Decision Highlights Pitfalls of Ex Parte Witness Interviews

• Pages: 7-7
• Date: 01 January 2023
• Author: Katherine G. Vazquez
• Subject Matter: Civil Law

federal district court has held

that a corporation’s ex parte

interview of its opponent’s

ex-employee, while ques-

tionable, did not violate

ethical standards. In ICM Controls

Corp. v. Honeywell International, Inc.,

the court reasoned that although there

was a risk that the employee might

inadvertently disclose privileged infor-

mation, that risk was minimal under

the circumstances. In light of the deci-

sion, ABA Litigation Section leaders

recommend putting procedural safe-

guards in place to protect commu-

nications with an opponent’s former

employees.

ICM sued Honeywell for pat-

ent infringement in the U.S. District

Court for the Northern District of New

York. ICM’s current president, Andrew

Kadah, and one of its former employ-

ees, Andrew Nguyen, were co-inven-

tors at ICM in 1996 and 1997. Kadah

was not a lawyer, but he served as a

corporate “intermediary” between

ICM’s patent counsel and inventors. In

that capacity, he shared legal advice

with Nguyen during his tenure with

ICM. Nguyen left the company before

ICM applied for the patent in 1997.

Nevertheless, Kadah recalled conver-

sations with Nguyen regarding the

patentability of the invention at issue.

Counsel for Honeywell contacted

Nguyen in 2019, f‌irst conf‌irming that

Nguyen was not working with ICM in

the litigation and that he did not have

any conversations with patent counsel

about the application at issue. Thus, he

was not privy to any privileged infor-

mation related to the case. Nguyen

also told defense counsel that he had

limited recollection of his 1996 and

1997 conversations with Kadah related

to the patent. Honeywell’s lawyers

then proceeded with a more detailed

interview of Nguyen and retained

Nguyen as a consultant.

ICM f‌iled a letter motion objecting

to Honeywell’s ex parte communica-

Decision Highlights Pitfalls of Ex

Parte Witness Interviews

tions with Nguyen. ICM argued that it

had been deprived of the opportunity

to intervene to prevent Nguyen from

“inadvertently disclosing privileged

communications.”

Honeywell denied that defense

counsel elicited any privileged infor-

mation from Nguyen or breached

any applicable legal or ethical stan-

dards. Honeywell noted that ICM never

disclosed Nguyen as a person with

information relevant to ICM’s claims.

Moreover, Honeywell ensured its con-

tacts with Nguyen were consistent

with the ethical and legal standards

set forth in Muriel Siebert v. Intuit, a

New York Court of Appeals decision

that recognizes that ex parte com-

munications with an opposing party’s

former employee “may be appropriate

as long as counsel operates within cer-

tain boundaries and takes measures to

avoid disclosure of privileged or conf‌i-

dential information.”

At the direction of the court, both

parties made ex parte submissions

for in camera review. Kadah provided

an ex parte declaration recounting

his discussions with Nguyen at the

direction of patent counsel and for

the purpose of obtaining legal advice.

The exhibits attached to the declara-

tion also showed Kadah’s discussions

with patent counsel and, to a limited

extent, Nguyen, regarding the drafting

and editing of the patent application

at issue.

Honeywell’s counsel produced doc-

umentation of his communication with

Nguyen through an ex parte declara-

tion and interview notes that included

his mental impressions and theories

about the case.

While the court did not f‌ind that

defense counsel had violated any ethi-

cal or legal standards, it found that

“plaintis’ counsel [had] grounds for

their suspicions.” The court therefore

ordered disclosure of the consulting

agreements between defense counsel

and Nguyen and the documents that

ref‌lected defense counsel’s relation-

ship with Nguyen. In support, the court

found that “plaintis have a substantial

need for them in order to make their

own assessment of the propriety of

counsel’s contacts with Mr. Nguyen,”

and “counsel would not have other

means of obtaining this information.”

The court’s decision to review

the ex parte submissions made sense

“because of the unusual nature of the

communications,” explains Michael

D. Steger, New York, NY, cochair of

the Litigation Section’s Intellectual

Property Litigation Committee. “The

decision on whether there was imper-

missible work product would be fact

intensive, and the judge determined

that he needed to get to the bottom

of it,” Steger observes.

Section leaders suggest that prac-

titioners put into place procedural

safeguards when communicating with

an opponent’s former employees.

“Attorneys could start by looking at

the ABA Model Rules before starting

an investigation,” Steger advises.

Model Rule 4.2 “allows attorneys

to interview a former employee,” adds

John M. Barkett, Miami, FL, cochair of

the Section’s Ethics & Professionalism

Committee. “From the interviewer’s

perspective, attorney notes represent

work product,” he says. The question-

ing attorney should take care to “con-

f‌irm that the former employee is not

represented,” Barkett cautions. “The

former employee should be advised

that the attorney represents a party

adverse to the former employer, that

the former employee may seek coun-

sel, and that there should be no dis-

cussion of privileged or conf‌idential

information,” he advises. “Prudent

attorneys will document the use of this

script,” he adds.

By Katherine G. Vazquez, Litigation Ne ws Contributing Editor

WINTER 202 3 • VOL. 48 NO. 2

7 | A BA LITIGATION SECTION

ETHICS STRU GGLES IN THE LEGAL WORLD

Published in Litigation News Volume 48, Number 2, Winter 2023. © 2023 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or

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