In re: Queen’s University at Kingston, Parteq Research and Development Innovations

Docket No. 2015-145

March 7, 2016

Brief Summary: “Patent-agent privilege” exists for those activities “reasonably necessary and incident to the preparation and prosecution of patent appplications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate”.

Summary: Queen’s sought a writ of mandamus directing the DC to withdraw its order compelling production of Queen’s communications with its non-attorney patent agents on grounds that the same are privileged. The request arises from litigation with Samsung over US 7,762,665; 8,096,660; and 8,322856 (the “patents-in-suit”) directed to “Attentive User Interfaces” with which devices may change their behavior based on the attentivenss of a user (e.g., pausing or starting a video based on a user’s eye contact with the device). During discovery, Queen’s refused to produce communications with its patent agents regarding the patents-in-suit under “patent-agent privilege”. The magistrate judge granted Samsung’s motion to compel the documents, finding privilege did not attach to those communications. The opinion explains that the FC’s “own law” applies to deciding whether documents are discoverable because they relate to issues of validity and infringement. Regarding whether to grant mandamus for discovery orders turning on privilege, the opinion explains that the FC considers whether “an important issue of first impression” is raised, “privilege would be lost if review were denied until final judgment”, and immediate resolution would avoid undermining privilege (In re Seagate, FC 2007). And a writ may be granted to overturn a DC order “where there has been a clear abuse of discretion of usurpation of judicial authority” (Connaught, FC 1999) as long as the petitioner establishes “it has no other adequate means to attain the desired relief” (Cheny, US DC 2004). Here, it found the writ was appropriate since, as described below, “patent-agent privilege…should be acknowledged”. The opinion explained that courts have consistently refused to recognize as privileged communications with other non-attorney client advocates, such as accountants” and “jailhouse lawyers” not licensed to practice law. Samsung argued privilege should not apply “where counsel is not involved in the communications”. However, the opinion concludes “that the unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court’s characterization of their activities as the practive of law” (Sperry, US 1963 (“the preparation and prosecution of patent applications for others constitutes the practice of law”), and “the current realities of patent litigation counsel…favor of recognizing an independent patent-agent privilege”. Under Sperry, “patent agents are not simply engaging in law-like activity, they are engaging in the practice of law itself” and the justification of “the traditional attorney-client privilege…based on the need for candor between a client and his or her legal professional in relation to the prosecution of a patent…would seem to apply with equal force to patent agents” (a more detailed explanation of the reasoning supporting this conclusion is provided on pp. 14-23 of the opinion). Activities that “receive the benefit of the patent-agent privilege” are those “reasonably necessary and incident to the preparation and prosecution of patent appplications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate” (see also 37 CFR § 11.5(b)). Judge Reyna’s dissent argued the court should not “create a new agent-client privilege” (“[a]n attorney-client-like privilege should not apply merely because someone is enabled to practice limited law before a single specific administrative agency”).

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