A federal judge, finding a hip-replacement device manufacturer waived attorney-client privilege on communications with its patent counsel, has compelled the disclosure of documents and oral statements in an infringement suit.
U.S. District Judge Susan Wigenton in Newark found an intentional waiver resulting from a statement filed with the U.S. Patent Office in May 2009, two years before the start of the litigation, Howmedica Osteonics Corp. v. DePuy Orthopaedics.
The statement was made by Alfred Zarnowski, vice president of intellectual property at Howmedica Osteonics Corp., which owns the patent at issue along with Stryker Ireland. Both are subsidiaries of Stryker Corporation.
Titled “Acetabular Cup Assembly With Selected Bearing,” it relates to a surgical implant used in hip replacement surgeries.
Howmedica, based in Mahwah, claims in its infringement suit that the design has “achieved significant commercial success.”
The patent was issued in November 2002 and was based on a related patent application filed on May 22, 1998.
Questions arose about the validity of the patent in 2009, based on newly discovered materials that included a German patent published in April 1998.
Stryker wanted to show the Patent Office that it came up with the idea first, so it submitted a declaration from Zarnowski referring to discussions he had with outside patent counsel, Arthur Jacobs, prior to April 1998.
Zarnowski stated that he was aware of the invention before April 1998 and that the decision to seek patent protection was also reached before then.
To prove it, he referred to two letters he and Jacobs exchanged prior to April 1998.
Zarnowski did not attach the letters, explaining they were subject to the attorney-client privilege. Instead, he used large block quotes taken from a letter he sent to Jacobs on April 23, 1998, and from one that Jacobs sent to him.
The declaration also referred to a meeting between Zarnowski and Jacobs at which the patent application was the “primary focus.”
The defendants in the infringement case—DePuy Orthopaedics, Zimmer, Wright Medical Technology and Smith & Nephew—raised the waiver issue in an Oct. 1, 2012, letter from Christopher Kroon of Duane Morris in Boston to Strykers’ lawyers at Winston & Strawn.
The letter demanded unredacted documents regarding the patent, including correspondence between the company and its counsel, asserting that any attorney-client privilege had been waived by Zarnowski’s declaration.
Kroon, who represents Smith & Nephew, sent the letter on behalf of all the defendants.
Stryker disagreed but offered to produce the two letters mentioned by Zarnowski, albeit “redacted for unrelated and/or otherwise privileged subject matter.”
A telephonic meet-and-confer failed to resolve the dispute, so the defendants asked the court to order the disclosure, arguing that Stryker made a deliberate, knowing and voluntary waiver that extended to all communications about the same subject matter.
After two rounds of oral argument, U.S. Magistrate Judge Madeline Cox Arleo found an intentional waiver and on Sept. 11, 2013, she ordered Stryker to turn over copies of all documents and correspondence between Stryker and Jacobs created before May 22, 1998, concerning the date of the invention or a description of it prior to the April 23, 1998, the date of the German one.
The defendants challenged Arleo’s ruling as overly narrow.
They argued that the waiver should extend to oral communications, too, and that it should go through at least Sept. 19, 2000, when the patent application was filed.
They also thought Arleo’s order was internally contradictory by not allowing post-April 23, 1998, descriptions.
On Jan. 30, Wigenton agreed that the waiver should reach beyond written communications to encompass oral ones, but she affirmed both temporal restrictions, holding they were not clearly erroneous or contrary to law.
The litigation has not been going well for Stryker in other respects. Citing adverse rulings on the patent claims, in October it asked the court to enter final judgments against it in each case so that it could pursue an immediate appeal.
The defendants have opposed the request on the ground that some aspects of the patent claims have not yet been decided and Stryker is trying to manipulate the process in a way that would lead to piecemeal appeals.
Stryker local counsel William Mentlik, of Lerner David Littenberg Krumholtz & Mentlik in Westfield, referred a request for comment to Scott Samay of Winston’s New York office, who did not respond.
Also not responding were Charles Lizza of Saul Ewing in Newark, for DePuy; Brian English of Tompkins, McGuire, Wachenfeld & Barry in Newark, for Zimmer; and Kroon.
Arnold Calmann, of Saiber in Newark, who represents Smith & Nephew, was unavailable.
Jacobs could not be located for comment. The court papers did not identify his firm or location and none of the lawyers contacted supplied his whereabouts.