Intuitive Surgical Non-Compete Complaint Against Ethicon

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 1 of 17
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SINGER / BEA LLP

Adam Cashman (Bar. No. 255063)
acashman@singerbea.com
Doug Tilley (Bar No. 289421)
dtilley@singerbea.com
601 Montgomery Street, Suite 1950
San Francisco, California 94065
Telephone:
(415) 500-6080
Facsimile:
(415) 500-6080
Attorneys for Intuitive Surgical, Inc.
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UNITED STATES DISTRICT COURT FOR THE
NORTHERN COUNTY OF CALIFORNIA
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INTUITIVE SURGICAL, INC., a Delaware

corporation,
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Plaintiff,
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v.
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ETHICON US, LLC, a Texas limited liability

company,
Defendant.
CASE NO. 16-CV-4794

COMPLAINT FOR DECLARATORY
JUDGMENT, AND FOR MONETARY
AND EQUITABLE RELIEF FOR
INTENTIONAL INTERFERENCE WITH
EXISTING CONTRACTUAL
RELATIONS AND UNFAIR
COMPETITION
DEMAND FOR JURY TRIAL
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COMPLAINT FOR DECLARATORY JUDGMENT, AND FOR MONETARY AND EQUITABLE RELIEF FOR INTENTIONAL
INTERFERENCE WITH EXISTING CONTRACTUAL RELATIONS AND UNFAIR COMPETITION
CASE NO. 16-CV-4794
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For its complaint against Defendant Ethicon US LLC (Ethicon), Plaintiff Intuitive Surgical,
Inc. (Intuitive) hereby alleges as follows:
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NATURE OF THE ACTION

1.
This is an action for declaratory, monetary, and equitable relief to redress and enjoin
Ethicons unlawful efforts to prevent Intuitive, a California employer, from employing California
residents to render services in California to California-based clients, as authorized by California law.
This suit also seeks relief stemming from Ethicons efforts to compel Intuitives compliance with the
terms of an employment agreement between Ethicon and one of its former employees, P. Scott
Szesterniak (Mr. Szesterniak), and to surrender corporate property located in California for
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Ethicons inspection. Finally, in light of Ethicons theorywhich is invalid in California as a matter
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of lawthat Mr. Szesterniak inevitably will disclose to Intuitive any allegedly confidential
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information Ethicon contends Mr. Szesterniak possesses, this suit seeks a declaration that Intuitive
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has not misappropriated any purported Ethicon trade secret or other confidential information.
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2.
If left unchecked, Ethicons conduct will chill labor mobility and legitimate
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competition in California, which are among this States core public policies and enjoy robust legal
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protection under statute and common law. California has a paramount interest in ensuring that these
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fundamental state policies are not denigrated or evaded through litigation that, while initiated in other
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forums, necessarily affects the ability of California employers and employees to exercise their
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statutory and common law rights. Similarly, Intuitive has a strong interest in ensuring that its rights
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to employ its workforce and maintain the secrecy and sanctity of its corporate property are not
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circumvented through litigation that squarely targets those rights, albeit without directly naming
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Intuitive as a party (or even providing notice). All of these concerns are implicated by Ethicons
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conduct as set forth below.
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PARTIES
3.
Intuitive is a corporation organized and existing under the laws of the State of
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Delaware, with its principal place of business in Sunnyvale, California. Intuitive is the global leader
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in the rapidly emerging field of robotic-assisted minimally invasive surgery. Since its inception,
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-1COMPLAINT FOR DECLARATORY JUDGMENT, AND FOR MONETARY AND EQUITABLE RELIEF FOR INTENTIONAL INTERFERENCE
WITH EXISTING CONTRACTUAL RELATIONS AND UNFAIR COMPETITION
CASE NO. 16-CV-4794
Intuitive has provided surgeons and hospitals with the tools needed to improve clinical outcomes and
to help patients return to active and productive lives as quickly and safely as possible. Intuitives
flagship product is the da Vinci Surgical System, which consists of a surgeons console, a patient-side
cart with interactive robotic arms, a high-performance vision system, and proprietary EndoWrist
Instruments. Through the use of state-of-the-art robotic technology, the surgeons hand movements
are scaled, filtered, and translated into precise movements of the EndoWrist Instruments. The da
Vinci Surgical System is the only commercially available technology that can provide a surgeon with
the control, range of motion, fine tissue manipulation capability, and 3-D visualization characteristic
of open surgery, while simultaneously allowing the surgeon to work through tiny incisions typical of
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minimally invasive surgery.

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Upon information and belief, Defendant Ethicon is a limited liability company
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organized and existing under the laws of the State of Texas, with its principal place of business in
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Cincinnati, Ohio. Upon information and belief, Ethicons business focuses on the manufacture and
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sale of less advanced medical devices, such as for use in traditional open surgery and non-robotic
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laparoscopic procedures.
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Nonparty P. Scott Szesterniak is an individual formerly employed by Ethicon in
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California, and presently employed by Intuitive in California as a Clinical Sales Representative.
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Upon information and belief, at all relevant times, including during his previous employment with
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Ethicon and his current employment with Intuitive, Mr. Szesterniak has resided and continues to
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reside in Redondo Beach, California. Moreover, upon information and belief, at all relevant times,
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including during his previous employment with Ethicon and his current employment with Intuitive,
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Mr. Szesterniaks professional duties related principally, if not exclusively, to promoting medical
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equipment for sale to and use by healthcare providers in and around Los Angeles, California.
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JURISDICTION AND VENUE

6.
This action arises under the Declaratory Judgment Act, 28 U.S.C. 2201; the Defend
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Trade Secrets Act, 18 U.S.C. 1836, et seq.; and under the statutory and common law of the State of
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California.
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CASE NO. 16-CV-4794
7.
This Court has subject matter jurisdiction under 28 U.S.C. 1331, 1332(a), and
2201(a). The jurisdictional amount in controversy is satisfied because Ethicon seeks to deprive
Intuitive indefinitely of the ability to employ Mr. Szesterniak. The value of Mr. Szesterniaks
services to Intuitive substantially exceeds $75,000 on an annual basis. In addition, Ethicon seeks to
take control of the computer Intuitive issued to Mr. Szesterniak at the outset of his employment, so
that Ethicon may access and inspect information belonging to Intuitive, including but not limited to
Intuitives intellectual property, the value of which also substantially exceeds $75,000. Finally, the
jurisdictional minimum is independently satisfied by virtue of the sales that are likely to be lost if Mr.
Szesterniak is enjoined from continuing his employment with Intuitive, the value of which
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significantly exceeds $75,000.

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This Court has personal jurisdiction over Intuitive because Intuitive maintains its
principal place of business within this State and this District.

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This Court has personal jurisdiction over Ethicon because, upon information and
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belief, Ethicon employs staff in, actively sells to and/or solicits customers in, and/or otherwise
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regularly transacts business within this State and this District.
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10.
Venue is proper in this District under 28 U.S.C. 1391(b) and (c), because a
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substantial part of the events giving rise to Intuitives claims occurred in this District, and because
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Ethicon is subject to personal jurisdiction here.
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INTRADISTRICT ASSIGNMENT
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For purposes of Civil L.R. 3-2(c) and 3-5(b), Intuitive respectfully submits that this
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action should be assigned to the San Jose Division of this Court because a substantial part of the
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events or omissions which give rise to Intuitives claims occurred in Santa Clara county.
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FACTUAL ALLEGATIONS
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Upon information and belief, including based on prior dealings between the parties,
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Ethicon has a pattern and practice of misusing its employment agreements and the judicial system to
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prevent Intuitive from employing former Ethicon personnel under any circumstance, in direct
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CASE NO. 16-CV-4794
violation of fundamental California public policy favoring labor mobility and conferring upon
California residents and employers the right to pursue their chosen professions and businesses.
13.
Upon information and belief, Ethicon requires all or virtually all of its employees to
sign an Employee Secrecy, Non-Competition and Non-Solicitation Agreement (the Non-Compete
Agreement)including those who live and work exclusively in jurisdictions, such as California,
whose laws specifically void such efforts to restrict labor mobility and trample individuals right to
work.
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Upon information and belief, including based on prior litigation between the parties as
well as materials that Ethicon has put in the public domain, Ethicons standard Non-Compete
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Agreements purport to impose a number of unfair, invalid, and unenforceable restrictive covenants.
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Generally speaking, these include the following:
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Prohibiting the employee from working for a competitorbroadly defined as any

company which is presently engaged, or may in the future engage, in the research,
development, and/or commercialization of any offering which resembles any existing or
potential future offering of Ethicon or its unnamed corporate affiliatesin the same area
in which the employee previously worked for Ethicon, serviced any customer of Ethicon
or any of its corporate affiliates, or derived any commission or other compensation, for a
period of 18 months following termination;
Prohibiting the employee from contacting or calling on any prior customer or client of
Ethicon or any of its corporate affiliates for a period of 18 months post-termination; and
Requiring that the employee, prior to leaving his or her position at Ethicon and at any time
during the 18 months post-termination, provide detailed information to Ethicon regarding
the name of his or her new employer, the new position the employee will assume, the
employees anticipated responsibilities, the products or services to which the new
employment relates, where and to whom the employee may promote those products, and
the like.
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15.
Even as certain provisions of its Non-Compete Agreements recognize (as they must)
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that they are unenforceable as to employees who live and work in California, in order to unfairly limit
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Intuitives access to the candidate pool (and in direct violation of settled California law), Ethicon
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regularly brings litigation against former employees who (a) lived and worked principally, if not
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exclusively, in California during their tenures with Ethicon, and (b) have since been hired by Intuitive
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to render services principally, if not exclusively, in California.
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CASE NO. 16-CV-4794
16.
Ethicon employs a number of prejudicial, unethical, and underhanded tactics in
furtherance of its efforts to so misuse the Courts to unlawfully chill labor mobility and thereby stifle
Intuitives legitimate efforts to compete in California. For example:
Ethicon files suit in Ohio and other venues thousands of miles from where its former
employees lived and worked in California, despite that neither Ethicon nor its former
employees ever agreed to submit to litigation in such fora.
Ethicon asserts claims under the laws of Ohio and other non-California jurisdictions,
despite that its former employees never lived or worked in such jurisdictions or agreed to
abide by their laws. These claims frequently include nebulous allegations of
misappropriation of unspecified alleged trade secrets, based on theories, such as the
inevitable disclosure doctrine, that California law specifically rejects.
Although it typically does not name Intuitive (or other employers) as a defendant or
provide notice of these proceedings, Ethicon seeks relief that directly interferes with
Intuitives commercial operations, including by demanding that these foreign courts enter
foreign law injunctions prohibiting California residents from rendering services to
Intuitive in California, and/or directing that the employees in question deliver to Ethicon
computers, electronic devices, and other Intuitive-issued resources containing proprietary
Intuitive information.
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In other words, even as its Non-Compete Agreements concede that the restrictions set
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forth therein cannot operate to keep California residents from choosing to work for other California
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companies, Ethicon performs intricate legal gymnastics to do just that.
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The foregoing is precisely what has happened with Mr. Szesterniak.
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Effective on or about July 25, 2016, Intuitive hired Mr. Szesterniak as a Clinical Sales
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Representative to promote Intuitives products in the greater Los Angeles area.

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Prior to joining Intuitive, Mr. Szesterniak worked for Ethicon as a sales representative
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and promoted Ethicons hernia, bariatric, and thoracic products. Upon information and belief, during
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the entirety of Mr. Szesterniaks tenure at Ethicon, he lived in California and called upon clients and
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accounts located exclusively in California.
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During his employment with Ethicon, on or about May 4, 2016, Mr. Szesterniak
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executed a form Ethicon EMPLOYEE SECRECY, INTELLECTUAL PROPERTY, NON-
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COMPETITION AND NON-SOLICITATION AGREEMENT. That Agreement contained the
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restrictive covenants and obligations summarized above.
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CASE NO. 16-CV-4794
22.
During the interview and onboarding process, Intuitive admonished Mr. Szesterniak
not to bring to Intuitive or use on Intuitives behalf any trade secret, confidential, or other information
or material arguably belonging to Ethicon, and to instead return all such information and material to
Ethicon. Mr. Szesterniak acknowledged that he understood Intuitives admonition, and certified his
compliance with the foregoing.
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Upon information and belief, on or about July 14, 2016, Mr. Szesterniak notified
Ethicon that he would be leaving Ethicon to join Intuitive as a Clinical Sales Representative for the
Los Angeles area. Upon information and belief, Mr. Szesterniak further advised Ethicon that he
would not call upon any of the accounts or customers with whom he interacted on Ethicons behalf in
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the 18 months preceding his separation from Ethicon.

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Upon information and belief, Ethicon did not object or express any concerns regarding
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Mr. Szesterniaks stated intention. To the contrary, Ethicon thanked him for his service and wished
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him well.
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On August 3, 2016nearly three weeks after Mr. Szesterniak tendered notice to
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Ethicon, and without any warning or effort at out of court resolutionEthicon filed suit against Mr.
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Szesterniak in the Court of Common Pleas in Hamilton County, Ohio (Case No. A1604358, the
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Ohio Action).
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Ethicons Ohio Action asserts claims for breach of contract and misappropriation of
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trade secrets, and seeks injunctive and monetary relief under New Jersey and Ohio law. However,
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the claims alleged have little or no connection to the laws of those states, which appear to have been
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invoked specifically for the purpose of evading California law. For example:
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The contract at issue says nothing about an Ohio venue, and Ethicons complaint fails to
allege a single bad act that occurred in Ohio rather than California;
Although it alleges that Mr. Szesterniak at all times lived and serviced customers
exclusively in California, and that the alleged conduct in issue occurred entirely in
California, Ethicon has pleaded a trade secret misappropriation claim that is based on
Ohio law;
Ethicons misappropriation claim is based entirely on the inevitable disclosure doctrine

that California courts have long rejected. For example, Ethicon alleges that [i]t is
inconceivable that [Mr. Szesterniak] could fulfill [any role at Intuitive] without inevitably
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CASE NO. 16-CV-4794
utilizing Ethicons confidential and trade secret information[,] which Ethicon goes on to
speculate would give Intuitive a significant and unfair competitive advantage in a highly
competitive market.
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Despite that Ethicon declined to name Intuitive as a party, Ethicon seeks an injunction
(i) prohibiting Szesterniak from working for Intuitive Surgical, Inc., in violation of the
non-competition provisions of his Employee Secrecy, Intellectual Property, NonCompetition and Non-Solicitation Agreements; and (ii) [r]equiring that Szesterniak
submit for inspection . any computer used by him on behalf of Intuitive[,] among other
relief.
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Ethicons counsel sent a copy of Ethicons August 3, 2016 Ohio Complaint to
Intuitive by Federal Express on August 8. Intuitive is unaware of whether or when Ethicon served or
otherwise notified Mr. Szesterniak of the Ohio Action.
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Ethicons August 8 transmission letterwhich Intuitive received in the afternoon on
August 9asserted vague and inaccurate claims regarding Mr. Szesterniak; threatened expensive
and protracted litigation activity[;] and demanded that Intuitive let [counsel] know by close of
business Wednesday, August 10, 2016 whether Szesterniak and Intuitive will agree to deliver the
materials sought in the Complaint, presumably including all devices issued by Intuitive to Mr.
Szesterniak.
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Intuitive has neither requested nor received from Mr. Szesterniak any allegedly
confidential or trade secret Ethicon information. In fact, as set forth above, Intuitive instructed Mr.
Szesterniak to return all Ethicon information to Ethicon, to refrain from disseminating any such
information to any Intuitive personnel or utilizing the same for Intuitives benefit, and to certify
compliance with the foregoing, which Mr. Szesterniak did.
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In addition, Intuitive has taken extensive measures to ensure that any information or
materials arguably belonging to Ethicon were removed from Mr. Szesterniaks possession and
sequestered or destroyed, so that there would be no chance that such information could even
inadvertently reach Intuitive. For example, upon receipt of Ethicons August 8 letter, Intuitive
retained outside counsel to take possession of all devices issued by Intuitive to Mr. Szesterniak as
well as Mr. Szesterniaks personal email accounts, Google Drive account, smartphone, laptop
computer, and other devices potentially implicated by Ethicons nebulous claims; create forensic
images of the foregoing; and identify and purge any information or materials belonging to Ethicon.
CASE NO. 16-CV-4794
31.
Ethicons August 8 letter withheld from Intuitive (and, upon information and belief,
from Mr. Szesterniak) that Ethicon had filed a motion for a temporary restraining order and noticed a
hearing for August 11, 2016.1 The proposed restraining order sought a number of categories of
equitable relief, including (i) an order prohibiting Mr. Szesterniak from working for Intuitive
indefinitely; and (ii) an order directing the delivery to Ethicon of the Intuitive-issued computer Mr.
Szesterniak has been using since his hire in July.
32.
Regardless of how the pending motions in Ohio are ultimately resolved, a declaration
of the rights of Intuitive and Ethicon is necessary, including with respect to which jurisdictions
substantive law governs Intuitives right to hire and employ Mr. Szesterniak, a California resident, to
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render services in California in light of claimed misconduct that is alleged to have occurred
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exclusively in California.
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Ethicons conduct, including its demands that foreign courts apply foreign law to bar
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Mr. Szesterniak from working for Intuitive, threatens Intuitives abilities to conduct its business and
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to attract and hire employees in California. Ethicons demand that Mr. Szesterniak deliver to it
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Intuitives California-based property also clearly implicates Intuitives rights and threatens its ability
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to maintain the integrity of its computer networks and, potentially, the security of its intellectual
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property. Given Ethicons past and current aggressive policing of the restrictive covenants contained
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in its standardized employment agreement, it is assured that this scenario will continue to be repeated
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unless and until curtailed by judicial order.
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As a California-based company employing a California resident to call upon
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California customers, Intuitive has the right to have its relationship with Mr. Szesterniak evaluated
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under California law. That is so even though Ethicon has not named Intuitive as a party to the Ohio
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Action. Ethicon plainly seeks relief that affects a number of Intuitives rightsincluding its rights
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On the noticed date, the Ohio court continued the TRO hearing to a future date.
Mr. Szesterniak has since moved to dismiss the complaint for lack of personal jurisdiction, on forum
non conveniens grounds, and on the ground that Ethicon was not registered to do business in Ohio
when it brought suit in the Ohio court. Ethicon did not file an opposition to Mr. Szesterniaks motion
to dismiss by the deadline set by the Ohio court and, as of the date of filing, still has not opposed Mr.
Szesterniaks motion. As of the date of this filing, the Ohio Court had not ruled on Ethicons
application for a TRO or Mr. Szesterniaks motion to dismiss.
CASE NO. 16-CV-4794
and interests as a California employer, its right to pursue its business and client relationships in
California free from interference, its right to control access to its physical and intellectual property,
and othersbased on claims made against a California resident relating to acts and omissions that are
alleged to have occurred exclusively in California.
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Absent a declaration that California law governs Mr. Szesterniaks employment with
Intuitive, including as it relates to Mr. Szesterniaks obligations to Ethicon and Ethicons ability to
affect and interfere with Mr. Szesterniaks relationship with Intuitive, Ethicon will remain free to
violate Intuitive and its employees rights under California law.
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FIRST CAUSE OF ACTION: DECLARATION THAT INTUITIVES EFFORTS TO

EMPLOY PERSONNEL IN CALIFORNIA BE EVALUATED BY CALIFORNIA LAW
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Intuitive re-alleges and incorporates by reference the above paragraphs of this
Complaint as though fully set forth herein.

37.
Ethicon has brought suit against Mr. Szesterniaka California resident who worked
for Ethicon in California and has since been hired by Intuitive, a California-based company, to
service customers within Californiain Ohio, a forum in which neither Intuitive nor Mr. Szesterniak
ever agreed to litigate, under laws bearing no nexus to either Intuitives employment of Mr.
Szesterniak or to Mr. Szesterniaks claimed misconduct, all of which is alleged to have occurred
(and/or is speculated to possibly occur in the future) exclusively within California.
38.
The claims at issue in Ethicons Ohio Actiontrade secrets misappropriation stated
exclusively under a theory of inevitable disclosure, and enforcement of restrictive covenants on that
basis or otherwiseare directly contrary to settled California law.
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Ethicons Ohio complaint seeks relief that will directly and substantially interfere with
Intuitives ability to employ California residents to render services in California as authorized by

California law. Among other relief, Ethicon seeks injunctions, under Ohio law, prohibiting Intuitive
from continuing to employ Mr. Szesterniak in California, and requiring Mr. Szesterniak to grant
Ethicon access to Intuitives devices located in California and the proprietary Intuitive information
contained therein.
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CASE NO. 16-CV-4794
40.
Intuitive respectfully submits that, as a California employer, and in the absence of
some contrary agreement by Intuitive, the laws of the State of California govern Intuitives ability to
employ California residents to render services in California. Intuitive further respectfully submits
that Ethicon (who itself employed Mr. Szesterniak in California) may not interfere with Intuitives
California business activities or relationships by invoking foreign laws to which neither Intuitive nor
Mr. Szesterniak agreed, which bear no connection to the alleged conduct over which Ethicon purports
to prohibit Intuitives ability to hire and employ Mr. Szesterniak in California, and which are in fact
directly contrary to established principles of California law and policy.
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A substantial, immediate, and real controversy therefore exists between Intuitive and
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Ethicon regarding whether Intuitive may continue to employ Mr. Szesterniak, who has at all times
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(including during his tenure with Ethicon) been a California resident, to render services to Intuitive in
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California. A judicial declaration is necessary to determine the parties respective rights.
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Intuitive seeks a judgment declaring that it may continue to employ Mr. Szesterniak in
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accordance with California law and, to the extent Ethicon maintains that Mr. Szesterniaks alleged
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California conduct prohibits Intuitive from employing him in California, that Mr. Szesterniaks
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alleged actions be evaluated under California substantive law.
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SECOND CAUSE OF ACTION: DECLARATION OF NO MISAPPROPRIATION OF

TRADE SECRETS UNDER CALIFORNIA LAW
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44.
In its Ohio Action, Ethicon alleges that [i]t is inconceivable that [Mr. Szesterniak]
could fulfill [any role at Intuitive] without inevitably utilizing Ethicons confidential and trade secret
information. Ethicon goes on to speculate that such inevitable disclosure would give Intuitive a
significant and unfair competitive advantage in a highly competitive market. In other words, even
as it declines to name Intuitive (a tacit admission that it has no evidence that any of its unspecified
trade secrets or other confidential information have reached or actually will reach Intuitive), Ethicon
contends that Intuitive may at some point misappropriate alleged Ethicon intellectual property.
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CASE NO. 16-CV-4794
45.
Ethicon is wrong on the law: it is well-settled that California does not recognize
misappropriation by inevitable disclosure. Tellingly, Ethicon does not and cannot allege that
Intuitive had any contact with, or otherwise engaged in any conduct relevant to, Mr. Szesterniak
outside of California.
46.
Ethicon is also wrong on the facts: Intuitive has neither requested nor received from
Mr. Szesterniak any allegedly confidential or trade secret Ethicon information. To the contrary, as
set forth above, Intuitive required, as a condition of its offer to employ Mr. Szesterniak, that Mr.
Szesterniak return all Ethicon information to Ethicon, not disseminate any such information to any
Intuitive personnel or leverage the same for Intuitives benefit, and certify compliance with the
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foregoing, which Mr. Szesterniak did.
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In addition, Intuitive took extensive measures to ensure that any information or
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sequestered or destroyed, such that there would be no chance that such information could even
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In light of Ethicons allegations and its request that the Ohio court enter an injunction
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to prohibit Intuitive from employing Mr. Szesterniak solely on the basis of Ethicons inevitable
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disclosure theory, a substantial, immediate, and real controversy exists between Intuitive and Ethicon
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regarding whether Intuitive has misappropriated any purported Ethicon trade secret or other
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confidential information. A judicial declaration is necessary to determine the parties respective
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rights.
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Intuitive seeks a judgment declaring that Intuitive did not misappropriate any alleged
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Ethicon trade secret in connection with hiring and employing Mr. Szesterniak, within the meaning of
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applicable California law.
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CASE NO. 16-CV-4794
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THIRD CAUSE OF ACTION: DECLARATION OF NO MISAPPROPRIATION OF TRADE

SECRETS UNDER FEDERAL DEFEND TRADE SECRETS ACT
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51.
In its Ohio Action, Ethicon alleges that [i]t is inconceivable that [Mr. Szesterniak]
could fulfill [any role at Intuitive] without inevitably utilizing Ethicons confidential and trade secret
information. Ethicon goes on to speculate that such inevitable disclosure would give Intuitive a
significant and unfair competitive advantage in a highly competitive market. In other words, even
as it declines to name Intuitive (a tacit admission that it has no evidence that any of its unspecified
trade secrets or other confidential information have reached or actually will reach Intuitive), Ethicon
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contends that Intuitive may at some point misappropriate alleged Ethicon intellectual property.
52.
Ethicon is wrong on the law: the federal Defend Trade Secrets Act does not recognize
misappropriation by inevitable disclosure.

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Ethicon is also wrong on the facts: Intuitive has neither requested nor received from
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Mr. Szesterniak any allegedly confidential or trade secret Ethicon information. To the contrary, as
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set forth above, Intuitive required, as a condition of its offer to employ Mr. Szesterniak, that Mr.
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Szesterniak return all Ethicon information to Ethicon, not disseminate any such information to any
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Intuitive personnel or leverage the same for Intuitives benefit, and certify compliance with the
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foregoing, which Mr. Szesterniak did.
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In addition, Intuitive took extensive measures to ensure that any information or
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sequestered or destroyed, such that there would be no chance that such information could even
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CASE NO. 16-CV-4794
55.
In light of Ethicons allegations and its request that the Ohio court enter an injunction
to prohibit Intuitive from employing Mr. Szesterniak solely on the basis of Ethicons inevitable
disclosure theory, a substantial, immediate, and real controversy exists between Intuitive and Ethicon
regarding whether Intuitive has misappropriated any purported Ethicon trade secret or other
confidential information. A judicial declaration is necessary to determine the parties respective
rights.
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Intuitive seeks a judgment declaring that Intuitive did not misappropriate any alleged
Ethicon trade secret in connection with hiring and employing Mr. Szesterniak, within the meaning of
applicable federal law.
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FOURTH CAUSE OF ACTION: INTENTIONAL INTERFERENCE WITH EXISTING

CONTRACTUAL RELATIONS
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58.
Effective on or about July 25, 2016, Intuitive, a California employer, and Mr.
Szesterniak, at all times a California resident, entered into a contract pursuant to which Intuitive
would employ Mr. Szesterniak, and Mr. Szesterniak would render services to Intuitive, in California.
59.
Ethicon learned of the Intuitive-Szesterniak agreement at least as early as July 14,
2016, when Mr. Szesterniak tendered his resignation to Ethicon in Los Angeles, California and stated
his intent to join Intuitives Los Angeles workforce.
60.
With knowledge of that contract and with intent to disrupt performance of the same,
Ethicon took steps specifically designed to prevent performance of the Intuitive-Szesterniak contract
and/or make such performance more expensive or difficult. For example, even as Ethicon concedes
that Mr. Szesterniak at all times resided exclusively in California, that Ethicon employed Mr.
Szesterniak to call upon its customers exclusively in California, and that Intuitive has since hired Mr.
Szesterniak to render services exclusively in California, Ethicon brought suit in a non-California
court (in which Mr. Szesterniak, let alone Intuitive, never agreed to litigate with Ethicon), asserting
claims under foreign laws that are contrary to California law. Ethicons foreign action seeks
28
CASE NO. 16-CV-4794
injunctive relief which, if granted, would harm Intuitive exclusively in California, such as by
prohibiting Szesterniak from working for Intuitive Surgical, Inc. in California.
61.
As a direct and proximate result of Ethicons actions to disrupt performance of the
Intuitive-Szesterniak Agreement, Intuitive has been harmed. Among other injuries, Intuitive has had
to restrict Mr. Szesterniak from interacting with customers on Intuitives behalf, as well as incur the
substantial burden and expense of investigating Ethicons allegations.
62.
Ethicons conduct was a substantial factor in causing such harm.
63.
Ethicons conduct was willful and/or malicious, and/or manifested a knowing and
9
10
reckless indifference to Intuitives rights, thereby entitling Intuitive to an award of exemplary

damages.
11
FIFTH CAUSE OF ACTION: UNFAIR COMPETITION
12
(Cal. Bus. & Prof. Code 17200 et seq.)

64.
13
14

65.
15
By seeking to prohibit Intuitive, a California-based company, from employing a
16
California resident to render services in California on the force of alleged conduct that occurred
17
exclusively in California on theories contrary to California law and fundamental public policy,
18
Ethicon has engaged, and continues to engage, in unfair and unlawful trade practices as set forth
19
herein.
20
66.
Ethicon engaged in these unfair practices to undermine Intuitives ability to attract
21
and employ California professionals and thus Intuitives ability to effectively market its offerings in
22
the California marketplace, in order to increase Ethicons own gain.
23
67.
The acts at issue in this Complaint all occurred within four years preceding the filing
24
of this Complaint.
25
68.
Ethicon has thus engaged in unlawful trade practices, as defined in and prohibited by
26
California Business and Professions Code Section 17200, et seq. Intuitive, Californias labor pool,
27
and the public at large have been injured as a result.
28
CASE NO. 16-CV-4794
69.
As a direct and proximate result of such actions, Intuitive has suffered and continues
to suffer injury in fact and has lost money and/or property as a result of such unlawful trade practices
and unfair competition in an amount to be proven at trial.
70.
As a direct and proximate result of such actions, Ethicon has unlawfully enjoyed, and,
unless judgment is entered in Intuitives favor, will continue to unlawfully enjoy financial gain in an
amount to be proven at trial. This unlawful gain stems, at least in part, from the unfair competitive
advantage in attracting and/or retaining California professionals, and thus in promoting its products
in the California marketplace, that Ethicon has achieved through the conduct set forth herein.
9
10
11
12
13
71.
Intuitive is entitled to and does seek a declaration that the above-described trade
practices are unfair, unlawful, and/or fraudulent.

72.
Intuitive is further entitled to and does seek restitution of all monetary harms it
incurred as a result of Ethicons unlawful conduct.

73.
Intuitive is further entitled to and does seek an injunction prohibiting Ethicon from
14
challenging in any foreign court or under foreign law Intuitives ability to hire Mr. Szesterniak, a
15
California resident, to render services to Intuitive in California, on the basis of claimed conduct that
16
allegedly occurred in California.
17
18
PRAYER FOR RELIEF

WHEREFORE, Intuitive respectfully prays for relief as follows:
19
(a)
That the Court enter judgment in Intuitives favor on each cause of action;
20
(b)
That the Court declare that Intuitives right and ability to hire and employ Mr.
21
Szesterniak, a California resident, to render services to Intuitive in California
22
be evaluated under California law;
23
(c)
That the Court declare that Intuitive has not, under California law,
24
misappropriated any alleged Ethicon trade secret in connection with hiring and
25
employing Mr. Szesterniak;
26
27
28
CASE NO. 16-CV-4794
(d)
That the Court declare that Intuitive has not, under federal law,
misappropriated any alleged Ethicon trade secret in connection with hiring and
employing Mr. Szesterniak;
(e)
That the Court award Intuitive compensatory and restitutionary damages in an

amount according to proof;
(f)
That the Court award Intuitive exemplary and punitive damages;
(g)
That the Court award Intuitive its costs of suit and attorneys fees pursuant to
8
9
applicable statute;
(h)
10
11
That the Court award Intuitive pre-judgment and post-judgment interest at the
maximum legal rate; and
(i)
That the Court issue such other and further relief as it deems just and proper.
12
13
DEMAND FOR JURY TRIAL

Intuitive hereby demands a trial by jury as to all issues so triable in this action.
14
15
Date: August 19, 2016
Respectfully Submitted,
16
SINGER / BEA LLP
17
By:__ _____________________________
Adam S. Cashman
Doug Tilley
Attorneys for Intuitive Surgical, Inc.
18
19
20
21
22
23
24
25
26
27
28
CASE NO. 16-CV-4794
Case 5:16-cv-04794-NC Document 1-1 Filed 08/19/16 Page 1 of 2
CIVIL COVER SHEET
OJS 44 (Rev. 11/04)
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided
by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating
the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
I. (a) PLAINTIFFS
Intuitive Surgical, Inc.
DEFENDANTS
Ethicon US, LLC
(b) County of Residence of First Listed Plaintiff
Santa Clara, CA
County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES)
Hamilton, OH
(IN U.S. PLAINTIFF CASES ONLY)

NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
LAND INVOLVED.
Attorneys (If Known)

(c) Attorneys (Firm Name, Address, and Telephone Number)
Singer / Bea LLP
601 Montgomery Street, Suite 1950, San Francisco, CA (415) 500-6080
II. BASIS OF JURISDICTION (Place an X in One Box Only)
III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an X in One Box for Plaintiff
U.S. Government
Plaintiff
3 Federal Question
U.S. Government
Defendant
4 Diversity
(U.S. Government Not a Party)
CONTRACT
110 Insurance
120 Marine
130 Miller Act
140 Negotiable Instrument
150 Recovery of Overpayment
& Enforcement of Judgment
151 Medicare Act
152 Recovery of Defaulted
Student Loans
(Excl. Veterans)
153 Recovery of Overpayment
of Veterans Benefits
160 Stockholders Suits
190 Other Contract
195 Contract Product Liability
196 Franchise
REAL PROPERTY
210 Land Condemnation
220 Foreclosure
230 Rent Lease & Ejectment
240 Torts to Land
245 Tort Product Liability
290 All Other Real Property
(Place an X in One Box Only)

TORTS
V. ORIGIN
1
Original
Proceeding
DEF
1
Citizen of Another State
Incorporated and Principal Place

of Business In Another State
Citizen or Subject of a
Foreign Country
Foreign Nation
(Indicate Citizenship of Parties in Item III)
IV. NATURE OF SUIT
(For Diversity Cases Only)

PTF
Citizen of This State
1
PERSONAL INJURY
310 Airplane
315 Airplane Product
Liability
320 Assault, Libel &
Slander
330 Federal Employers
Liability
340 Marine
345 Marine Product
Liability
350 Motor Vehicle
355 Motor Vehicle
Product Liability
360 Other Personal
Injury
CIVIL RIGHTS
441 Voting
442 Employment
443 Housing/
Accommodations
444 Welfare
445 Amer. w/Disabilities Employment
446 Amer. w/Disabilities Other
440 Other Civil Rights
FORFEITURE/PENALTY
PERSONAL INJURY
362 Personal Injury Med. Malpractice
365 Personal Injury Product Liability
368 Asbestos Personal
Injury Product
Liability
PERSONAL PROPERTY
370 Other Fraud
371 Truth in Lending
380 Other Personal
Property Damage
385 Property Damage
Product Liability
PRISONER PETITIONS
510 Motions to Vacate
Sentence
Habeas Corpus:
530 General
535 Death Penalty
540 Mandamus & Other
550 Civil Rights
555 Prison Condition
(Place an X in One Box Only)
610 Agriculture
620 Other Food & Drug
625 Drug Related Seizure
of Property 21 USC 881

630 Liquor Laws
640 R.R. & Truck
650 Airline Regs.
660 Occupational
Safety/Health
690 Other
LABOR
710 Fair Labor Standards
Act
720 Labor/Mgmt. Relations
730 Labor/Mgmt.Reporting
& Disclosure Act
740 Railway Labor Act
790 Other Labor Litigation
791 Empl. Ret. Inc.
Security Act
and One Box for Defendant)

PTF
DEF
Incorporated or Principal Place
4 4
of Business In This State
BANKRUPTCY
422 Appeal 28 USC 158

423 Withdrawal
28 USC 157
PROPERTY RIGHTS
820 Copyrights
830 Patent
840 Trademark
SOCIAL SECURITY
861 HIA (1395ff)
862 Black Lung (923)
863 DIWC/DIWW (405(g))
864 SSID Title XVI
865 RSI (405(g))
FEDERAL TAX SUITS
870 Taxes (U.S. Plaintiff
or Defendant)
871 IRSThird Party
26 USC 7609
OTHER STATUTES
Transferred from
6 Multidistrict
another district
Removed from
Remanded from
Reinstated or
(specify)
State Court
Appellate Court
Reopened
Litigation
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
VI. CAUSE OF ACTION
400 State Reapportionment

410 Antitrust
430 Banks and Banking
450 Commerce
460 Deportation
470 Racketeer Influenced and
Corrupt Organizations
480 Consumer Credit
490 Cable/Sat TV
810 Selective Service
850 Securities/Commodities/
Exchange
875 Customer Challenge
12 USC 3410
890 Other Statutory Actions
891 Agricultural Acts
892 Economic Stabilization Act
893 Environmental Matters
894 Energy Allocation Act
895 Freedom of Information
Act
900Appeal of Fee Determination
Under Equal Access
to Justice
950 Constitutionality of
State Statutes
Appeal to District
Judge from
Magistrate
Judgment
28 USC 1331, 1332(a), 2201(a)
Brief description of cause:
Declaratory Judgment, Tortious Interference with Existing Contract, Unfair Competition

CHECK YES only if demanded in complaint:
DEMAND $
CHECK IF THIS IS A CLASS ACTION
VII. REQUESTED IN
UNDER F.R.C.P. 23
Yes
No
JURY DEMAND:
COMPLAINT:
VIII. RELATED CASE(S)
(See instructions):
JUDGE
DOCKET NUMBER
IF ANY
DATE
SIGNATURE OF ATTORNEY OF RECORD
/s/ Adam Cashman
08/19/2016
FOR OFFICE USE ONLY
RECEIPT #
AMOUNT
APPLYING IFP
JUDGE
MAG. JUDGE
JS 44 Reverse (Rev. 11/04)
Case 5:16-cv-04794-NC Document 1-1 Filed 08/19/16 Page 2 of 2
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44

Authority For Civil Cover Sheet
The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as required
by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use
of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of Court for each civil complaint
filed. The attorney filing a case should complete the form as follows:
I.
(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use only
the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then the official, giving
both name and title.
(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the time
of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land condemnation cases,
the county of residence of the defendant is the location of the tract of land involved.)
(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section (see attachment).
II.
Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.C.P., which requires that jurisdictions be shown in pleadings. Place an X in one
of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an X in this box.
Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the
Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes precedence, and box
1 or 2 should be marked.
Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of the
different parties must be checked. (See Section III below; federal question actions take precedence over diversity cases.)
III.
Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this section
for each principal party.
IV.
Nature of Suit. Place an X in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is sufficient
to enable the deputy clerk or the statistical clerks in the Administrative Office to determine the nature of suit. If the cause fits more than one nature of suit, select
the most definitive.
V.
Origin. Place an X in one of the seven boxes.
Original Proceedings. (1) Cases which originate in the United States district courts.
Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. When the petition
for removal is granted, check this box.
Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing date.
Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict
litigation transfers.
Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407. When this box
is checked, do not check (5) above.
Appeal to District Judge from Magistrate Judgment. (7) Check this box for an appeal from a magistrate judges decision.
VI.
Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional statutes
unless diversity.
Example:
U.S. Civil Statute: 47 USC 553
Brief Description: Unauthorized reception of cable service
VII.
Requested in Complaint. Class Action. Place an X in this box if you are filing a class action under Rule 23, F.R.Cv.P.
Demand. In this space enter the dollar amount (in thousands of dollars) being demanded or indicate other demand such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
VIII. Related Cases. This section of the JS 44 is used to reference related pending cases if any. If there are related pending cases, insert the docket numbers
and the corresponding judge names for such cases.
Date and Attorney Signature. Date and sign the civil cover sheet.

Intuitive Surgical Non-Compete Complaint Against Ethicon

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Intuitive Surgical Non-Compete Complaint Against Ethicon

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Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 1 of 17

SINGER / BEA LLP

UNITED STATES DISTRICT COURT FOR THE

NORTHERN COUNTY OF CALIFORNIA

INTUITIVE SURGICAL, INC., a Delaware

ETHICON US, LLC, a Texas limited liability

CASE NO. 16-CV-4794

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 2 of 17

NATURE OF THE ACTION

residents to render services in California to California-based clients, as authorized by California law.

Ethicons inspection. Finally, in light of Ethicons theorywhich is invalid in California as a matter

conduct as set forth below.

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 3 of 17

minimally invasive surgery.

Upon information and belief, Defendant Ethicon is a limited liability company

Nonparty P. Scott Szesterniak is an individual formerly employed by Ethicon in

California, and presently employed by Intuitive in California as a Clinical Sales Representative.

JURISDICTION AND VENUE

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 4 of 17

significantly exceeds $75,000.

principal place of business within this State and this District.

regularly transacts business within this State and this District.

Ethicon is subject to personal jurisdiction here.

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 5 of 17

sign an Employee Secrecy, Non-Competition and Non-Solicitation Agreement (the Non-Compete

Generally speaking, these include the following:

Prohibiting the employee from working for a competitorbroadly defined as any

to render services principally, if not exclusively, in California.

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 6 of 17

Ethicon employs a number of prejudicial, unethical, and underhanded tactics in

Intuitives legitimate efforts to compete in California. For example:

companies, Ethicon performs intricate legal gymnastics to do just that.

The foregoing is precisely what has happened with Mr. Szesterniak.

Representative to promote Intuitives products in the greater Los Angeles area.

accounts located exclusively in California.

executed a form Ethicon EMPLOYEE SECRECY, INTELLECTUAL PROPERTY, NON-

COMPETITION AND NON-SOLICITATION AGREEMENT. That Agreement contained the

restrictive covenants and obligations summarized above.

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 7 of 17

compliance with the foregoing.

the 18 months preceding his separation from Ethicon.

On August 3, 2016nearly three weeks after Mr. Szesterniak tendered notice to

Ethicons misappropriation claim is based entirely on the inevitable disclosure doctrine

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 8 of 17

Ethicons counsel sent a copy of Ethicons August 3, 2016 Ohio Complaint to

Ethicons August 8 transmission letterwhich Intuitive received in the afternoon on

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 9 of 17

Szesterniak has been using since his hire in July.

unless and until curtailed by judicial order.

As a California-based company employing a California resident to call upon

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 10 of 17

alleged to have occurred exclusively in California.

violate Intuitive and its employees rights under California law.

FIRST CAUSE OF ACTION: DECLARATION THAT INTUITIVES EFFORTS TO

Intuitive re-alleges and incorporates by reference the above paragraphs of this

Complaint as though fully set forth herein.

The claims at issue in Ethicons Ohio Actiontrade secrets misappropriation stated

Intuitives ability to employ California residents to render services in California as authorized by

Case 5:16-cv-04794-NC Document 1 Filed 08/19/16 Page 11 of 17

Intuitive respectfully submits that, as a California employer, and in the absence of

directly contrary to established principles of California law and policy.

California. A judicial declaration is necessary to determine the parties respective rights.

alleged actions be evaluated under California substantive law.

SECOND CAUSE OF ACTION: DECLARATION OF NO MISAPPROPRIATION OF