Johnson & Johnson (NYSE:JNJ) and its Ethicon Endo-Surgery subsidiary moved to dismiss a trade-secrets-theft case brought by retired Pennsylvania surgeon Dr. Enrico Nicolo, who claimed that Ethicon has, for years, committed acts of patent infringement against him.
In his most recent complaint, Nicolo claims that an Ethicon legal representative carried out a "ruse" to trick Nicolo into divulging confidential information for Ethicon’s benefit, possibly at Ethicon’s request.
Kevin Malek, who was working as an associate at the law firm of Patterson Belknap Webb & Tyler LLP through "at least April 2010," allegedly learned of Nicolo through his work representing Ethicon, and then concealed his ties to the device maker to get close to Nicolo. It’s not clear whether Malek still works for Patterson Belknap or whether he still represents Ethicon.
Emails filed in court show that Malek planned a March 2010 meeting between himself and Nicolo in Pittsburgh, but Nicolo claims that Malek did so by strategically concealing his affiliation with Ethicon. Nicolo had grown wary of the J&J subsidiary after having gone through a couple of legal spats in which he had accused the company of stealing his ideas.
Malek allegedly offered to help Nicolo with his patents in order to gain his trust. Nicolo claims he shared all matter of confidential and valuable information, including parties interested in his technology, details of negotiations and agreements relating to his patents, actions taken by potential competitors and Nicolo’s plans to further develop his technologies.
"There was no intention of Mr. Malek, or his firm, to represent the legal interest 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 form Dr. Nicolo and to utilize such confidential material for the benefit of Ethicon, possibly at the direct request of Ethicon," according to Nicolo’s complaint.
Nicolo claims that Malek "did not follow up in any meaningful way" following the in-person meeting. Another attorney, unrelated to previous situations, later informed Nicolo that Malek had a tight relationship with Ethicon. Nicolo claims that Ethicon unfairly gained valuable knowledge, not just about his inventions, but "corporate intelligence" on upcoming technologies and rivals’ developments as well as leverage to use against Nicolo in other patent infringement battles.
Malek "was not in cahoots with the Patterson firm or with Ethicon. He will aggressively defend against these allegations," his attorney, David Strassburger, told TribLive.com.
Nicolo is asking for monetary damages worth at least $25,000, double that in penalties as well as attorneys’ fees and trial costs. Last week both Ethicon and the law firm of Patterson Belknap Webb & Tyler LLP filed a motion to dismiss the lawsuit on the grounds that Nicolo couldn’t prove that Malek had divulged any of the trade secrets he allegedly obtained.
A troubled past
In court documents Nicolo spelled out his prior disputes with Ethicon, noting that, in light of his previous experiences," Dr. Nicolo adopted a heightened level of discretion and caution in approaching Ethicon and sharing any business proposals and technical developments with Ethicon."
Nicolo said that he and another inventor jointly developed a proprietary surgical stapling system for intestinal reconstruction and resection, which was the subject of U.S. Patent issued in September 2000. While the patent was still pending in 1998, Nicolo met with representatives of Ethicon, including Federico Bilotti, to discuss the stapling technology, according to the complaint.
Just 7 months later Ethicon filed its own patent, naming Bilotti as its inventor, describing a surgical stapling instrument that included "hemorrhoidectomy device technology" that Nicolo claims was derived directly from his conversation with Ethicon.
Nicolo claims that he and his co-inventor filed an infringement complaint against Ethicon only after "unsuccessful attempts to negotiate a settlement." That complaint, filed in the Western District of Pennsylvania in April 2005, settled with Ethicon paying Nicolo a fixed, 1-time fee for relevant rights, and effectively resolved the "alleged misuse of Dr. Nicolo’s intellectual property rights," according to court documents. The details of that settlement have remained confidential per Ethicon’s request, Nicolo’s attorneys added.
Dr. Nicolo claimed in legal documents that that infringement was part of a pattern. Nicolo claims Ethicon also infringed on a patent he filed in March 1999 and obtained in August 2001, pertaining to "side-to-end stapler technology." While that patent was still pending, in "about late 1998 or early 1999," Nicolo met again with Ethicon employees to discuss side-to-end stapler technology as well as an unfiled patent for "non-surgical treatment for morbid obesity, comprising a method and apparatus to facilitate nutritional malabsorption utilizing intra-luminal sleeve positioned substantially within the small intestine."
Ethicon allegedly told Nicolo that it wasn’t interested in pursuing any of his technologies. In his legal complaint, Nicolo claims that Ethicon in August 2003 filed a patent for a "method and apparatus to facilitate nutritional malabsorption by diverting digestive secretions, such as bile or pancreatic secretions. A tube is positioned within the small intestine." Again, an Ethicon employee listed as the patent’s inventor was present at the meeting with Nicolo, according to the complaint.
