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Litigation News

Litigation News | 2021

Decision Highlights Pitfalls of Ex Parte Witness Interviews

Katherine Vazquez


  • Court permits interview of opponent’s ex-employee but orders disclosure of communications.
  • The court reasoned that although there was a risk that the employee might inadvertently disclose privileged information, that risk was minimal under the circumstances. 
  • Section leaders recommend putting procedural safeguards in place to protect communications with an opponent’s former employees.
Decision Highlights Pitfalls of Ex Parte Witness Interviews
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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.

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.

ICM filed a letter motion objecting to Honeywell’s ex parte communications with Nguyen. ICM argued the communications were inappropriate because they “likely infringed on privileged communications.” ICM further 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 information from Nguyen or breached any applicable legal or ethical standards. Honeywell noted that ICM never disclosed Nguyen as a person with information relevant to ICM’s claims. Moreover, Honeywell ensured its contacts with Nguyen were consistent with the ethical and legal standards set forth in Muriel Siebert v. Intuit, a New York Court of Appeals decision which recognizes that ex parte communications with an opposing party’s former employee “may be appropriate as long as counsel operates within certain boundaries and takes measures to avoid disclosure of privileged or confidential information.”

Scope of Privilege over Investigation Materials

At the direction of the court, both parties made ex parte submissions for in camera review. Based on those submissions, the court would decide whether Nguyen’s communications with defense counsel reflected the improper disclosure of privileged or confidential communications.

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 declaration 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. The court held the declaration was protected by the attorney-client privilege and work-product privilege.

Honeywell’s counsel produced documentation of his communication with Nguyen through an ex parte declaration and interview notes that included his mental impressions and theories about the case. The court concluded these documents constituted protected work product.

While the court did not find that defense counsel violated any ethical or legal standards, it found that “plaintiffs’ counsel [had] grounds for their suspicions.” The court therefore ordered disclosure of the consulting agreements between defense counsel and Nguyen, and the documents which reflected defense counsel’s relationship with Nguyen. In support, the court found that “plaintiffs 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.”

Ethical Implications and Procedural Safeguards

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 Committee. “The decision on whether there was impermissible 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 practitioners 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 questioning attorney should take care to “confirm 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 counsel, and that there should be no discussion of privileged or confidential information,” he advises. “Prudent attorneys will document the use of this script,” he adds.