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District Court Permits Ex Parte Communication with Former Employee and Co-Inventor of Plaintiff But Orders Defendants to Turn Over Certain Email Communications

District Court Permits Ex Parte Communication with Former Employee and Co-Inventor of Plaintiff But Orders Defendants to Turn Over Certain Email Communications


Stan Gibson and Julia Consoli-Tiensvold

In ICM Controls Corp. v. Honeywell International, Inc., Plaintiffs ICM Control Corp. (“Plaintiffs” or “ICM”) filed a letter motion objecting to ex parte communications between counsel for Defendants Honeywell International, Inc. (“Defendants”) and a former employee and co-inventor of Plaintiffs, due to the possibility that the former co-inventor may have disclosed privileged or confidential information obtained as a result of his employment.

The former employee, Andrew Nguyen, was the co-inventor on the patent at issue in this case alongside Andrew Kadah, the current President of ICM. Mr. Kadah, during Mr. Nguyen’s employment, would have regular communications with co-inventors, including Mr. Nguyen, for the purpose of providing information to legal counsel in order to receive legal advice. Mr. Nguyen left his employment at ICM in 1997, prior to ICM applying for the patent at issue.

Plaintiffs contend that Defendants’ ex parte communications with Mr. Nguyen were inappropriate and likely infringed on privileged communications that occurred between Mr. Nguyen and Mr. Kadah when Mr. Nguyen was employed at ICM, due to the fact that these conversations were had for the purpose of obtaining legal advice from legal counsel. Further, Plaintiffs acknowledged that Defendants could have deposed Mr. Nguyen as a fact witness, and Plaintiffs would have had an opportunity to prevent Mr. Nguyen from disclosing privileged information if this had happened.

Defendants contend that the communications with Mr. Nguyen were consistent with ethical and legal standards, citing to Muriel Siebert v. Intuit, 8 N.Y.3d 506 (2008), which recognizes that ex parte contact with an opposing party’s ex-employee, even those that may know privileged or confidential information, may be appropriate so long as counsel operates within certain boundaries and takes measures to avoid disclosure of privileged or confidential information. Defendants claim that these measures were taken where, because they had occurred 20 years prior, Mr. Nguyen had limited recollection of his communications with Mr. Kaadah relating to the patent in question and denied having any conversations with legal counsel or Mr. Kadah about the patent application in question.

Propriety of Counsel for Defendants’ Communications with the Former ICM Co-Inventor

The Court held that Mr. Nguyen’s inability to recall communications that occurred with Mr. Kadah was sufficient to avoid disclosure of privileged or confidential information, despite Plaintiffs’ arguments that privileged information could have been disclosed regardless of Mr. Nguyen’s inability to recall the communications.

The Court reasoned that it is well-settled that facts and technical information are not privileged, and if Mr. Nguyen did not remember the conversations themselves, and only remembered and discussed technical information, then “[i]t is highly unlikely that ICM … could establish that the exclusive source of factual or technical information or related opinions provided by Mr. Nguyen would have been privileged communications with Mr. Kadah.” Knogo Corp. v. United States, 213 U.S.P.Q. at 940, 1980 WL 39083, at *4 (“The privilege only applies to the communication that takes place between the attorney and the client. It does not apply to the technical information itself so long as that technical information is sought by other discovery techniques outside of the context of the attorney-client communication.”)

Plaintiffs tried to argue that counsel for Defendants’ communications with Mr. Nguyen may run afoul of a confidentiality agreement that was typically entered into by ICM employees. However, Plaintiffs were unable to produce a copy of this agreement to support their contention. Additionally, the decisions points out that even if there had been a confidentiality agreement, Defendants had been permitted to depose Mr. Kadah, without objection, regarding numerous topics that would have been protected under a confidentiality agreement, and therefore likely would have been permitted to do the same with Mr. Nguyen even if a confidentiality agreement existed.

Based on the record at hand, the Court declined to prohibit Defendants from communicating with Mr. Nguyen.

Privileges Applicable to the Notes of Defendants’ Counsel

The Court conducted an in camera review of Defendants’ counsel’s documentation of communications with Mr. Nguyen. Upon review of the documentation, the Court determined that Defendants’ counsel’s notes of his communications with Mr. Nguyen and Mr. Nguyen’s drawings during those communications constituted protected opinion work product.

In contrast, counsel’s emails reflecting initial contact with Mr. Nguyen and Mr. Nguyen’s engagement as a consultant were not protected by work product privileges due to Mr. Ngueyn’s status as a former employee of the opposing party. State of N. Y. v. Solvent Chem. Co., 166 F.R.D. 284, 298 (W.D.N.Y. 1996) (“the consulting agreement, and any related documents that may reveal the facts and circumstances surrounding Mr. Beu’s retention as a litigation consultant by ICC, as well as the terms and conditions of his retention, are not protected from disclosure under the work product rule …”).

The Court concluded that although counsel for Defendants did not violate any ethical or legal standards through his communications with Mr. Nguyen, Plaintiffs’ suspicions were valid considering the circumstances of the communications, and therefore Plaintiffs possesses “a substantial need for [counsel’s emails and consulting agreement with Mr. Nguyen] in order to make their own assessment of the propriety of counsel’s contacts with Mr. Nguyen. Moreover, counsel would not have other means of obtaining this information.”

Accordingly, the Court ordered Defendants to provide Plaintiffs with those unprivileged communications with Mr. Nguyen.

ICM Controls Corp. v. Honeywell Int’l, Inc., Case No. 5:12-CV-1766 (LEK/ATB) (N.D.N.Y. April 10, 2020).

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548/