The District of Kansas held that documents produced by a Canadian attorney working as in-house counsel on U.S. patent infringement matters qualify for attorney-client privilege in a U.S. patent infringement case. Sudenga Indus., Inc. v. Global Industries, Inc., No. 18-2498-DDC (D. Kan. May 15, 2020). Plaintiff Sudenga Industries sent a cease and desist letter alleging patent infringement to Defendant Global Industries. Defendant is based in Canada, and their General Counsel is licensed in Canada, but not in any U.S. state. Plaintiff filed a motion to compel documents from Defendant drafted by the Canadian General Counsel regarding the cease and desist letter. Plaintiff argued that the Canadian attorney did not have attorney-client privilege for this U.S. matter. Defendant argued that privilege attached because Canadian privilege would attach in this situation if it involved a Canadian patent and no U.S. case has held that communications from Canadian counsel on U.S. patent matters were not privileged. Privilege is a matter of common law, so the Court looked to Kansas law. In Kansas, an attorney includes “a person authorized…to practice law in any state or nation, the law of which recognizes a privilege against disclosure of confidential communications between client and attorney” (emphasis added)… Read More »Attorney-Client Privilege Granted to Canadian In-House Counsel on U.S. Law
Is an invention disclosure submitted by an inventor to an in-house attorney for procurement of a patent covered by attorney-client privilege? The Central District of California held in The California Institute of Technology v. Broadcom Limited, et al., No. CV 16-3714-GW (C.D. Cal. Mar. 19, 2018) that invention disclosures sent to in-house attorneys are covered by attorney-client privilege. During a deposition, Plaintiff asked the deponent about Exhibit 341, a document related to an invention disclosure. The deponent answered that Exhibit 341 was sent to Defendant’s internal IP committee to determine whether a patent application could be filed on the disclosed invention. Within about a minute of this answer, Defendant clawed back Exhibit 341, stating that it was a privileged communication pursuant to the protective order because it sought legal advice on patent procurement. Plaintiff filed a motion to compel discovery of Exhibit 341. A communication with an attorney for making a determination of patentability is covered by the attorney-client privilege. In re Spalding Sports Worldwide, 203 F.3d 800, 803-04 (Fed. Cir. 2000). Exhibit 341 was submitted to Defendant’s Patent Review Committee (PRC), which includes attorneys and engineers and determines whether patents should be pursued for invention disclosures submitted by Defendant’s… Read More »Invention Disclosure to In-House Counsel Privileged
Texas now recognizes an independent patent agent privilege in Texas state courts. In re Andrew Silver, No. 16-0682 (Texas 2018). This now aligns with the Federal Circuit, which recognized patent agent privilege a few years ago, and the Patent and Trademark Office, which formally recognized patent agent privilege recently. This decision reverses the Texas Court of Appeals decision which did not recognize patent agent privilege. We discussed the treatment of communications with patent agents and foreign counsel in one of our webinars near when the Texas appellate decision was released, which you can watch here. This open question discussed in the webinar has now been resolved, at least under Texas law. Andrew Silver owns patents (numbers not listed in the opinion) relating to a device that allows restaurant patrons to order meals, play games, and pay their checks at their tables. Silver licensed the patents to Tabletop Media, LLC. The lawsuit concerns a contract dispute, governed by Texas state law, related to the licenses. The trial court ordered Silver to produce emails between Silver and his non-attorney patent agent, Raffi Gostanian. The Court of Appeals upheld the order to compel production of the communications, noting that the Texas Rules of… Read More »Supreme Court of Texas Recognizes Patent Agent Privilege
The U.S. Patent and Trademark Office has extended patent agent privilege to Patent Trial and Appeal Board (PTAB) proceedings. The PTO has thus resolved an ambiguity resulting from the Federal Circuit’s decision in In re Queen’s University, 820 F.3d 1287 (Fed. Cir. 2016). In that case, as we discussed in this webinar, the Federal Circuit recognized patent agent privilege for communications during ex parte patent prosecution during federal court litigation, but was silent on whether patent agent communications were privileged during post-issue PTAB proceedings. Because the Queens University Court was silent on whether patent agent privilege applied in PTAB proceedings, the PTO proposed an amendment to its rules to protect patent agent communications in proceedings such as inter partes reviews, post-grant reviews, covered business method reviews, and derivation proceedings. Patent agents now receive the same treatment as attorneys on issues affecting privilege or waiver during PTAB proceedings. The approved rule, 37 C.F.R. § 42.57, will take effect December 7, 2017. The new rule also grants privilege to “a foreign jurisdiction patent practitioner,” which is defined as “a person who is authorized to provide legal advice in a foreign jurisdiction” even if that foreign jurisdiction does not provide privilege for patent… Read More »PTO Codifies Patent Agent Privilege at the PTAB
The District of Massachusetts held that the common interest exception to third-party privilege waiver protected communications disclosed to a licensee and non-attorney expert. Crane Security Technologies, Inc. v. Rolling Optics, AB, No. 14-12428-LTS (D. Mass. Feb 3, 20017). Crane Security Techs. Inc sued Rolling Optics, AB for infringing patents related to anti-counterfeiting measures on currency, e.g., metallic colored strips with images that appear to move when the bill is moved. Rolling Optics filed a motion to compel documents allegedly related to a violation of the on-sale bar of 35 U.S.C. § 102(b). The documents were shared with a potential licensee and a non-attorney investment banker. Magistrate Judge Kelley denied the motion to compel, declaring the documents privileged under the common-interest exception to third-party privilege waiver. Typically, disclosure of a document protected by attorney-client privilege to a third party waives the privilege. However, when the third party shares a substantially identical legal interest (i.e., a “common interest”) in the subject matter of a legal communication, the attorney-client privilege is not waived. Because the third party has a common legal interest in the privileged communication, courts will not waive attorney-client privilege with the communication is shared with that third party. Communications between a… Read More »Common Interest Privilege Covers Non-Attorneys in Patent Case
A Texas Court of Appeals held that the privilege between patent agents and their clients – recognized by the Federal Circuit in In re Queen’s University, No. 2015-145 (Fed. Cir. March 7, 2016) – is not recognized by Texas state courts. In re Andrew Silver, 05-160074-CV (Dallas Ct. App. Aug. 17, 2016). The court reasoned that, because the “Federal Circuit applies its own law for substantive and procedural issues” for patent-related cases, “in a civil case, [Texas] state law governs privilege” and “Queen’s University is not binding here.” A dissent would have recognized patent agent privilege for matters relating to patent prosecution, but not for litigation. Andrew Silver owns patents (numbers not listed in the opinion) relating to a device that allows restaurant patrons to order meals, play games, and pay their checks at their tables. Silver licensed the patents to Tabletop Media, LLC. The lawsuit concerns a contract dispute, governed by Texas state law, related to the licenses. The trial court ordered Silver to produce emails between Silver and his non-attorney patent agent, Raffi Gostanian. Silver filed a writ of mandamus to the Court of Appeals to withdraw the order to compel production of the communications between Silver and… Read More »Will State Courts Recognize Patent Agent Privilege?
If you are, or work with, a patent agent – or if you are at one end or the other of communications between U.S. attorneys and foreign attorneys and/or patent agents – this recent presentation by my colleague Peter Keros has some useful information. The basic takeaways are these. First, patent agents are treated like lawyers for purposes of privilege – so long as the communications are about what patent agents are licensed to do, which is prepare and prosecute patent applications. Second, communications between U.S. and foreign counsel on patent matters can have different protection depending on what the other country is, and what it’s laws say, as well as on whether the subject of the communication is a U.S. patent or application as opposed to a foreign patent or application.
The Federal Circuit recently held that there is an independent patent agent privilege, explaining that because prosecuting a patent application before the US Patent and Trademark Office (USPTO) constitutes the practice of law, communications with non-attorney patent agents are privileged. In re: Queen’s University at Kingston, No. 2015-145, 2016 U.S. App. LEXIS 4259 (Fed. Cir. Mar. 7, 2016). In re Queen’s Univ. resolved a petition for a writ of mandamus in a pending district court case in the Eastern District of Texas. See, e.g., Queen’s Univ. v. Samsung Elecs. Co., No. 2:14-CV-53-JRG-RSP, 2015 U.S. Dist. LEXIS 62527 (E.D. Tex. May 13, 2015) (claim construction order). Queen’s University at Kingston (“Queen’s University”), a Canadian research university, is the assignee of U.S. Patent Nos. 7,762,665; 8,096,660; and 8,322,856, which are directed toward user interfaces for smartphones. Queen’s University sued Samsung Electronics Co. (“Samsung”) for patent infringement. During discovery, Queen’s University refused to produce certain documents, asserting a privilege between Queen’s University and the non-attorney patent agent who drafted the documents. Samsung won a Motion to Compel the documents in district court, finding that the patent agent privilege does not exist. Queen’s University then filed the petition for a writ of mandamus. Because… Read More »Federal Circuit Recognizes Privilege For Patent Agents
Use of independent contractors is common in the tech world, especially in software development. Communications between a company’s attorneys and an independent contractor may be protected by the attorney-client privilege, so long as the communications are directed to the independent contractor functioning as an employee. A recent case illustrates the principle. Gen-Probe Inc. v. Becton Dickinson and Co., Nos. 09cv2319 and 10cv0602 (S.D. Cal. Apr. 6, 2012). Mark Toukan was an independent contractor hired by RELA, Inc., which in turn was hired by Gen-Probe to help “develop an automated nucleic acid detection system.” Toukan had presumably signed RELA’s standard contractor agreement, which required him to assign all intellectual property resulting from the engagement, including patents, to RELA. These obligations survived termination of the agreement. Sometime after the agreement ended, Gen-Probe’s outside counsel communicated with “Toukan by email and phone regarding a patentability investigation he was conducting.” Becton Dickenson sought to discover the content of those communications. In the Ninth Circuit, “an outside consultant’s role in the company was that of a functional employee, thus implicating the corporate attorney-client privilege.” Toukan was therefore a functional employee of RELA, which in turn was an independent contractor to Gen-Probe. As such, Toukan was… Read More »Independent Contractors Are Covered by the Attorney-Client Privilege