March 23, 2021 Top Story

Decision Highlights Pitfalls of Ex Parte Witness Interviews

Court permits interview of opponent’s ex-employee but orders disclosure of communications

By Katherine G. Vazquez

A federal district court has held that a corporation’s ex parte interview of its opponent’s ex-employee, while questionable, 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 information, that risk was minimal under the circumstances. In light of the decision, ABA Litigation Section leaders recommend putting procedural safeguards in place to protect communications with an opponent’s former employees.

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Meranna | iStockphoto by Getty Images

Ex Parte Interview Sparks Debate

ICM sued Honeywell for patent infringement in the U.S. District Court for the Northern District of New York. ICM’s current president, Andrew Kadah, and former employee, Andrew Nguyen, were co-inventors 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 conversations with Nguyen regarding patentability of the invention at issue.

Counsel for Honeywell contacted Nguyen in late 2019 for an interview. Prior to engaging in any substantive conversation with him, counsel confirmed that Nguyen was not working with ICM in the ongoing 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 information 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. Based on this information, Honeywell’s lawyers proceeded with a more detailed interview of Nguyen regarding ICM’s current theories and positions in the pending litigation. Honeywell also retained Nguyen as a consultant.

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