A lawsuit accusing an attorney of passing trade secrets along to Johnson & Johnson (NYSE:JNJ) and its Ethicon Endo-Surgery subsidiary will stand after a federal judge dismissed the law firm’s bid to toss the suit.
Judge David Cercone of the U.S. District Court for Western Pennsylvania ruled last week that the lawsuit, brought by retired Pennsylvania surgeon Dr. Enrico Nicolo, can stand under Pennsylvania’s Uniform Trade Secrets Act, according to court documents.
Nicolo claimed that Kevin Malek, who was working as an associate at the law firm of Patterson Belknap Webb & Tyler LLP through "at least April 2010," concealed his ties to Ethicon to get close to Nicolo, according to the documents. Nicolo, who brought a patent infringement lawsuit against Ethicon that was settled out of court, was chary after that of dealing with the medical device maker, Cercone wrote.
Emails filed in court show that Malek planned a March 2010 meeting with Nicolo in Pittsburgh; Nicolo claims Malek deliberately concealed his affiliation with Ethicon under the guise of establishing Nicolo as a client to gain access to the details of his patents and their relative strengths and weaknesses. He’s seeking monetary damages worth at least $25,000, double that in penalties as well as attorneys’ fees and trial costs. Malek "was not in cahoots with the Patterson firm or with Ethicon. He will aggressively defend against these allegations," his attorney, David Strassburger, said at the time.
Both Ethicon and Patterson filed motions to dismiss the lawsuit, on the grounds that Nicolo couldn’t prove that Malek had divulged any of the trade secrets he allegedly obtained. Cercone dismissed those motions, ruling that Nicolo has plausible enough claims for the case to move forward, according to the documents.
"The averments of the complaint set forth facts that plausibly indicate that Malek acquired the trade secrets through improper means and Patterson had reason to know that Malek had done so," Cercone wrote. "These alleged facts are enough for a reasonable person to believe legal assistance was being offered by an attorney who was competent in the area. They are also sufficient to give rise to the reasonable belief that responses to inquiries for confidential information were in furtherance of an attempt to form an attorney-client relationship and thus given for the purpose of obtaining legal advice. Pennsylvania law protects the confidentiality of such communications."
In light of his decision regarding the Patterson motion to dismiss, Cercone dismissed a similar bid from Ethicon as moot, court records show.