653 F.Supp.3d 658
D.S.D.2023Background:
- Buergofol owns U.S. Patent No. 9,657,882 and U.S. Patent No. 8,794,269 covering tri-layer, UV-cured pipe liners used to rehabilitate subterranean pipes.
- Buergofol alleges Omega produces, sells, and installs a UV-activated cured-in-place pipe liner that infringes both patents and seeks declaratory relief, an injunction, and damages.
- Dr. Kurt Stark, a listed inventor on Patent 882 and Buergofol’s former employee now residing in Germany, is a potential witness with asserted knowledge relevant to Omega’s "prior art" defense.
- Buergofol moved for an order preventing Omega from contacting Stark, citing his former role as a competitive decision-maker and privileged attorney-client communications while employed.
- Omega argued it must contact Stark (or his counsel) to arrange a deposition in the U.S. and that Rule 4.2 does not bar contacting a former employee; it also asserted Stark has information central to its defense.
- The court held SD Rule 4.2 does not bar contact with former employees but imposed protective guidelines limiting inquiries into privileged or confidential matters and requiring identification, representation checks, and recordkeeping.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether SD Rule 4.2 prohibits opposing counsel from contacting a former employee (Stark) | Buergofol: Stark was a key competitive decision-maker who had extensive privileged communications; counsel contact should be barred. | Omega: Rule 4.2 does not prohibit contacting former employees; contacting Stark is necessary for deposition/prior-art defense. | SD Rule 4.2 does not prohibit contacting an unrepresented former employee. |
| Whether a blanket prohibition on contacting former employees is warranted | Buergofol: Blanket ban justified because Stark may reveal privileged/confidential information and is hostile due to other litigation. | Omega: Blanket ban unduly restricts discovery and defense preparation. | Court denied blanket prohibition but recognized limits on permissible questioning. |
| The scope of permissible questioning of a former employee | Buergofol: Prior-art and employment-related topics are confidential/contractually protected. | Omega: Prior-art issues are essential to defense and not automatically privileged. | Counsel may not solicit privileged or confidential corporate information; must avoid eliciting statements imputed to the employer. |
| Protective procedures for contacting former employees | Buergofol: Court should order protective restrictions and verification of representation. | Omega: Willing to follow reasonable procedures; needs to contact Stark or his counsel for deposition logistics. | Court adopted procedural guidelines (identify counsel, confirm representation, voluntary participation, avoid privileged/confidential matters, preserve records). |
Key Cases Cited
- Plummer v. McSweeney, 941 F.3d 341 (8th Cir.) (ABA ethics opinions are not binding; jurisdictional case law and the rule govern)
- Matter of Discipline of Olson, 537 N.W.2d 370 (S.D.) (interpretation of SD Rule 4.2 in prosecutor contact context)
- Citibank (S.D.), N.A. v. Hauff, 668 N.W.2d 528 (S.D.) (SD Rule 4.2 does not bar represented parties from communicating directly)
- Midwest Motor Sports v. Arctic Sales, Inc., 347 F.3d 693 (8th Cir.) (finding counsel who caused investigator to speak with current corporate officer violated Rule 4.2)
- Bryant v. Yorktowne Cabinetry, Inc., 538 F. Supp. 2d 948 (W.D. Va.) (denying blanket prohibition on contacting former employees but prescribing guidelines; adopted approach here)