DECISION AND ORDER On February 7, 2020, plaintiffs (sometimes collectively referred to herein as “ICM”) filed a letter motion objecting to defense counsel’s recent ex parte communications with ICM former employee Andrew Nguyen, in part because Mr. Nguyen may have disclosed privileged or confidential information that he obtained as a result of his employment. (Dkt. No. 335).1 Defendants (sometimes referred to as “Honeywell”) responded to that motion by letter brief dated February 21, 2020, acknowledging that they had retained Mr. Nguyen as a consultant, but denying that defense counsel had elicited any privileged information from him or otherwise breached any applicable legal or ethical standards. (Dkt. No. 339). As a result of direction from the court during a telephone conference on January 17, 2020, both parties made ex parte submissions to the court for my in camera review. (Dkt. No. 329 at 50-51). I advised that parties that, after reviewing those submissions and the letter briefs, I would address the issues of whether Mr. Nguyen’s communications with defense counsel reflected the improper disclosure of information obtained from ICM that was privileged or confidential; whether work-product privilege protects any documents regarding defense counsel’s communications with Mr. Nguyen; and whether ICM had a substantial need for information regarding Mr. Nguyen’s disclosures to defense counsel. (See 1/17/2020 TEXT Minute Entry). This decision is written primarily for the edification of the parties, and assumes familiarity with the background of the issues discussed herein, including the prior conference and related submissions. (Dkt. Nos. 323-325, 329). I. GENERALLY APPLICABLE LAW A. Attorney-Client Privilege To invoke the attorney-client privilege, a party must demonstrate that there was: (1) a communication between client and counsel, which (2) was intended to be and was in fact kept confidential, and (3) made for the purpose of obtaining or providing legal advice. U.S. v. Construction Products Research, Inc., 73 F.3d 464, 473 (2d Cir. 1996) (citing, inter alia, Fisher v. United States, 425 U.S. 391, 403 (1976)). “The burden of proving each element of the privilege rests on the party claiming protection.” U.S. Postal Serv. v. Phelps Dodge Ref. Corp., 852 F. Supp. 156, 159 (E.D.N.Y. 1994) (citing, inter alia, In re Horowitz, 482 F.2d 72, 82 (2d Cir. 1973)). It is “well settled” that “in order to receive [attorney-client privilege] protection, a communication must be made ‘primarily’ for the purpose of seeking legal advice.” In re Buspirone Antitrust Litig., 211 F.R.D. 249, 252 (S.D.N.Y. 2002); In re Cnty. of Erie, 473 F.3d 413, 420 & n. 7 (2d Cir. 2007). Communications relating to the prosecution of a patent application are considered to be seeking legal advice or services despite the fact that such communications might contain other information that is tangential to the legal services involved with patent prosecution. Sanofi-Synthelabo v. Apotex Inc., 299 F. Supp. 2d 303, 307 (S.D.N.Y. 2004) (citing In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805-06 (Fed. Cir.2000)). Second Circuit authority has been construed to include within the privilege group individuals who assist attorneys in providing legal services, such as “investigators, [and] interviewers….” Gucci America, Inc. v. Guess?, Inc., 271 F.R.D. 58, 71 (S.D.N.Y. 2010) (citations omitted). Factual investigations conducted by an agent of the attorney, such as “gathering statements from employees, clearly fall within the attorney-client rubric.” Id. at 71 (citing, inter alia, Upjohn Co. v. United States, 449 U.S. 383, 390-91 (1981)). B. Work Product Privilege In order “to assert privilege under the attorney work product doctrine, [a party] must be able to show that [a] document[][was] prepared (1) ‘in anticipation of litigation’ (2) by a party or its representative and (3) not in the ordinary course of business.” Carpenter v. Churchville Greene Homeowner’s Ass’n, No. 09-CV-6552T, 2011 WL 4711961, at *8 (W.D.N.Y. September 29, 2011); Fed. R. Civ. P. 26(b)(3); U.S. v. Construction Products Research, Inc., 73 F.3d at 473. “[W]here one seeks discovery of ‘opinion’ work-product, i.e., ‘work-product that shows mental impressions, conclusions, opinions, or legal theories of an attorney,’…. the Second Circuit has held that ‘at a minimum such material is to be protected unless a highly persuasive showing [of need] is made.’” Curto v. Med. World Commc’ns, Inc., No. 03-CV-6327, 2007 WL 1452106, at *6 (E.D.N.Y. May 15, 2007) (citations and some internal quotation omitted). “Insofar as factual or non-core work-product is concerned, the privilege is qualified and does not protect everything a lawyer does…. Thus, non-core work-product may be subject to disclosure if the requesting party can demonstrate substantial need for the material and undue hardship in obtaining either the material itself or its substantial equivalent.” Alleyne v. New York State Educ. Dept., 248 F.R.D. 383, 387 (N.D.N.Y. 2008) (citations omitted); GUnion Carbidei America, Inc. v. Guess?, Inc., 271 F.R.D. 58, 74-75 (S.D.N.Y. 2010). “A lawyer’s notes of an interview of a non-party witness is classic work product and may contain both facts and mental impressions of the lawyer.” Inst. for Dev. of Earth Awareness v. People for Ethical Treatment of Animals, 272 F.R.D. 124, 125 (S.D.N.Y. 2011). As one district court in this Circuit has explained: It is clear from the [Second Circuit's] discussion in [In re] John Doe Corp.[, 675 F.2d 482, 492-93 (2d Cir. 1982)], that in considering whether to require production of attorney interview notes in this circuit, a distinction must be drawn between summaries of the interviewee’s statements on one hand and, explicit mental impressions, conclusions, opinions or legal theories of the attorney on the other. To the extent attorney interview notes comprise the former, they are producible upon a showing of substantial need. To the extent such notes are more than just summaries of statements and explicitly contain (as opposed to implicitly reflecting) the opinions, legal theories or mental impressions of the attorney, those portions are entitled to greater protection. United States v. Weisman, No. S1-94-CR-760, 1995 WL 244522, at *10 (S.D.N.Y. Apr. 26, 1995). II. FACTUAL BACKGROUND Andrew Nguyen was the co-inventor on the `645 patent at issue in this case with Andrew Kadah, who is now the President of ICM. Mr. Nguyen left ICM before it applied for the `645 patent in 1997. Mr. Kadah filed one declaration (Dkt. No. 335-1) and submitted another in camera, stating that he had a regular practice of communicating with patent counsel, Bernhard Molldrem, Esq., for the purpose of obtaining legal advice regarding obtaining patents for various inventions developed by ICM and its employees over the years. (Dkt. No. 335-1,
4-10). Mr. Kadah typically served as the “intermediary” with respect to co-inventors of innovative ICM products, obtaining information from them sought by patent counsel for the purpose of providing legal advice to Mr. Kadah and ICM, and sometimes sharing Mr. Molldrem’s advice with the co-inventors. (Id.
