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`Wilson Sonsini Goodrich & Rosati P.C.
`PAUL D. TRIPODI II (SBN 162380)
`ptripodi@wsgr.com
`ERIK J. CARLSON (SBN 265167)
`ecarlson@wsgr.com
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Telephone: 323-210-2900
`Fax: 866-974-7329
`
`WENDY L. DEVINE (SBN 246337)
`wdevine@wsgr.com
`One Market Plaza
`Spear Tower, Suite 3300
`San Francisco, California 94105-1126
`Telephone: 415-947-2000
`Fax: 415-947-2099
`
`NATALIE J. MORGAN (SBN 211143)
`nmorgan@wsgr.com
`CHRISTINA DASHE (SBN 292360)
`cdashe@wsgr.com
`12235 El Camino Real
`San Diego, CA 92130
`Telephone: 858-350-2300
`Fax: 858-350-2399
`SARA L. TOLBERT (SBN 300945)
`stolbert@wsgr.com
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: 650-593-9300
`Fax: 650-493-6811
`Hilgers Graben PLLC
`MICHAEL T. HILGERS (Pro Hac Vice)
`mhilgers@hilgersgraben.com
`J. BUB WINDLE (Pro Hac Vice)
`bwindle@hilgersgraben.com
`TRENTON T. TANNER (Pro Hac Vice)
`ttanner@hilgersgraben.com
`575 Fallbrook Blvd, Suite 202
`Lincoln, NE 68521
`Telephone: 402-218-2106
`Fax: 402-413-1880
`
`ANDREW R. GRABEN (Pro Hac Vice)
`agraben@hilgersgraben.com
`10000 N. Central Expy, Suite 400
`Dallas, TX 75231
`Telephone: 214-842-6828
`Fax: 402-413-1880
`
`
`Attorneys for Plaintiff NuVasive, Inc.
`
`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`18-cv-00347-CAB-MDD
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`SAN DIEGO DIVISION
`NUVASIVE, INC., a Delaware
`)
`Case No. 18-cv-00347-CAB-MDD
`corporation,
`)
`
`)
`NUVASIVE, INC.’S EX PARTE
` Plaintiff,
`)
`MOTION FOR PROTECTIVE
`
`)
`ORDER AND APPOINTMENT
`v.
`)
`OF SPECIAL MASTER
`
`)
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`
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`ALPHATEC HOLDINGS, INC., a
`)
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`Delaware corporation, and ALPHATEC
`)
`
`SPINE, INC., a California corporation,
`)
`Judge: Hon. Cathy Ann Bencivengo
`
`)
` Defendants.
`)
`Magistrate Judge: Mitchell D. Dembin
`)
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`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`18-cv-00347-CAB-MDD
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`Case 3:18-cv-00347-CAB-MDD Document 218 Filed 12/06/19 PageID.18886 Page 3 of 44
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`CASES
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`TABLE OF CONTENTS
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` PAGE(S)
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`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`FACTUAL BACKGROUND ......................................................................... 3
`The Former NuVasive Employees Have Knowledge Of
`A.
`NuVasive’s Protected Information And Have Legal Obligations
`To Hold That Information Confidential. ............................................... 3
`1.
`Patrick Miles ............................................................................... 3
`2.
`Craig Hunsaker ........................................................................... 7
`3.
`Kelli Howell .............................................................................. 10
`4.
`Brian Snider .............................................................................. 11
`5. Matthew Curran ........................................................................ 12
`6.
`James Gharib............................................................................. 14
`The Protected Information Is Tied Tightly To Highly Relevant
`Areas In This Litigation And Possessed By Individuals Who Are
`Heavily Involved In Alphatec’s Defense Of The Litigation. ............. 16
`C. Alphatec Initially Represented That It Would Comply With
`Applicable Rules Covering Disclosure. .............................................. 17
`D. Miles Threatens To Weaponize NuVasive’s Own Information
`Against It. ............................................................................................ 18
`NuVasive Recently Discovered That Disclosure And Use Has
`Occurred. ............................................................................................. 19
`III. ARGUMENT ................................................................................................ 22
`IV. REQUEST FOR APPOINTMENT OF A SPECIAL MASTER .................. 31
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`B.
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`E.
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`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`TABLE OF AUTHORITIES
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`PAGE(S)
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`Cases
`Admiral Ins. Co. v. United States Dist. Court,
`881 F.2d 1486 (9th Cir. 1989) ......................................................................... 23
`Baxter International Inc. v. Carefusion Corp.,
`Case No. 1:15-cv-09986 (N.D. Ill. Nov. 27, 2019) ............................. 27, 28, 29
`Biocore Med. Tech., Inc.,
`181 F.R.D. 660 (D.Kan.1998) ......................................................................... 24
`California Bd. Sports, Inc. v. Vans, Inc.,
`06-cv-2365-IEG (AJB) (S.D. Cal. Apr. 2, 2007) (magistrate
`order aff’d June 5, 2007) (unpublished) ........................................ 23, 24, 28, 30
`Cargill Inc. v. Budine,
`No. CVF07-349-JLO-SMS, 2007 WL 1813762 (E.D. Cal. June
`22, 2007) ........................................................................................ 23, 24, 29, 31
`Cargill, Inc. v. Budine,
`No. CVF07-349-JLO-SMS, 2007 WL 1813782 (E.D. Cal. June
`22, 2017) ................................................................................................... passim
`Ceramco Inc. v. Lee Pharmaceuticals,
`510 F.2d 268 (2nd Cir. 1975) .......................................................................... 31
`Continental Ins. Co. v. Superior Court,
`32 Cal. App. 4th 94 (1995) ........................................................................ 22, 23
`Cordoza v. Pacific States Steel Corp.,
`320 F.3d 989 (9th Cir. 2003) ........................................................................... 33
`Cordy v. Sherwin-WIlliams Co.,
`156 F.D.R. 575, 584 (D.N.J.1994) .................................................................. 24
`Diagnostics Sys. Corp. v. Symantec Corp.,
`No. SA CV 06-1211 DOC, 2008 WL 9396387 (C.D. Cal. Aug.
`12, 2008) .......................................................................................................... 34
`
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`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`Dolby Labs. Licensing Corp. v. Adobe Inc.,
`No. 18CV01553YGRDMR, 2019 WL 4082784 (N.D. Cal. Aug.
`29, 2019) .......................................................................................................... 34
`G-1 Holdings, Inc. v. Baron & Budd,
` 199 F.R.D. 529 (S.D.N.Y. 2001) ........................................................ 22, 25, 30
`Gregori v. Bank of America
`207 Cal. App. 3d 291 (1989) ..................................................................... 26, 29
`In re Data Gen. Corp. Antitrust Litig.,
`1986 U.S. Dist. LEXIS 21923 (N.D. Cal. Aug. 1, 1986) ......................... passim
`Ingersoll-Rand Co. v. Barnett,
`No. 05–1636 (DRD), 2007 WL 203944 (D.N.J. Jan. 24, 2007) ..................... 34
`Kingsway Fin. Serv., Inc. v. PriceWaterHouse-Coopers,
`03 CIV. 5560 RMB HBP, 2006 WL 1520227 (S.D.N.Y. June 1,
`2006) ................................................................................................................ 23
`Las Vegas Sands v. Eighth Jud. Dist. Ct.,
`130 Nev. Adv. Op. 69, 331 P.3d 905 (2014) .................................................. 32
`Medtronic Sofamor Danek USA, Inc. v. NuVasive, Inc.,
`08-CV-1512-MMA(MDD) (S.D. Cal.) .................................................... passim
`Packard Bell NEC, Inc. v. Aztech Sys. LTD.,
`No. CV 98-7395 ....................................................................................... passim
`Packard Bell NEC, Inc. v. Aztech Systems Ltd.,
`2001 WL 880957, No. CV 98-7395 ......................................................... passim
`Seaman v. Sedgwick LLP,
`No. SA CV 11-0664-DOC, 2014 WL 3738055 (C.D. Cal. July
`28, 2014) .......................................................................................................... 34
`Terraphase v. Arcadis,
` 10-cv-4647-JSW (N.D. Cal.) (ECF No. 62, Jan. 20, 2011)
`(unpublished) ................................................................................................... 33
`United States Equal Emp’t Opportunity Comm’n v. Placer ARC, 147 F.
`Supp. 3d 1053 (E.D. Cal. 2015) ...................................................................... 21
`
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`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`United States v. Chen,
`99 F.3d 1495 (9th Cir. 1996) ............................................................................. 7
`Williams v. Trans World Airlines, Inc.,
`588 F. Supp. 1037 (W.D. Mo. 1084)............................................................... 32
`STATUTES
`Cal. Civ. Code § 3226.5 ............................................................................................. 23
`RULES
`Cal. R. Prof. Conduct 2-100 ................................................................................ 21, 31
`Cal. R. Prof. Conduct 3-310 ...................................................................................... 23
`Cal. R. Prof. Conduct 3-310(c)(1) ....................................................................... 26, 32
`Fed. R. Civ. P. 26(c)(1)(G) ........................................................................................ 22
`Fed. R. Civ. P. 53(a)(1)(C) ........................................................................................ 33
`
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`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`I.
`
`INTRODUCTION
`Plaintiff NuVasive, Inc. (“NuVasive”) files this motion to protect NuVasive’s
`confidential information, including privileged attorney work product and highly
`confidential strategic information, from either being disclosed by its former
`employees or used against it in this litigation by Defendants Alphatec Holdings, Inc.
`and Alphatec Spine, Inc. (collectively “Alphatec”). The threat of such disclosure is
`real: Alphatec’s CEO Mr. Patrick Miles has explicitly threatened to use his
`knowledge of privileged communications of NuVasive, his former employer, and
`recently NuVasive has learned that at least one of its other former employees has
`shared confidential information with Alphatec’s counsel by acting in an active
`litigation support role.
`Specifically, NuVasive seeks a protective order to prevent Alphatec and its
`counsel from further obtaining confidential and privileged information from six of
`NuVasive’s former employees, Patrick Miles, Craig Hunsaker, Kelli Howell, Brian
`Snider, Matthew Curran, and James Gharib,1 outside of the formal discovery
`process. In addition, NuVasive seeks the appointment of a special master to
`determine the extent to which confidential and privileged information2 has already
`been shared with Alphatec and/or its counsel, and to recommend orders necessary
`to remediate the harm caused by such disclosure.
`As shown further below, the following cannot be disputed: the Former
`NuVasive Employees were among the most senior people at NuVasive directly and
`intimately involved with the development of the lateral surgical techniques
`pioneered by NuVasive that embody the patents-in-suit; the Former NuVasive
`Employees were similarly involved in prosecution of those patents and in litigation
`
`
`1 Collectively, “Former NuVasive Employees.”
`2 Collectively, “Protected Information.”
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`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`and other adverse proceedings enforcing and defending the validity of those patents;
`in their roles they received privileged access to, and knowledge of, NuVasive’s
`Protected Information; the Former NuVasive Employees have legal duties to not
`disclose NuVasive’s confidential and privileged information to Alphatec or its
`counsel; and Alphatec’s counsel has a unique responsibility to take steps necessary
`to ensure that the Protected Information is neither shared with Alphatec or its counsel
`nor used in this litigation.
`For well over a year, NuVasive has relied on Alphatec’s repeated assurances,
`both to NuVasive and to this Court, that it would comply with its obligations under
`the federal rules to ensure the integrity of NuVasive’s Protected Information. Very
`recent events now establish that Alphatec’s promises were empty, and that NuVasive
`relied on them to NuVasive’s detriment. In a recent deposition, NuVasive’s counsel
`and its witness observed NuVasive’s former employee, Ms. Howell, acting in a
`litigation support role for Alphatec’s counsel and Alphatec’s counsel relying on
`NuVasive’s Protected Information to conduct its examination. Further, and equally
`alarming, in recent communications with NuVasive and representations to the Court
`it now appears that Alphatec’s counsel has disclaimed its responsibility to guard
`against obtaining, let alone using, NuVasive’s Protected Information.
`In light of these recent events, and to prevent the improper sharing of
`confidential or privileged information, the Court should enter a protective order
`prohibiting the Former NuVasive Employees from disclosing any of NuVasive’s
`Protected Information to Alphatec or its counsel, prohibiting Alphatec’s counsel
`from communicating ex parte with the Former NuVasive Employees on any matter
`related to this litigation, and prohibiting Alphatec’s counsel from representing any
`of the Former NuVasive Employees in any matter related to this litigation.
`Further, to cure the impropriety and appearance thereof of using an
`adversary’s privileged and confidential information obtained outside of the
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`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`discovery process, the Court should appoint a special master to investigate and make
`recommendations to cure such impropriety and alleviate the unfair advantage
`obtained by Alphatec in this case.
`II.
`FACTUAL BACKGROUND
`This case involves Alphatec’s infringement of several of NuVasive’s patents
`relating to its lateral spinal fusion technology and surgical methods (the “patents-in-
`suit”). In its Amended Complaint, NuVasive has alleged that beginning in or around
`September 2016, Alphatec began making changes to its leadership team by targeting
`NuVasive employees, inventors, and upper level management. (Dkt. No. 110, ¶ 126).
`The employees hired by Alphatec from NuVasive include Pat Miles, Craig
`Hunsaker, Kelli Howell, Brian Snider, Matthew Curran, and James Gharib, among
`others. As part of their employment with NuVasive, each of these six Former
`NuVasive Employees received highly confidential and privileged information that
`is at the heart of this litigation with Alphatec. Each of these Former NuVasive
`Employees have legal obligations not to disclose NuVasive’s confidential and
`privileged information to Alphatec and its counsel.
`A. The Former NuVasive Employees Have Knowledge Of NuVasive’s
`Protected Information And Have Legal Obligations To Hold That
`Information Confidential.
`1. Patrick Miles
`There are few people with more intimate knowledge of NuVasive’s
`confidential business and legal strategies than Mr. Miles. Mr. Miles was one of
`NuVasive’s most senior and trusted executives. In his seventeen-year tenure with
`NuVasive, Mr. Miles served in a variety of important roles, including President,
`COO, and member of the board of directors, he invented and conceived multiple
`aspects of the XLIF procedure at issue in this case, and he is a named inventor on at
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`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`least fifty issued utility patents related to NuVasive’s XLIF procedure and systems,
`including the patents-in-suit. (English Dec., ¶ 9).
`In each of his positions at NuVasive, Mr. Miles received and had access to
`NuVasive’s highly confidential strategic and competitive information. (English
`Dec., ¶¶ 6, 23). In Mr. Miles’s own words, he was not only a named inventor “but
`also [] the person who was most directly involved in prior suits involving [the
`patents-in-suit] and the business decisions to settle them.” (English Dec., Ex. E). As
`a senior member of NuVasive’s executive team, Mr. Miles had access to its
`confidential materials,
`including attorney-client privileged communications;
`intellectual property materials relating to NuVasive’s technology; customer contacts
`and presentations, business plans, and product roadmaps; and other highly
`confidential non-public information. (English Dec., ¶ 24).
`During Mr. Miles’ tenure at NuVasive, NuVasive had attorney-client
`relationships with in-house counsel and outside law firms to provide legal advice
`relating to the prosecution of NuVasive’s patent applications and litigation involving
`NuVasive’s patent portfolio, including the patents at issue in this lawsuit. (English
`Dec., ¶ 25). In his various roles at NuVasive, Mr. Miles had regular contact with
`these attorneys and was privy to their mental impressions, strategies, and similar
`privileged information. (English Dec., ¶ 26). Those communications were all
`NuVasive’s property, and to the extent they are privileged, the privilege belongs to
`NuVasive. Similarly, as a named inventor for six of the patents at issue in this case,
`Mr. Miles had numerous privileged and confidential communications with
`NuVasive’s outside counsel, Fish & Richardson P.C., regarding the prosecution of
`those patents. (English Dec., ¶ 27). Mr. Miles was an active participant in working
`with inside and outside patent prosecution counsel. (English Dec., ¶ 28).
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`PROTECTIVE ORDER
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`For example, in the Medtronic3 litigation, which included infringement and
`invalidity claims and defenses for some of the same patent families, products, and
`surgical techniques at issue in this litigation, Mr. Miles testified at deposition and at
`trial. Mr. Miles had numerous privileged communications with NuVasive’s
`attorneys in connection with his testimony and NuVasive’s litigation of those cases.
`(English Dec., ¶ 26-29). In fact, Mr. Miles has specifically represented to NuVasive
`in this case that he is “the person who was most directly involved in prior suits
`involving those [XLIF] patents and the business decisions to settle them.” (English
`Dec., Ex. E, p.1).
`In addition, NuVasive has attached a privilege log reflecting a small set of
`exemplars reflecting Mr. Miles’ access to and knowledge of NuVasive’s Protected
`Information.4 These include:
` Strategic engagement in the Medtronic litigation, including factual
`development, work with experts, and engagement in high-level strategy
`discussions. (Log Entry Nos. 2-5, 9-12, & 21).
` As a member of NuVasive’s senior leadership, receiving very sensitive
`board communications that contain, among other things, privileged
`information from counsel and high-level strategic information. (Log
`Entry Nos. 1, 4-6 and 9-12).
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`3 Medtronic Sofamor Danek USA, Inc. v. NuVasive, Inc., 08-CV-1512-MMA(MDD) (S.D.
`Cal.).
`4 An examination into the substance of hundreds, if not likely thousands, of communications
`reflecting receipt of Protected Information by the Former NuVasive Employees would both be
`underinclusive of the total scope of Protected Information received and would be unnecessarily
`intrusive: “To require a client to show the nature of the confidential information would tear aside
`the protective cloak drawn about the lawyer-client relationship. For the Court to probe further and
`sift the confidences in fact revealed would require the disclosure of the very matters intended to
`be protected by the rule.” Cargill, Inc. v. Budine, No. CVF07-349-JLO-SMS, 2007 WL 1813782,
`at *11, n. 5 (E.D. Cal. June 22, 2017). NuVasive has provided a privilege log to provide the Court
`with a mere sampling of the existence of these communications; while NuVasive can provide these
`documents in camera if the Court wishes, NuVasive respectfully submits that such disclosure,
`even in camera, is an unnecessary intrusion into its privileged communications.
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`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
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`Mr. Miles has various legal obligations to maintain the confidentiality of the
`Protected Information to which he had access. His employment with NuVasive was
`specifically conditioned on his agreement to maintain the confidentiality of
`NuVasive’s Protected Information, which he agreed to multiple times over his career
`with NuVasive. (English Dec., ¶ 11, Ex. A).
`As part of his employment with NuVasive and in recognition of the
`importance of the confidentiality of NuVasive’s information, Mr. Miles executed
`numerous agreements in which he promised he would not disclose NuVasive’s
`confidential information. (English Dec., Exs. B-D). Specifically, Mr. Miles agreed
`in consideration of his employment relationship with NuVasive that all Proprietary
`Information2 “shall be the sole property” of NuVasive, and that “[a]t all times, both
`during the Service Relationship and after its termination, I will keep in confidence
`and trust and will not use or disclose any Proprietary Information or anything
`relating to it without the prior written consent of an officer of [NuVasive], except as
`required in connection with the performance of my duties for [NuVasive].” (English
`Dec., ¶ 14, Ex. B). Mr. Miles further agreed that his obligations to not disclose
`NuVasive’s Proprietary Information “shall continue in effect after termination of the
`Service Relationship, regardless of the reason or reasons for termination . . . and that
`[NuVasive] is entitled to communicate my obligations under this Agreement to any
`future employer or potential employer of mine.” Id.
`On December 30, 2014, Mr. Miles entered into a Second PIIA and agreed that
`“from the time of my first contact or communication with [NuVasive], I have held
`in strict confidence all Proprietary Information and have not disclosed any
`Proprietary Information3 to anyone outside of [NuVasive] . . . except to the extent
`necessary to carry out my responsibilities as an employee or agent of [NuVasive].”
`(English Dec., ¶ 18, Ex. C). Mr. Miles further agreed that “[a]t all times, both during
`my engagement by [NuVasive] and after its termination, I will (a) keep in confidence
`
`
`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
`
`
`
`6
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`18-cv-00347-CAB-MDD
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`and trust and will not disclose any Proprietary Information except to other
`[NuVasive] employees, agents and representatives who need to know, or to third
`parties who are bound by written confidentiality agreements to the extent necessary
`to carry out my responsibilities as an employee or agent of [NuVasive] and in a
`manner consistent with any such third party confidentiality agreements, and (b) use
`Proprietary Information only for the benefit of [NuVasive].” Id.
` Specifically, on September 11, 2016, Miles agreed that “[a]s an executive
`employee of NuVasive, you acknowledge that you have an ongoing fiduciary duty
`to NuVasive” and agreed that “[a]ll obligations under your April 8, 2014 [sic]5
`Proprietary Information, Inventions and Restrictive Covenant Agreement remain in
`effect and continue throughout your employment.” (English Dec., Ex. D).
`In addition to the contractual provisions which prohibit Mr. Miles from
`disclosing NuVasive’s confidential information, the communications with legal
`counsel and other privileged attorney work product and communications to which
`Mr. Miles had access are property of NuVasive, and only NuVasive has the right to
`use them. United States v. Chen, 99 F.3d 1495, 1502 (9th Cir. 1996) (“It follows a
`fortiori that since a corporate employee cannot waive the corporation’s privilege,
`that same individual as an ex-employee cannot do so. An employee must generally
`keep an employer’s confidences.”); Packard Bell NEC, Inc. v. Aztech Sys. LTD., No.
`CV 98-7395 DT(EX), 2001 WL 880957, at *8 (C.D. Cal. Jan. 22, 2001) (noting that
`only the employer, and not the former employee, may waive the attorney-client
`privilege).
`2. Craig Hunsaker
`Prior to becoming an employee of NuVasive, Mr. Hunsaker represented
`NuVasive as outside counsel in the firms of Mintz, Levin, Cohn, Ferris, Glovsky and
`
`
`5 The April 8, 2014 date mistakenly refers to the revision date for the form document, not the
`effective date of the agreement which was December 30, 2014. (English Dec., n. 4, Ex. C).
`
`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
`
`18-cv-00347-CAB-MDD
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`
`
`7
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`

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`Popeo, P.C. and Fish & Richardson P.C. (English Dec., ¶ 32). Mr. Hunsaker was
`employed by NuVasive from August 25, 2009, through March 31, 2014. During the
`period of August 2009 through December 2009, he was NuVasive’s Vice President
`of Legal Affairs. (English Dec., ¶ 33). Mr. Hunsaker became NuVasive’s Senior
`Vice President of Human Resources from December 2009 through March 2014.
`(English Dec., ¶ 34). During his employment at NuVasive, Mr. Hunsaker served on
`NuVasive’s Senior Leadership Team, Executive Leadership Team, and Xcom
`(another leadership team). (English Dec., ¶ 42).
`Mr. Hunsaker’s employment with NuVasive was contingent upon his
`execution of NuVasive’s Proprietary Information and Inventions Agreement.
`(English Dec., ¶ 36, Ex. F). Mr. Hunsaker agreed in consideration of his employment
`relationship with NuVasive that all Proprietary Information6 “shall be the sole
`property” of NuVasive, and that “[a]t all times, both during the Service Relationship
`and after its termination, I will keep in confidence and trust and will not use or
`disclose any Proprietary Information or anything relating to it without the prior
`written consent of an officer of [NuVasive], except as required in connection with
`the performance of my duties for [NuVasive].” (English Dec., ¶ 39, Ex. G).
`Mr. Hunsaker further agreed that his obligations to not disclose NuVasive’s
`Proprietary Information “shall continue in effect after termination of the Service
`Relationship, regardless of the reason or reasons for termination . . . and that
`[NuVasive] is entitled to communicate my obligations under this Agreement to any
`future employer or potential employer of mine.” (English Dec., ¶ 40, Ex. G).
`
`
`6 “Proprietary Information” is defined as “information that was or will be developed, created,
`or discovered by or on behalf of the Company, or which became or will become known by, or was
`or is conveyed to the Company, which has commercial value in the Company’s business.” (Dec.,
`Ex. G, ¶ 1).
`
`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
`
`18-cv-00347-CAB-MDD
`
`
`
`8
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`

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`After Mr. Hunsaker resigned from NuVasive in December 2013, he agreed
`that the terms and conditions of his PIIA with NuVasive would continue. (English
`Dec., ¶ 45-47, Ex. H).
`Throughout his tenure with NuVasive, and when he served as outside counsel
`for NuVasive, Mr. Hunsaker received confidential and privileged information. For
`example, with regard to the Medtronic litigation, Mr. Hunsaker received confidential
`and privileged information including, but not limited to, trial updates from
`NuVasive’s in-house counsel, communications regarding strategy for the appeal of
`the Medtronic verdict including summaries of legal arguments before they were
`publicly filed, analysis of confidential settlement offers, and like information.
`(Privilege Log Entry Nos. 1, 4-13). Mr. Hunsaker also advised NuVasive regarding
`the relationship between prior litigation Medtronic filed against Mr. Miles and others
`and the Medtronic patent litigation. Id.
`Mr. Hunsaker also received privileged and confidential communications
`regarding NuVasive’s patent litigation against other entities, including Cadwell,
`Globus, and Lanx, and regarding NuVasive’s general intellectual property strategies.
`(English Dec., ¶ 44).
`In addition, Mr. Hunsaker served as the head of Human Resources, and in that
`capacity Mr. Hunsaker had responsibility for preparing the very agreements between
`NuVasive and the Former NuVasive Employees at issue here. (English Dec., ¶ 41).
`Also like Mr. Miles, NuVasive owns the privileged information to which Mr.
`Hunsaker gained access, and he was not entitled to share that property with third
`parties.7
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`7 See legal authorities cited, supra p. 7.
`
`NUVASIVE’S EX PARTE MOTION FOR
`PROTECTIVE ORDER
`
`
`
`9
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`18-cv-00347-CAB-MDD
`
`

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`Case 3:18-cv-00347-CAB-MDD Document 218 Filed 12/06/19 PageID.18899 Page 16 of 44
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`3. Kelli Howell
`Ms. Howell was hired by NuVasive as a project manager and was ultimately
`promoted to the position of Vice President of Research and Heath Informatics before
`she left NuVasive on March 9, 2018, to work for Alphatec. (English Dec., ¶ 48). Ms.
`Howell spearheaded the clinical validation of XLIF as well as surgeon training for
`XLIF. (English Dec., ¶ 46; Malone Dec., ¶ 4; Tripodi Dec, Ex. Q, Malone Dep. Tr.
`at 51:8 – 54:2 (Malone testifying that from 2010 until her departure in 2018, Ms.
`Howell engaged in all of Mr. Malone’s projects in the area of “general medical
`writing,” “[NuVasive’s] site-initiated surgery program,” and “field engagement or .
`. . sales force engagement on scientific and clinical training.”)
`Throughout her time at NuVasive, Ms. Howell had access to an extraordinary
`amount of confidential information regarding the development of XLIF. (English
`Dec., ¶ 50).
`On November 22, 1999, Ms. Howell (née Whealan) signed and agreed to
`NuVasive’s Proprietary Information and Inventions Agreement. (English Dec., ¶ 51,
`Ex. I). Ms. Howell agreed in consideration of her employment relationship with
`NuVasive that all Propriet