New York-based Patterson Belknap Webb & Tyler is seeking to remove a trade secrets case filed against it from state court in Pittsburgh to federal court in the Western District of Pennsylvania.
Plaintiff Dr. Enrico Nicolo sued the firm, an associate and a firm client for misappropriation of trade secrets after a Patterson Belknap attorney met Nicolo under the alleged guise of assisting him on possible patent infringement actions when the firm was allegedly really seeking information to help a client in a similar industry, according to the complaint in Nicolo v. Patterson Belknap Webb & Tyler.
Nicolo, a retired general surgeon and inventor, has developed and, in some instances patented, a number of surgical tools including a surgical stapler. According to the complaint, he had on multiple instances approached defendant Ethicon Endo-Surgery Inc. about his inventions. In one instance, Ethicon ended up later developing and patenting a similar product to Nicolo’s hemorrhoidectomy device. Nicolo sued Ethicon in the Western District of Pennsylvania in 2004. That case settled with, according to the complaint, Ethicon paying Nicolo a fixed-fee one-time settlement amount.
After a subsequent interaction between Ethicon and Nicolo, according to the complaint, Nicolo said he felt Ethicon used confidential information from Nicolo to develop and patent a tool similar to a surgical tool he developed. Nicolo said that by 2009, he adopted a heightened sense of discretion and caution in approaching Ethicon about future business deals, but said he couldn’t ignore the company as a potential licensee of his product because of its "dominating presence" in certain marketplaces. According to his complaint, Patterson Belknap has represented Ethicon for years. Nicolo said in the complaint that in March 2010, a Patterson Belknap associate at the time, Kevin N. Malek, contacted Nicolo about his patents relating to surgical staplers and suggested the two meet. Nicolo said Malek did not disclose that he or his firm represented Ethicon and, rather, suggested the two meet to discuss how Patterson Belknap could assist Nicolo with his patents, according to the complaint.
Malek went to Pittsburgh to meet Nicolo in late March 2010. The two allegedly discussed at least some of Nicolo’s patents related to surgical staplers. Nicolo alleged in the complaint that Malek and he discussed Malek’s awareness of possible infringers of Nicolo’s patents. Malek allegedly said he and his firm would like to investigate that possible infringement regarding a potential representation of Nicolo by Malek and Patterson Belknap in an infringement action, according to the complaint.
"There was no intention of Mr. Malek or his firm to represent the legal interests of Dr. Nicolo and the allegations thereof were a ruse to present a perceived attorney-client relationship sufficient to deceive Dr. Nicolo and misappropriate confidential material from Dr. Nicolo and to utilize such confidential material for the benefit of Ethicon, possibly at the direct request of Ethicon," Nicolo said in the complaint.
Nicolo said he disclosed to Malek proprietary information regarding the identity of those in the industry who approached Nicolo or vice versa regarding the development, licensing and sale of Nicolo’s patents. Nicolo said he also divulged, under the false pretense of a potential attorney-client privilege, other proprietary information, including planned updates to the patents, knowledge of potential patent infringers, prior art in this space and third parties working on similar products, according to the complaint.
In his sole count against the defendants for misappropriation of trade secrets, Nicolo alleged in the complaint that as a result of the defendants’ conduct, they have been unjustly enriched by the use of trade secrets, including unfairly gained corporate intelligence and an unfair advantage in dealing, or not, with Nicolo relating to the patents. Nicolo alleged in the complaint he has been prevented from fairly dealing with Ethicon regarding the patents.
Malek is no longer with Patterson Belknap. He is now at New York-based Malek Schiffrin. He is represented in the case by David Strassburger of Strassburger McKenna Gutnick & Gefsky in Pittsburgh.
"Kevin Malek did not misappropriate anything," Strassburger said in an emailed statement. "He did not provide the Patterson firm or Ethicon with any information about Dr. Nicolo. We will defend this suit to its conclusion. Kevin did nothing wrong."
Patterson Belknap is represented by James R. Schadel and Gregory Norton of Weinheimer, Schadel & Haber in Pittsburgh. Ethicon is represented by C. James Zeszutek of Dinsmore & Shohl in Pittsburgh and Harold P. Weinberger of Kramer Levin Naftalis & Frankel in New York. Blynn L. Shideler of the BLK Law Group in Wexford, Pa., represents Nicolo. Calls to Schadel, Zeszutek, Shideler and Patterson Belknap were not returned.
Malek and Ethicon have joined Patterson Belknap in its motion to remove the case to federal court.