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Howmedica Osteonics Corp. v. Depuy Orthopaedics, Inc.

United States District Court, D. New Jersey

January 30, 2014

HOWMEDICA OSTEONICS CORP. and STRYKER IRELAND LTD., Plaintiffs,
v.
DEPUY ORTHOPAEDICS, INC.; WRIGHT MEDICAL TECHNOLOGY, INC.; SMITH & NEPHEW, INC.; and ZIMMER, INC., Defendants. DEPUY ORTHOPAEDICS, INC. and DEPUY PRODUCTS, INC., Counterclaim Plaintiffs,
v.
HOWMEDICA OSTEONICS CORP. and STRYKER IRELAND LTD., Counterclaim Defendants.

OPINION

SUSAN D. WIGENTON, District Judge.

Before the Court is DePuy Orthopaedics, Inc., Wright Medical Technology, Inc., Smith & Nephew, Inc., and Zimmer, Inc.'s (collectively "Defendants") Appeal from United States Magistrate Judge Madeline C. Arleo's ("Judge Arleo") September 10, 2013 Order which held that Stryker intentionally waived the attorney-client privilege during the prosecution of the U.S. Patent No. 6, 475, 243 ("the '243 Patent") and compelled limited disclosure of documents falling within the scope of the waiver. This Court, having considered the parties' submissions, decides this matter without oral argument pursuant to Federal Rule of Civil Procedure 78. For the reasons stated below, Judge Arleo's Order is reversed, in part, and affirmed, in part.

BACKGROUND[1]

The '243 Patent was issued on November 5, 2002. The continuation-in-part ("CIP") application that led to the issuance of the '243 Patent was issued on September 19, 2000-U.S. Patent No. 09, 665, 025. The parent application of the CIP application was filed on May 22, 1998-U.S. Patent No. 09, 083, 406.

In February 2009, Stryker requested that the United States Patent and Trademark Office ("PTO") reexamine the '243 Patent to confirm its validity in light of newly discovered materials including a German patent that published on April 23, 1998. In support of its position, Stryker's Vice President of Intellectual Property, Alfred J. Zarnowski ("Mr. Zarnowski") submitted a declaration (the "Zarnowski Declaration") to assert that Stryker conceived its invention before the publication date of the German patent. The Zarnowski Declaration indicates that Mr. Zarnowski and Stryker's patent attorney corresponded before April 23, 1998 regarding the invention disclosure. (Zarnowski Decl. ¶ 7.) Mr. Zarnowski included quotes from the correspondence and described non-privileged facts. (Id. ¶¶ 7, 9.)

In light of the disclosures in the Zarnowski Declaration, Defendants alleged that Stryker waived the attorney-client privilege. The parties briefed the issue involving Styker's alleged waiver of privilege. Judge Arleo held oral argument regarding this issue on two separate occasions-March 15, 2013 and August 14, 2013. On August 29, 2013, the parties submitted competing orders relating to the privilege waiver. On September 11, 2013, Judge Arleo issued an Order. The Order held, in pertinent part: that Plaintiffs' disclosure of the Zarnowski [D]eclaration during prosecution of the '243 patent constitutes an intentional waiver of the attorney-client privilege which waiver is limited to documents concerning the date of conception of the invention claimed in the '243 patent and/or the description of the invention as of or prior to April 23, 1998; and it is further

ORDERED, that Plaintiffs shall produce copies of all documents and correspondence by and among Plaintiffs and Plaintiffs' counsel that were (i) created on or before May 22, 1998, and (ii) concern the date of conception of the invention claimed in the '243 patent and/or the description of the invention on or before April 23, 1998.

(Dkt. 158.)

LEGAL STANDARD

A magistrate judge may hear and determine any non-dispositive pretrial matter pending before the district court pursuant to 28 U.S.C. § 636(b)(1)(A). The district court will only reverse a magistrate judge's decision on these matters if it is "clearly erroneous or contrary to law." 28 U.S.C. § 636(b)(1)(A); Fed.R.Civ.P. 72(a); L. Civ. R. 72.1(c)(1)(A). "This Court will review a magistrate judge's findings of fact for clear error." Lithuanian Commerce Corp. v. Sara Lee Hosiery , 177 F.R.D. 205, 213 (D.N.J. 1997) (citing Lo Bosco v. Kure Eng'g Ltd. , 891 F.Supp. 1035, 1037 (D.N.J. 1995)).

A ruling is "clearly erroneous" if "although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co. , 333 U.S. 364, 395 (1948). A decision is considered contrary to law if the magistrate judge has "misinterpreted or misapplied applicable law." Doe v. Hartford Life Acc. Ins. Co. , 237 F.R.D. 545, 548 (D.N.J. 2006).

The district court "will not reverse the magistrate judge's determination, even if the court might have decided the matter differently." Bowen v. Parking Auth. of City of Camden, No. 00-5765 , 2002 WL 1754493, at *3 (D.N.J. July 30, 2002). Furthermore, "[a] district judge's simple disagreement with the magistrate judge's findings is insufficient to meet the clearly erroneous standard of review." Andrews v. Goodyear Tire & Rubber Co. , 191 F.R.D. 59, 68 (D.N.J. 2000).

As the Federal Circuit has guided, "[d]ecisions enforcing local rules in patent cases will be affirmed unless clearly unreasonable, arbitrary, or fanciful; based on erroneous conclusions of law; clearly erroneous; or unsupported by any evidence." O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc. , 467 F.3d 1355, 1366-67 (Fed. ...


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