Under New York law, ex parte contact with an opposing party’s former employee – even a former employee privy to confidential or privileged information – may be appropriate as long as counsel operates within certain boundaries and takes measures to avoid disclosure of privileged or confidential information.
In this patent dispute, Andrew Nguyen was the co-inventor on the subject patent, along with Andrew Kadah, working together at the defendant company, ICM. Nguyen left ICM over 20 years ago, before it applied for the subject patent.
Kadah, who is now the President of ICM, testified that he regularly communicated with patent counsel and typically served as the “intermediary” with respect to co-inventors, obtaining information from them sought by patent counsel for the purpose of providing legal advice and sometimes sharing such advice with the co-inventors.
“Defense counsel describes the measures that he took, in contacting and communicating with Mr. Nguyen in late 2019, to satisfy himself that the former ICM employee was not working with the plaintiffs in connection with the ongoing litigation and was not privy to privileged information. Mr. Nguyen had limited recollection of his communications with Mr. Kadah in 1996 and 1997 relating to the ‘645 patent and denied having any conversations with patent counsel or the Kadahs4 about the patent application. Based on those assurances, Mr. Woods contends that he was justified in proceeding with a more detailed interview of Mr. Nguyen regarding ICM’s current theories and positions in the pending litigation with respect to the ‘645 patent and prior art.”
Based on those efforts, the court concluded that Mr. Wood “took reasonable steps to ensure that he did not elicit privileged information from Mr. Nguyen. The circumstance that Mr. Woods perhaps did not anticipate was Andrew Kadah’s purported practice of serving as an intermediary between ICM’s patent counsel and any co-inventors of products for which ICM was seeking patent protection. However, Mr. Wood’s description of the subject matter of his interview of Mr. Nguyen, as to which Honeywell invokes work-product privilege, does not appear to have elicited potentially privileged information about Mr. Nguyen’s communications with Mr. Kadah about the ‘645 patent, in part because Mr. Nguyen had little, if any, recollection of those discussions more than 20 years after the fact.
“Plaintiffs also contend that defense counsel’s ex parte communications with Mr. Nguyen may run afoul of a confidentiality agreement that was typically entered into by ICM employees during Mr. Nguyen’s tenure. Defense counsel points out that plaintiffs have not been able to produce a copy of any agreement executed by Mr. Nguyen, and rely on an employee handbook from 1998, after Mr. Nguyen left ICM. Moreover, plaintiffs concede that, as co-inventor, Mr. Nguyen could, as a result of this litigation, be questioned, at least during a deposition, as a fact witness regarding many aspects of the ‘645 patent. As defense counsel points out, he was permitted to depose Mr. Kadah, without objection, concerning ‘such subjects as: roles of inventors; conception and reduction to practice; knowledge of the state of the art; the meaning of claim terms; the general operation of the circuit; the benefits of the claimed invention; the request to Mr. Nguyen to sign the patent assignment and the patent declaration; and even the discrepancy between the two titles in the assignment document.’
“Plaintiffs primary argument with respect to confidential information is that defendants should not be permitted to rely upon Mr. Nguyen as an expert, because his status as a former employee would disqualify him…. Defendants have not yet declared their intention to use Mr. Nguyen as an expert and, in this District, the issue of whether an expert should be allowed to support a dispositive motion or testify is determined by the assigned District Judge. Accordingly, to the extent plaintiffs are moving to disqualify Mr. Nguyen as a defense expert, this court declines to address the issue. As discussed above, the court does not, on the current record, have the basis to preclude defendants’ ex parte communications with Mr. Nguyen as a consultant.”
ICM Controls v. Honeywell, No.12-1766, 2020 WL 1819658 (N.D.N.Y April 10, 2020)