilege Designation” (doc. 284).1
The Court concludes that oral argument will not materially assist its resolution of the
matter and will therefore determine the issue based on the written memoranda of the parties. See
DUCivR 7-1(f).
I. BACKGROUND
Via letter dated July 19, 2013, Defendant Medtronic Sofamor Danek (Medtronic)
informed Plaintiff John T. Braun (Dr. Braun) that during the course of discovery it had
inadvertently produced a document, MSD257112-MSD257115, containing material protected
under the attorney-client privilege (doc. 287-1). As a result, pursuant to paragraph 2h of the

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Despite the fact that Plaintiff’s Reply Memo was filed on August 22, 2013, Plaintiff has
requested that his motion be expeditiously resolved prior to August 28, 2013.

parties’ Amended Scheduling Order,2 Medtronic recalled the privileged document and provided
Dr. Braun with a new and redacted copy of the communication (doc. 287-1). Thereafter, Dr.
Braun filed his pending motion arguing that the attorney-client privilege designation does not
apply and should be removed from the relevant document (doc. 284).
The specific subject of the claimed privilege is a January 8, 1999, letter from Medtronic
employee Mike Sherman to Dr. James W. Ogilvie. In the letter Mr. Sherman discusses
Medtronic’s plans for patenting Dr. Ogilvie’s fusionless scoliosis device and relays advice from
Medtronic’s patent counsel (doc. 287-1) (“I have spoken with our patent attorney and he has
offered me the following advice.”). Dr. Braun argues that the attorney-client privilege does not
apply to the redacted portions of the letter because the communication is between a non-lawyer
Medtronic employee, Mike Sherman, and third party Dr. Ogilvie (doc. 284). Medtronic counters
that the document is privileged because it “refers to Mr. Sherman’s communications with legal
counsel and contains legal advice offered to Mr. Sherman.” (doc. 284-3). Additionally
Medtronic argues that as co-inventors, any information shared between Mr. Sherman and Dr.
Ogilvie was part of the “patent prosecution process” and was intended to remain confidential. Id.
II. STANDARD OF REVIEW
“The purpose behind the attorney-client privilege is to preserve confidential
communications between attorney and client,” In re Grand Jury Subpoenas, 906 F.2d 1485, 1492
(10th Cir. 1990), while encouraging the full disclosure of information. Upjohn Co. v. United
States, 449 U.S. 383, 389 (1981). The attorney-client privilege “must be strictly constructed and
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Paragraph 2(h) of the Amended Scheduling Order provides that a party my recall an
inadvertently produced document by giving written notice to the opposing party of the identity of
the document and the basis for the privilege (doc. 55).
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accepted ‘only to the very limited extent that permitting a refusal to testify or excluding relevant
evidence has a public good transcending the normally predominant principle of utilizing all
rational means for ascertaining truth.’” In re Grand Jury Proceedings, 616 F.3d 1172, 1183 (10th
Cir. 2010) (quoting Trammel v. United States, 445 U.S. 40, 50 (1980)). The party asserting the
privilege bears the burden of establishing the privilege’s applicability. See In re Grand Jury
Proceedings, 616 F.3d at 1183. Further, “[b]ecause confidentiality is the key to maintaining the
attorney-client privilege, a party waives the privilege when he voluntarily discloses to a third
party material or information that he later claims is protected.” In re Grand Jury Proceedings,
616 F.3d at 1184.
III. ANALYSIS
The parties’ dispute revolves around a specific and discrete issue: does the attorneyclient privilege apply to the January 8, 1999, letter sent by non-lawyer and Medtronic employee,
Mike Sherman, to third party Dr. James Ogilvie? Upon consideration of the document at issue
along with the parties’ submissions and relevant legal authorities, the Court concludes that
Medtronic fails to meet its burden of demonstrating that the document is protected from
disclosure under the attorney-client privilege.
The law is established that the attorney-client privilege is waived when information is
disclosed to a third party. See In re Grand Jury Proceedings, 616 F.3d at 1184; United States v.
Bernard, 877 F.2d 1463, 1465 (10th Cir. 1989) (“Any voluntary disclosure by the client is
inconsistent with the attorney-client relationship and waives the privilege.”); Utah R. Evid.
510(a)(1) (providing that a waiver of privilege occurs if the holder of the privilege “voluntarily
discloses or consents to the disclosure of any significant part of the matter or communication.”).
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Here, the Court concludes that Mr. Sherman’s disclosure to Dr. Ogilvie, regarding Mr.
Sherman’s communications with patent counsel, resulted in a waiver of the attorney-client
privilege that had attached to the underlying attorney-client communication. Medtronic asserts,
however, that despite disclosure to third party Dr. Ogilvie the privilege was not waived because:
(1) non-attorney communications can be privileged; and (2) the letter was sent in a “confidential
setting” thereby invoking a confidential, co-inventor privilege (doc. 290).
Courts have recognized that the mere “presence or absence of attorney or non-attorney
recipients is not determinative of whether a communication is privileged.” Adams v. Gateway,
Inc., No. 2:02-cv-106-TS, 2003 WL 23787856 at *11 (D. Utah Dec 30, 2003); see also Gulf
Coast Shippers, Ltd. P’ship v. DHL Express (USA), Inc., 2011 U.S. Dist. LEXIS 80938, at *1314 (D. Utah July 15, 2011) (stating that “it is not necessary that an attorney be the author or
recipient of the communication for a privilege to exist.”). That said, the privilege is limited and
while Medtronic correctly asserts that it is not necessary for an attorney to be the author or
recipient of a communication, relevant case law establishes that the privilege must be from one
employee to another. See Adams v. Gateway, Inc., 2:02-cv-106-TS, 2003 WL 23787856, *11 (D.
Utah Dec 30, 2003) (quoting Cuno, Inc. v. Pall Corp., 121 F.R.D. 198, 203 (E.D.N.Y. 1988)
(noting that for a non-attorney communication to be privileged “it must be ‘apparent that the
communication from one employee to another was for the purpose of the second employee
transmitting the information to counsel for advice’ or the document itself must ‘reflect the
requests and directions of counsel.’” (emphasis added) (quotation omitted). The Court finds that
such is not the case here as the January 8th letter is not a communication between co-employees,
but a communication between Medtronic employee Mike Sherman and third party Dr. Ogilvie.
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Accordingly the non-attorney employee communication privilege does not apply.
Although not co-employees, Medtronic further contends that the privilege should be
extended to confidential communications between Mr. Sherman and Dr. Ogilvie as co-inventors.
Medtronic asserts that implicit in the co-inventor relationship is the understanding that
“confidential information must remain confidential because revealing such information
jeopardizes the investors’ ability to obtain patent protection for the invention.” (doc. 290).
However, other than these policy based arguments, Medtronic fails to cite to any authority that
specifically identifies a “confidential” or “co-inventor” privilege. Further, while the Court is
reticent to conclude that such protection could never exist, the Court finds that Medtronic has
failed to meet its burden to establish a privilege in this case. While it is true that Mr. Sherman
and Dr. Ogilvie may have intended their communications as co-inventors to be private,
ultimately their intentions are not determinative as to the issue of whether or not the
communication is legally privileged.
IV. ORDER
Accordingly, for the foregoing reasons, the Court hereby ORDERS that Dr. Braun’s
“Motion To Remove Claimed Privilege Designation” be GRANTED (doc. 284) and that
Medtronic’s claimed privilege designation be immediately removed from document
MSD257112-MS257115.
DATED this 27th day of August, 2013.

__________________________________
Dustin Pead
United States Magistrate Judge
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