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DePuy Orthopaedics, Inc. v. Orthopaedic Hospital

United States District Court, N.D. Indiana, South Bend Division

December 1, 2016

DEPUY ORTHOPAEDICS, INC., Plaintiff,
v.
ORTHOPAEDIC HOSPITAL, Defendant.

          OPINION AND ORDER

          MICHAEL G. GOTSCH, SR. UNITED STATED MAGISTRATE JUDGE

         On August 12, 2016, Plaintiff, DePuy Orthopaedics, Inc. (“DePuy”) filed its Motion for Reconsideration of Portions of the Court's Order of August 1, 2016. Defendant, Orthopaedic Hospital (“the Hospital”), filed its response in opposition on August 29, 2016. DePuy's motion became ripe on September 8, 2016, when it filed a reply brief.

         On September 29, 2016, the Court held a status conference attended by counsel for both parties at which all then pending nondispositive matters, including the instant motion for reconsideration, were discussed. From the bench, the Court first ordered that its order dated August 1, 2016, be unsealed. [Doc. No. 213]. In addition, the Court granted DePuy's uncontested motion to seal the instant motion for reconsideration. [Doc. No. 215]. The Court then heard argument from counsel for both parties on DePuy's motion for reconsideration. Upon review of the briefs and counsel's oral argument related to the instant motion as well as the record as available to the Court at the time of its order dated August 1, 2016, the Court now denies DePuy's motion for the reasons discussed below.

         I. Relevant Background

         On August 1, 2016, this Court issued an order granting in part and denying in part the Hospital's motion to compel. Of import here, the Court ordered “DePuy to provide complete responses to the Hospital's request for jointly privileged documents and testimony related to the prosecution of the 110 Patent Family applications by August 15, 2016.” [Doc. No. 213 at 18]. The Court based its order on its conclusion that “Section 6.1 of the PRLA established the mutual consent necessary to make the Hospital and DePuy joint clients on the prosecution of the 110 Patent Family . . . .” [Id. at 17]. The heart of DePuy's argument on this issue had been that DePuy's in-house counsel had not consented to represent the Hospital in the prosecution of the patents, which precluded application of the joint client doctrine such that DePuy's internal communications with its in-house counsel related to the prosecution of the 110 Family patent applications were privileged and undiscoverable even as to the Hospital. DePuy acknowledged that it shared a common interest with the Hospital, but rejected the Hospital's claim that DePuy's in-house counsel jointly represented both parties.

         Alleging errors of law and fact in the Court's order, DePuy promptly filed a motion on August 8, 2016, to stay production of its allegedly privileged documents pending resolution of its anticipated motion for reconsideration. On August 12, 2016, as promised, DePuy filed the instant motion for reconsideration. Through its motion, DePuy challenges the Court's conclusions of fact and law on the effect of Section 6.1 of the parties' Patent Rights and Licensing Agreement (“PRLA”) on the relationship between DePuy's in-house counsel and the Hospital. Specifically, DePuy disputes the Court's conclusion that “the PRLA dictated that both the Hospital and DePuy were to be represented by the counsel selected by DePuy and approved by the Hospital for purposes related to the 110 Patent Family.” [Doc. No. 213 at 9]. In addition, DePuy contends that the Court incorrectly concluded that DePuy's in-house counsel were the lawyers selected by the Hospital and approved by DePuy in compliance with Section 6.1 of the PRLA. [Id. at 10-11]. DePuy thus asks the Court to grants its motion for reconsideration to correct the alleged errors of fact and law so that DePuy's communications with its in-house counsel are protected from disclosure in keeping with the boundaries of the attorney-client privilege.

         On September 6, 2016, the Court stayed its order dated August 1, 2016, pending resolution of DePuy's instant motion and scheduled the September 29, 2016, status conference. [Doc. No. 228 at 3]. Having reviewed the parties' written and oral arguments, the Court now addresses DePuy's motion for reconsideration.

         II. Analysis

         The Seventh Circuit has repeatedly held that motions for reconsideration serve limited functions, including correcting manifest errors of law or fact or presenting newly discovered evidence. Publishers Res., Inc. v. Walker-Davis Publ'ns, Inc., 762 F.2d 557, 561 (7th Cir. 1985) (quotation omitted). Simply put, motions for reconsideration are not to be used to advance arguments that the Court has already addressed and decided. See Caisse Nationale de Credit Agricole v. CBI Indus., Inc., 90 F.3d 1264, 1270 (7th Cir. 1996); Stodola v. Finley & Co., Inc., No. 2:05-CV-464-PRC, 2008 WL 3992237, at *5 (N.D. Ind. Aug. 21, 2008). However, “[a] motion for reconsideration performs a valuable function where the Court has patently misunderstood a party, or has made a decision outside the adversarial issues presented to the Court by the parties, or has made an error not of reasoning but of apprehension.” Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir. 1990) (internal quotation and citation omitted).

         A. Misidentification of DePuy's In-House Counsel as Section 6.1 Designated Prosecution Counsel

         With additional clarification from the parties in their written briefs and oral argument regarding the instant motion for reconsideration, the Court confirms that, by assuming that DePuy's in-house counsel constituted the designated prosecution counsel under Section 6.1 of the PRLA, a factual error was included in its previous order. In fact, evidence shows that DePuy complied with its obligations under Section 6.1 to pay the legal bills of the legal counsel it selected, with the Hospital's approval, to prosecute the 110 Family patent applications. Specifically, DePuy paid both Wean Khing Wong (“Wong”) and the O'Melveny & Myers law firm (“O'Melveny”) for their efforts in prosecuting 110 Family patent applications before the Patent and Trademark Office (“PTO”). Moreover, the parties agree that Wong and O'Melveny were the Section 6.1 designated prosecution counsel, not DePuy's in-house counsel as the Court had concluded in its previous order.

         Likewise, DePuy's rejection of the Court's conclusion that Section 6.1 of the PRLA “dictated” that the designated prosecution counsel would jointly represent both the Hospital and DePuy may be appropriate. Indeed, neither party raised Section 6.1 as a direct source of consent to joint representation in its arguments to the Court related to the Hospital's original motion to compel. Nevertheless, neither the factual error nor the erroneous finding alter the legal conclusion that DePuy's in-house counsel jointly represented both the Hospital and DePuy in the prosecution of the 110 Family patent applications.

         B. Joint Representation by DePuy's In-House Counsel

         With these errors corrected, the Court returns to the critical question, posed originally in the Hospital's motion to compel, of whether DePuy's in-house counsel jointly represented DePuy and the Hospital in the prosecution of the 110 Family patent applications. DePuy continues to argue that its in-house counsel never consented to represent the Hospital and that without such consent, a joint attorney-client ...


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