PAGE 1 – OPINION AND ORDER 

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON 

ST. JUDE MEDICAL S.C., INC.,

Plaintiff, 

v. 

LOUISE MARIE JANSSEN-COUNOTTE, 

Defendant, 

and 

BIOTRONIK, INC.,

 Third-Party Subpoena Recipient. 

Case No. 3:15-mc-00099-SI 

OPINION AND ORDER 

(Principal case pending in U.S. District 

Court, Western District of Texas, Austin 

Div., Case No. A-14-CA-877-SS) 

Paul A. C. Berg, COSGRAVE VERGEER KESTER LLP, 888 S.W. Fifth Avenue, Suite 500, 

Portland, OR 97204; Stephen M. Nickelsburg, CLIFFORD CHANCE US LLP, 2001 K Street 

NW, Washington, DC 20006-1001. Of Attorneys for Plaintiff. 

Sean Donahue, DONAHUE & ASSOCIATES, One S.W. Columbia Street, Suite 1625, Portland, 

OR 97258-2021; Ned H. Bassen and Charles W. Cohen, HUGHES HUBBARD & REED LLP, 

One Battery Park Plaza, New York, NY 1004. Of Attorneys for Third-Party Subpoena Recipient 

Biotronik, Inc. 

No appearance was entered by Defendant Louise Marie Janssen-Counotte. 

 

Case 3:15-mc-00099-SI Document 63 Filed 01/08/16 Page 1 of 6
PAGE 2 – OPINION AND ORDER 

Michael H. Simon, District Judge.

For the reasons that follow, St. Jude Medical S.C., Inc.’s Motion To Provide St. Jude A 

Copy Of The Special Master’s Ex Parte Order Requiring Production Of Documents And/Or To 

Unseal The Order (Dkt. 58) is DENIED. 

BACKGROUND 

In a case pending in federal court in Austin, Texas, Plaintiff, St. Jude Medical S.C., Inc. 

(“St. Jude” or “Plaintiff”), has sued Defendant, Louise Marie Janssen-Counotte, for theft and 

threatened misappropriation of trade secrets and other confidential information, among other 

claims. Ms. Janssen-Counotte was a high-ranking officer and employee of Plaintiff’s European 

affiliate. On July 1, 2014, Ms. Janssen-Counotte left her employment with Plaintiff’s European 

affiliate to become the President for U.S. operations of Biotronik, Inc. (“Biotronik”), the U.S. 

affiliate of one of Plaintiff’s principal global competitors, the Biotronik Group. In a forensic 

review of the computer equipment used by Ms. Janssen-Counotte shortly before she left her 

employment with St. Jude’s European affiliate, St. Jude discovered evidence that Ms. JanssenCounotte had copied, emailed, and downloaded what St. Jude contends are among its most 

competitively sensitive trade secrets and other confidential information. 

Pursuant to Rule 45 of the Federal Rules of Civil Procedure, St. Jude served on Biotronik, 

Defendant’s new employer and the U.S. affiliate of the Biotronik Group, a third-party subpoena 

for documents and electronically-stored information (“ESI”). St. Jude moved for an order 

compelling Biotronik to comply with that subpoena, including documents held by the Biotronik 

Group, and Biotronik objected on several grounds. The Court granted St. Jude’s motion in part 

and appointed a Special Master to consider several of Biotronik’s specific objections in more 

detail and to work with the parties efficiently and fairly to ensure the production of all relevant 

and non-privileged ESI required to be produced under the subpoena and related court orders. 

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PAGE 3 – OPINION AND ORDER 

As part of his work, the Special Master reviewed in camera binders of documents 

provided by Biotronik. By email dated September 19, 2015, the Special Master explained his 

findings and conclusions to counsel for St. Jude and Biotronik and directed Biotronik to produce 

certain documents to St. Jude. The Special Master also gave Biotronik an opportunity to object. 

In a telephone hearing with the parties, St. Jude consented to a limited ex parte procedure to be 

conducted on the record between the Special Master and Biotronik that would allow Biotronik to 

present its objections without revealing information protected by the attorney-client privilege in 

the event that the Special Master agreed with Biotronik’s objections. 

Biotronik presented its objections to the Special Master, and the Special Master 

concluded that certain documents were not entitled to the protections afforded by the attorneyclient privilege. In order to provide Biotronik with the opportunity to present to the Court any 

objections by Biotronik to the Special Master’s findings on this issue, the Special Master filed in 

camera and under seal a “Special Master’s Order Requiring Production of Certain Documents 

Identified During Special Master’s In Camera Inspection.” Dkt. 49. In that Order, the Special 

Master explained his reasons for concluding that an exception to the attorney-client privilege 

applied to portions of some of the documents. 

On November 24, 2015, the Court held a status conference with counsel for St. Jude and 

Biotronik. As discussed on the record, Biotronik explained that it had not yet decided whether to 

object to the Special Master’s Order or simply to provide to St. Jude the documents that the 

Special Master directed be provided. Biotronik said that it would make this decision by 

December 4, 2015, which was the deadline for Biotronik to file any objections to the Special 

Master’s Order. Dkt. 53. Biotronik also asked the Court at this conference whether, if Biotronik 

decided simply to comply with the Special Master’s Order, the Court would be willing to keep 

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PAGE 4 – OPINION AND ORDER 

the Special Master’s Order, which reflects the Special Master’s analysis for why an exception to 

the attorney-client privilege was found, in camera and under seal. The Court said that it would. 

On December 4, 2015, Biotronik informed the Court and St. Jude that Biotronik would comply 

with the Special Master’s Order by providing the directed documents, with redactions approved 

by the Special Master, to St. Jude. Biotronik provided the documents to St. Jude, and St. Jude has 

reviewed them. St. Jude now moves the Court to obtain access to the Special Master’s Order.

DISCUSSION 

In its motion, St. Jude states: 

The documents produced pursuant to the Order, even in heavily 

redacted form, make clear that Ms. Janssen worked with her 

former lawyers in September 2014 to craft a false and misleading 

affidavit regarding her copying of St. Jude information and 

destruction of a thumb drive, in order to avoid having a temporary 

restraining order or preliminary injunction entered against her in 

the Texas litigation. They also expose false testimony that she has 

given since then. Due to the inconsistencies between the story she 

told her lawyers in the produced communications and in affidavits, 

interrogatory responses, and court testimony, Ms. Janssen’s 

conduct and credibility will continue to be a core issue in the 

underlying case. 

Dkt. 58, at 6 (emphasis added). Thus, St. Jude has no need to see the Special Master’s Order to

understand the basis for the Special Master’s conclusion directing that certain documents be 

produced. Instead, St. Jude argues that without knowing “what the Special Master decided –

either in favor of or against St. Jude – [it] cannot take steps to address these decisions with this 

Court or on appeal.”

St. Jude then explains its specific concern: 

 This is not a theoretical issue. It is apparent even from the 

heavily-redacted production that the scope of the Order presents 

significant questions. For example, the portions of these 

communications that are visible to St. Jude reveal that a European 

Biotronik executive, Christian Bluemel, participated in the 

communications with Ms. Janssen and her lawyers. (See Exhibit 1, 

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PAGE 5 – OPINION AND ORDER 

BI0-00024875 to BI0-00024891; Exhibit 2, BI0-00024894 to BI0-

00024900; Exhibit 3, BI0-00024901 to BI0-00024912.) Mr. 

Bluemel did not have an attorney-client relationship with those 

lawyers and his participation in the communications likely waived 

the privilege. Yet much of the production - including emails that 

Mr. Bluemel sent and received - is redacted. Without access to the 

Special Master’s Order, St. Jude cannot understand why Biotronik 

was permitted to make these redactions and lacks the information 

needed to challenge this and potentially other aspects of the 

Special Master’s decisions. 

Dkt. 58, at 6-7. St. Jude continues: 

 The redacted communications that Biotronik produced also 

show that a third party was involved in these discussions, waiving 

any claim of privilege. Specifically, Mr. Bluemel was copied on 

Ms. Janssen’s communications with her lawyers about the content 

of her first declaration and he participated in the decision to 

conceal the information about the July 1, 2014 Thumb Drive. 

(Exhibits 1-3.) Mr. Bluemel’s participation waives the privilege as 

to all of these communications, many of which Biotronik has 

nonetheless redacted. 

Dkt. 58, at 13. 

To the extent that St. Jude desires to press its argument before this Court that the fact that 

Mr. Bluemel was copied on communications between Ms. Janssen and her lawyers waives the 

attorney-client privilege on the entirety of those communications, St. Jude is welcome to do so 

and has leave of Court to present that argument. There is nothing, however, in the Special 

Master’s Order that addresses this issue. The Special Master accepted Biotronik’s argument 

based on a joint defense privilege, and the Special Master then devoted all of his analysis to 

waiver an exception applied to otherwise privileged communications, even assuming that the 

privilege had not been waived by disclosure to a third party. 

Moreover, any argument by St. Jude to this Court that the joint defense privilege does not 

apply will be consider de novo by this Court. Thus, there is no prejudice to St. Jude by not 

having access to the Special Master’s Order because Biotronik chose to comply with that Order, 

Case 3:15-mc-00099-SI Document 63 Filed 01/08/16 Page 5 of 6
PAGE 6 – OPINION AND ORDER 

rather than object. There simply is nothing else in that Order that is adverse to St. Jude, and St. 

Jude has a privilege log that it can use to support any further objections that Biotronik is 

improperly withholding documents. 

CONCLUSION 

St. Jude Medical S.C., Inc.’s Motion To Provide St. Jude A Copy Of The Special 

Master’s Ex Parte Order Requiring Production Of Documents And/Or To Unseal The Order 

(Dkt. 58) is DENIED. Now that St. Jude has a privilege log, St. Jude has leave to file with the 

Court within 14 days any specific objections that it may have arguing that Biotronik may have 

improperly redacted portions of a document or may have improperly withheld any document 

under the attorney-client privilege. Any such objections will be decided by the undersigned. 

Before St. Jude files any such objection, however, it must first confer in good faith with 

opposing counsel. See LR. 7-1. 

IT IS SO ORDERED.

DATED this 8th day of January, 2016. 

/s/ Michael H. Simon 

Michael H. Simon 

United States District Judge 

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