[00:00:00] Speaker 04: We have one case this morning in Ray Queens University at Kingston involving a petition for a writ of mandamus. [00:00:11] Speaker 04: And we'll hear from Mr. Crosby. [00:00:21] Speaker 02: It's Mr. Blackburn, Mr. Crosby's. [00:00:24] Speaker 04: Oh, sorry. [00:00:24] Speaker 04: That's OK. [00:00:26] Speaker 02: May it please the court and good morning, Honors. [00:00:29] Speaker 02: My name is Sean Blackburn. [00:00:30] Speaker 02: I represent Queen's University of Kingston and Partek Research and Development Innovations. [00:00:37] Speaker 02: The petitioners ask this court for a writ of mandamus directing the District Court for the Eastern District of Texas to withdraw its order compelling production of documents which reflect communications between Queen's University's employees and the registered patent agents. [00:00:53] Speaker 00: What's your response to [00:00:55] Speaker 00: the argument that even if this is a privilege that we should acknowledge, that mandamus is not appropriate in this case because of the stay in light of the re-exam. [00:01:10] Speaker 02: Sure. [00:01:10] Speaker 02: Well, one, the stay was not simply in light of the re-exam. [00:01:14] Speaker 02: In fact, Samson did not move for a stay in view of the IPR. [00:01:17] Speaker 02: They moved for a stay in view of the mandamus petition. [00:01:20] Speaker 02: The court granted on both grounds, though I would argue that he more [00:01:23] Speaker 02: relied on the mandamus petition. [00:01:26] Speaker 02: He actually found that some of the factors would have weighed against them on the IPR because they had delayed. [00:01:31] Speaker 02: Granted, it is state, though, in view of the IPR and the mandamus petition. [00:01:36] Speaker 02: It will not come unstated until both have been decided. [00:01:39] Speaker 02: So if we play this out, hypothetically, if this court was to say, well, mandamus is not appropriate, that's one of the triggering events, right? [00:01:46] Speaker 02: Because you've issued an opinion saying mandamus is not appropriate. [00:01:50] Speaker 02: Then if and when we come out of IPR, [00:01:53] Speaker 02: That will be the second triggering event. [00:01:54] Speaker 02: At that stage, we will have to produce the documents, no doubt. [00:01:58] Speaker 02: The case will go on, and we will not have another chance to mandamus. [00:02:02] Speaker 02: I seriously doubt Judge Payne will stay the production of these documents again for us to enter a Groundhog's Day scenario and remandamus his order. [00:02:13] Speaker 02: Moreover, we are currently under a court order that once this mandamus decision has come down, seven days after that, [00:02:23] Speaker 02: We are to produce these documents. [00:02:25] Speaker 00: So it wouldn't be affected by the other stay? [00:02:27] Speaker 02: It's not clear to me, Your Honor. [00:02:30] Speaker 02: That's the question. [00:02:31] Speaker 02: Say this court was to deny or prevent Amos Petition. [00:02:34] Speaker 02: We would need to seek guidance from the district court as to whether or not he would want us to produce those or not. [00:02:38] Speaker 02: It's simply not clear to me. [00:02:40] Speaker 02: If we are required to produce those, Samson could, in fact, use those documents. [00:02:44] Speaker 02: One, obviously they would have access to them. [00:02:47] Speaker 02: And two, they could seek to use them in the IPR. [00:02:49] Speaker 02: They could seek leave of the court. [00:02:50] Speaker 02: they could seek and leave the board to use those documents, just as Queens has done with Samsung's documents in this case. [00:02:59] Speaker 03: What makes your request extraordinary? [00:03:04] Speaker 03: I mean, we view Ritz and Mandana's as requiring or being based on extraordinary relief, special circumstances. [00:03:15] Speaker 03: Patent agents have been allowed to practice before the PTO almost from its very inception. [00:03:21] Speaker 03: Right. [00:03:21] Speaker 03: And it seems to me there's not a lot of cases on this particular issue simply because it's not a big issue. [00:03:28] Speaker 03: Why should we even entertain this as a writ or mandamus issue? [00:03:34] Speaker 02: Well, I would just agree that it's not a big issue. [00:03:38] Speaker 02: There are about 12 or 13 opinions, and most of those have been written over the course of about 50 years. [00:03:43] Speaker 02: But these are discovery orders. [00:03:45] Speaker 02: Just as the court in this case did not issue a written opinion, most of the time in discovery disputes that happen in this court, there are no written opinions. [00:03:52] Speaker 02: I can tell you that, personally, this issue has arisen twice for me this year, both in this case. [00:03:56] Speaker 03: Isn't that because we usually treat rulings pertaining to discovery as part of the entire appeal, which has been a final judgment issue? [00:04:04] Speaker 02: Well, no. [00:04:05] Speaker 02: That's, I mean, obviously, generally we do. [00:04:07] Speaker 02: But my point is that if you're saying that this issue doesn't come up that often, I'm not [00:04:12] Speaker 02: I'm saying I don't agree that that is true in the district courts. [00:04:16] Speaker 02: There are about 12 or 13 opinions. [00:04:18] Speaker 02: But the reality is that's the tip of the iceberg, because discovery opinions usually don't get written. [00:04:23] Speaker 02: When a party moves to compel, the judge usually will say either oral arguments, which way he's leaning, or will it just simply rule from the bench. [00:04:30] Speaker 02: And then we'll issue an order. [00:04:31] Speaker 02: The order will be two or three sentences. [00:04:33] Speaker 02: Getting an actual opinion on a discovery issue is fairly rare in my experience. [00:04:39] Speaker 02: And as I said, I've had this issue arise twice. [00:04:42] Speaker 02: Also, the reason why I believe it's extraordinary is for the same reason that MSTG was, the same reason that Henry Spalding was. [00:04:51] Speaker 02: Henry Spalding dealt with an invention disclosure record. [00:04:56] Speaker 02: It's kind of the same kind of things that are going on here. [00:04:59] Speaker 02: These are communications that are made for the purpose of patent prosecution. [00:05:04] Speaker 02: And they come up because parties want to compel the production of those documents. [00:05:10] Speaker 02: And just as, with respect to that and the settlement privilege, [00:05:13] Speaker 02: in MSTG, there's really no other way for this kind of legal issue to be resolved. [00:05:20] Speaker 02: I mean, generally speaking, it's unlikely that on direct appeal, they will be able to raise this issue. [00:05:28] Speaker 02: Patent cases generally involve three issues, infringement and validity damages. [00:05:33] Speaker 02: They're heavy with expert opinion. [00:05:35] Speaker 02: It's unlikely that we'll be able to show reversible error to show that the mere compulsion of these documents [00:05:43] Speaker 02: has so tainted the case that this court should reverse on appeal. [00:05:49] Speaker 00: Are you asking us to create a new privilege for patent agents? [00:05:53] Speaker 00: Are you asking us to say that the umbrella of the attorney-client privilege covers these communications? [00:06:02] Speaker 02: I think it can be conceptualized either way, and I don't want to get into semantics. [00:06:08] Speaker 02: Is that what law is all about? [00:06:12] Speaker 02: Maybe and maybe not. [00:06:14] Speaker 02: With respect to the justification for the privilege, I think it extends both to attorneys and agents. [00:06:21] Speaker 02: With respect to prosecution, they do the exact same things. [00:06:25] Speaker 02: They're authorized to do the exact same things. [00:06:26] Speaker 02: They have the same clients seeking the same advice. [00:06:32] Speaker 02: Some courts have treated it as a standalone privilege. [00:06:34] Speaker 02: Others have said it's the attorney-client privilege. [00:06:37] Speaker 02: That extends to patent agents. [00:06:38] Speaker 02: I think the opinion could be written either way and be fully justified. [00:06:42] Speaker 02: Rule 501 certainly allows the recognition of new privileges. [00:06:46] Speaker 02: But even if it is written and considered a new privilege. [00:06:49] Speaker 04: Would you say that it's an analogous privilege? [00:06:52] Speaker 02: I would say it's an analogous privilege. [00:06:53] Speaker 02: I absolutely would. [00:06:56] Speaker 02: For the reasons that attorney-client privilege apply to patent prosecution, they should apply with a patent agent. [00:07:04] Speaker 02: Whether that means that the attorney-client privilege extends to cover agents or it is [00:07:10] Speaker 02: separate rule 501 privilege, either way would be fine with us. [00:07:16] Speaker 00: But if we were to call it a separate privilege, then we run smack up against the strict presumption against the creation of new privileges, don't we? [00:07:29] Speaker 02: That is true, although I think it can still be reason. [00:07:33] Speaker 02: Rule 501 says reason and experience justify the creation of new privilege. [00:07:37] Speaker 02: I think reason certainly works here. [00:07:40] Speaker 00: Well, what about experience? [00:07:41] Speaker 00: There hasn't been this privilege for all these years, and everything seems to have been working fine. [00:07:46] Speaker 02: Well, I'm not sure that that's entirely true. [00:07:49] Speaker 02: In Riempa-Sillen is a 1978 case. [00:07:52] Speaker 02: Baronetron is 1975. [00:07:54] Speaker 02: Sperry only came down in 63. [00:07:59] Speaker 02: So in some sense, this privilege has existed for 40 years, depending on the district court in which you are in. [00:08:06] Speaker 02: The cases are fairly evenly split. [00:08:07] Speaker 02: I think there's a slight majority in favor [00:08:10] Speaker 02: not recognizing the privilege. [00:08:12] Speaker 02: But the reality is they're operating in a gray area, which is why I think the guidance on this issue is needed. [00:08:19] Speaker 00: Do you know that the PTO was looking into this? [00:08:24] Speaker 02: I do know that the PTO was looking into this. [00:08:26] Speaker 02: Although if you looked at the PTOs, they issued a call for papers. [00:08:32] Speaker 02: And what they asked, if you read what they say on their website, it says, should the courts recognize this privilege? [00:08:39] Speaker 02: They didn't ask should Congress institute a privilege, should the PTO declare by fiat that there is new privilege. [00:08:45] Speaker 02: They were asking whether or not the courts should recognize this privilege. [00:08:47] Speaker 02: That's what it says. [00:08:49] Speaker 03: Is there anything that the PTO could do by regulation in order to institute an analogous type privilege? [00:08:56] Speaker 02: Well, it's interesting because it appears as though under the previous professional rules that they may have. [00:09:03] Speaker 02: So the rules that were in effect from 99 to 2013, [00:09:08] Speaker 02: The regulations have changed, I think, three or four times over the past four years. [00:09:13] Speaker 02: And they changed the last time in 2013. [00:09:15] Speaker 02: The rules are in effect from 99 to 2013. [00:09:17] Speaker 02: In their advanced notice of rulemaking, they said that in certain situations, communications with patent agents are considered privileged. [00:09:25] Speaker 02: They cited ampicillin for that proposition. [00:09:28] Speaker 02: If you look at 37 CFR 10.57, which is the prior regulation on governing confidentiality, it expressly defines confidence [00:09:38] Speaker 02: as information covered by the attorney client and agent client privilege. [00:09:44] Speaker 02: So to that extent, I think they have expressed a view. [00:09:47] Speaker 00: Do they have that kind of substantive rulemaking authority to create a privilege? [00:09:52] Speaker 02: I think with respect to practice before them, they do. [00:09:55] Speaker 02: Could they bind the courts? [00:09:58] Speaker 02: I'm not so sure. [00:09:59] Speaker 00: They can tell agents that agents have to maintain confidence. [00:10:04] Speaker 02: They absolutely can. [00:10:05] Speaker 02: And they absolutely can say that they have to maintain this privilege, which would put agents in a very strange position. [00:10:10] Speaker 04: And they have, haven't they? [00:10:11] Speaker 02: And they have. [00:10:14] Speaker 00: But they can't find the courts. [00:10:16] Speaker 02: I suspect not. [00:10:17] Speaker 02: But I think they should still be, even if they're entitled to chevron, the difference on that point. [00:10:21] Speaker 02: Uniformity and skateboard deference are certainly appropriate in that situation. [00:10:25] Speaker 03: Isn't that the issue that we should be reviewing, whether the PTO has the authority to extend a privilege or whether it has the authority to implement by regulation something analogous to the privilege? [00:10:37] Speaker 02: No, I don't think so, because I don't think that privilege could bind this court. [00:10:42] Speaker 02: If the PTO was to actually say, you know, there's a privilege, courts should respect this. [00:10:47] Speaker 02: I don't think that they could do that. [00:10:49] Speaker 04: And we're not reviewing the PTO action. [00:10:51] Speaker 04: What? [00:10:52] Speaker 04: I'm sorry? [00:10:52] Speaker 04: We're not reviewing the PTO action. [00:10:54] Speaker 02: Exactly. [00:10:55] Speaker 02: So they couldn't issue a regulation, I think, with respect to that kind of collateral type of effect. [00:11:03] Speaker 02: But certainly, the PTO has the authority to regulate the practice of patent agents and to require them to keep these [00:11:10] Speaker 02: these communications privileged, and they did. [00:11:13] Speaker 00: If we were to recognize a privilege, how far could it extend? [00:11:18] Speaker 02: I think it would be coextensive with the attorney-client privilege with respect to patent prosecution matters before the United States Patent Office. [00:11:25] Speaker 00: OK, so if a patent agent were to, for instance, give a validity opinion with respect to a third party's patent, that wouldn't be covered by this privilege, would it? [00:11:36] Speaker 02: I would agree, such as the kind that comes up in the case of willfulness [00:11:39] Speaker 02: That's right. [00:11:40] Speaker 02: And frankly, I think something like that, with respect to a third party's patent, is probably not sanctioned by Sperry either. [00:11:48] Speaker 02: Sperry does talk about patentability opinions, but that's the kind of opinion that a prosecutor has to give to his client prior to filing a patent application. [00:11:56] Speaker 03: So it's not an issue of just simply extending the existing privilege. [00:12:01] Speaker 03: We would have to draft an entire new privilege tailored, custom made, just for patent agents. [00:12:08] Speaker 02: No, I do not believe so. [00:12:09] Speaker 02: There actually are pre-existing rules. [00:12:12] Speaker 02: There are only a couple of cases from this court, such as Spalding, that deal with what kind of communications between a patent prosecutor writ large, attorney, or agent, are covered by the attorney-in-client privilege. [00:12:24] Speaker 02: District courts have developed a doctrine on that. [00:12:26] Speaker 02: Certain things they've stated, things that are mere conduits of the Patent Office, are not privilege. [00:12:33] Speaker 02: I think it would be co-extensive. [00:12:35] Speaker 02: with patent prosecution practice, and it would be the same with respect to an agent or attorney. [00:12:39] Speaker 02: I don't think that should be different. [00:12:40] Speaker 00: So it would be essentially coextensive with SPAREY, with the description of the activities that SPAREY recognized as the practice of law sanctioned by the federal government. [00:12:54] Speaker 02: Exactly, Your Honor. [00:12:56] Speaker 02: And I notice I'm well into my rebuttal time at this point. [00:12:58] Speaker 02: If there are no questions, I'd like to reserve the rest of my time. [00:13:01] Speaker 04: We will do that, Mr. Blackburn. [00:13:08] Speaker 01: May it please the court. [00:13:10] Speaker 01: Matthew Wolf, Arnold and Porter on behalf of Samsung. [00:13:14] Speaker 01: Cheney identified three factors that this panel should consider when deciding whether mandamus should issue. [00:13:21] Speaker 01: And I'd like to invert the order of those considerations in light of some of Your Honor's questions so far this morning. [00:13:28] Speaker 01: The final consideration is whether it's appropriate under the circumstances. [00:13:32] Speaker 01: Your Honor, you asked about whether or not [00:13:35] Speaker 01: This could be considered after a full appeal. [00:13:37] Speaker 01: And the answer was, and I try to write it down as best I can, it's unlikely to show reversible error. [00:13:43] Speaker 01: Well, I would suggest that a mandamus petition that's unlikely to involve reversible error is not a mandamus petition at all. [00:13:50] Speaker 01: It can't involve clear abuse of discretion or a usurpation of power. [00:13:53] Speaker 01: It's just not that big a deal in this case. [00:13:56] Speaker 01: Second factor, as Your Honor raised, the case stayed below. [00:14:00] Speaker 01: The comments counsel made I respectfully disagree with. [00:14:03] Speaker 01: His honor stayed the case in its entirety pending the later of the two events. [00:14:08] Speaker 01: If this court were to, as we believe it should, say that mandamus should not issue, and we go on to the IPR, all orders would be stayed, including the order to compel the production. [00:14:17] Speaker 01: We would not get the documents unless and until... We don't have the stay order in our record. [00:14:22] Speaker 00: Do you agree with the characterization that essentially the lower court said that the [00:14:28] Speaker 00: the pendency of the mandamus was really the primary grounds for the stay? [00:14:33] Speaker 01: No, Your Honor. [00:14:33] Speaker 01: There was two reasons. [00:14:35] Speaker 01: It was the IPR and the mandamus. [00:14:38] Speaker 01: The court expressed frustration that counsel for Queens was not producing the documents. [00:14:46] Speaker 01: There was clearly that sentiment. [00:14:48] Speaker 01: But there was no suggestion that there's a primary and a secondary reason for the stay. [00:14:52] Speaker 01: There were two reasons for the stay. [00:14:54] Speaker 01: And the evidence of that is the fact [00:14:56] Speaker 01: The lifting of the stay is triggered by what both events have to be done with. [00:15:00] Speaker 01: So if it was the mandamus petition that was the dog and the IPR that was the tail, presumably the court would have said, I'll lift the stay if and when mandamus is resolved, regardless of what happens in the patent office with the IPR. [00:15:16] Speaker 01: So the evidence, the order itself, suggests that they were equally important to the court. [00:15:20] Speaker 00: Do you agree that it's unclear whether or not, upon issuance of any order from this court, that that would trigger the obligations? [00:15:31] Speaker 01: No. [00:15:32] Speaker 01: I think it is abundantly clear that whatever this court does, that the production of documents will not occur unless and until the IPR is done and claims come back. [00:15:42] Speaker 01: This case is state. [00:15:44] Speaker 01: There will be no production pursuant to this case or pursuant to orders in this case unless and until the claims survive IPR. [00:15:51] Speaker 00: Well, why shouldn't we, even if this isn't [00:15:56] Speaker 00: perfect vehicle for mandamus. [00:15:58] Speaker 00: Why shouldn't we say that this is an important enough issue that will rarely come before us, and there's an obvious split among the district courts that needs to be resolved so that we should answer the question regardless of that final prong? [00:16:14] Speaker 01: Understood. [00:16:15] Speaker 01: So let me add one more to the final prong, and then respond to your answer in light of the first two prongs. [00:16:21] Speaker 01: And Your Honor already raised it, and that is that there is consideration, there is active discussion in the intellectual property community about whether through regulation or going through Congress, a national and indeed international homogenization, for lack of a better term, should be ruled. [00:16:37] Speaker 01: And to have this court in parallel, particularly on a mandamus petition, without the normal weighing in of a meekie that would happen if something was truly important, without the normal appeal, [00:16:49] Speaker 01: Essentially, this court should jump in front of that line. [00:16:52] Speaker 01: Absent an appropriate vehicle, I would suggest that that's not the right circumstance. [00:16:58] Speaker 04: We wouldn't be jumping in front of a line. [00:17:02] Speaker 04: We would be deciding a case before us. [00:17:05] Speaker 01: Your Honor, what rule 501 and what Jaffe suggests 501 [00:17:10] Speaker 01: should be found is that a new privilege, and let's be clear, this would be a new privilege. [00:17:15] Speaker 01: Trammell and Jaffe both make clear that the attorney-client privilege is based on the status of the individual, not the substance of the communication. [00:17:26] Speaker 01: So you can't argue [00:17:28] Speaker 01: a privilege by analogy. [00:17:29] Speaker 01: That doesn't work under the Supreme Court doctrine that binds this court. [00:17:33] Speaker 04: But a patent agent operating within the scope of his authority according to patent office rules under Spary, why wouldn't the patent agent be covered? [00:17:48] Speaker 01: First, Your Honor, to make clear, Spary unambiguously does not discuss attorney-client privilege. [00:17:53] Speaker 01: The analogy they're trying to draw or to suggest [00:17:55] Speaker 01: that all Sperry was talking about was the unauthorized practice of law. [00:17:58] Speaker 01: And in fact, there are courts that have rejected the notion that Sperry is broader than that. [00:18:04] Speaker 00: But Sperry did begin with the proposition that what patent agents are doing before the PTO is the practice of law. [00:18:11] Speaker 01: Yes, Your Honor. [00:18:12] Speaker 01: There's no doubt about that. [00:18:13] Speaker 01: At one court, the pronunciation escapes me, but revastigane, I believe it was, called it a subspecies or a subgenre of law. [00:18:23] Speaker 01: Which, by the way, is another reason why we should let Congress do this job, at least not on a mandamus petition. [00:18:30] Speaker 01: And this is an issue that was only lightly touched upon in opening remarks, is that a patent agent in this case, in fact, has given advice on issues of infringement. [00:18:41] Speaker 01: And we can see that on appendix A90 and A96. [00:18:45] Speaker 01: On issues of monetization, we can see that on A157. [00:18:49] Speaker 01: On issue of damages, we can see that on A [00:18:54] Speaker 01: 159. [00:18:55] Speaker 00: But those, even under the proposal from your friend on the other side, those wouldn't be covered by the privilege that they're asking be created. [00:19:05] Speaker 01: Agreed, Your Honor. [00:19:05] Speaker 01: But think of the, just on a purely practical level, the morass that this would create. [00:19:11] Speaker 01: If there was just a general saying that the patent offices has defined the scope of the privilege by defining the scope of the activity. [00:19:21] Speaker 01: Well, then what is the district court supposed to do with a 2,000 entry privilege law? [00:19:26] Speaker 01: Is it supposed to go entry by entry and see whether intermixed in the purportedly prosecution documents are discussions of infringement, are discussions of validity of third party patents as your honor raised, are discussions of damages? [00:19:40] Speaker 00: Well, presumably if the privilege was defined and delimited, [00:19:44] Speaker 00: then the obligation would be on the party asserting the privilege to only put on that log the things that are privileged, which would greatly narrow what the district court had to look at or had to examine in camera. [00:20:00] Speaker 01: Hypothetically, Your Honor, but here we have, notwithstanding their argument that they're seeking a very narrow patent agent privilege, 2,000 entries, 1,800 of which on their face would seem to be beyond the scope of the patent agent privilege they're seeking in this case. [00:20:12] Speaker 01: So again, why this is not an ideal vehicle, to say the least, for an analysis of an issue like this. [00:20:20] Speaker 01: To get into the fundamental point, why shouldn't this be done? [00:20:24] Speaker 01: Jaffe suggested that the most important policy consideration is the search for the truth. [00:20:31] Speaker 01: That is the presumption. [00:20:32] Speaker 01: That is the predominant consideration. [00:20:36] Speaker 01: If a patent agent privilege is put in place, to the extent it's important at all, and your honor, [00:20:41] Speaker 01: You raise an interesting question. [00:20:42] Speaker 01: Just how important is this? [00:20:44] Speaker 01: I mean, it hasn't come up before in the ordinary course. [00:20:48] Speaker 01: Patent agents seem to be doing their business just fine for the last 50 years. [00:20:52] Speaker 01: It's not clear. [00:20:53] Speaker 04: But we don't decide issues on the basis of how often they have come up or not come up in the past. [00:21:00] Speaker 04: We deal with issues as they come up before us. [00:21:04] Speaker 01: Your Honor, you do in the ordinary course. [00:21:06] Speaker 01: But on mandamus, it does matter how important it is. [00:21:09] Speaker 01: In deciding whether a mandamus petition should issue, the import, the severity, the usurpative, is that how you pronounce that word from Trammell? [00:21:18] Speaker 01: The usurpative nature of what the district court does comes into play. [00:21:23] Speaker 01: I've never used it before today, Your Honor. [00:21:25] Speaker 01: That comes into play. [00:21:27] Speaker 01: So you're absolutely right, Your Honor. [00:21:28] Speaker 01: If this had come up through the ordinary course, through an ordinary appeal, with the full record to see is this important, is it not, [00:21:34] Speaker 01: where if Amiki wanted to weigh in, they could, because this obviously affects the patent community potentially. [00:21:40] Speaker 01: All of that would make sense. [00:21:42] Speaker 01: But when it comes to talking about mandamus, that's a very different question. [00:21:46] Speaker 01: And then it does matter. [00:21:47] Speaker 01: Judge Raina's question is precisely on point. [00:21:50] Speaker 01: Is this such a big deal? [00:21:51] Speaker 01: But assuming it is a big deal, if, for example, a patent agent discusses with the inventor 10 years ago, 12 years ago at the time of invention, a potential on sale bar activity. [00:22:03] Speaker 01: or a public use activity. [00:22:06] Speaker 01: And the patent agent decides, well, I don't think it was on sale bar, so we don't need to disclose it. [00:22:12] Speaker 01: Well, if we never find out about that, we, as the defendants in this case, have no way to test whether it was an on sale bar. [00:22:18] Speaker 01: How would that be different if it was an attorney? [00:22:21] Speaker 01: Well, Your Honor, we've decided for time and memoriam that attorneys were willing to sacrifice some truth finding for the attorney client privilege. [00:22:31] Speaker 01: But what Jaffe tells us is every time [00:22:33] Speaker 01: We want to find a new privilege. [00:22:35] Speaker 01: We have to ask the question, is the desire to find the truth outweighed by an important fundamental public good? [00:22:43] Speaker 01: So we can't argue by analogy. [00:22:46] Speaker 01: Jaffe tells us that's not the right analysis to take. [00:22:49] Speaker 01: We have to say, in this instance, forget what already exists. [00:22:52] Speaker 01: We might decide that attorney-client privilege, if we were sitting around having a cup of coffee, that attorney-client privilege should be tailed back in light of what we know. [00:23:00] Speaker 01: But that's water under the bridge. [00:23:02] Speaker 01: For each new privilege, we have to ask the question anew. [00:23:06] Speaker 01: Does the loss of the truth, is that outweighed or does it outweigh the benefits? [00:23:15] Speaker 01: And your honor asked a critical question, which is, what are the particular benefits here in this case of the patent agent privilege? [00:23:23] Speaker 01: And in Lawson, the court denied mandamus because there were no particularized explanations of what the harm was. [00:23:32] Speaker 01: Just as in Lawson, there is no particularized explanation of what the harm is. [00:23:37] Speaker 01: Do you see any alternative forage relief for the petitioner? [00:23:43] Speaker 01: At the end of the day, of course. [00:23:45] Speaker 01: If these documents are produced, and if they are relevant to issues in this case, and if the judge considers them or sends them to the jury, and this court ultimately decides that there should be a privilege [00:23:59] Speaker 01: And those documents shouldn't have been sent considered to the judge for whatever purpose. [00:24:04] Speaker 01: Well, Markman's already done, but summary judgment. [00:24:06] Speaker 01: Or if it goes to the jury, and the jury decides something based on what the patent agent said, then the court can say there was a risk of error. [00:24:12] Speaker 04: If we find there's no privilege under these circumstances, and the patent agent has to caught up these documents, [00:24:21] Speaker 04: Isn't he then in violation of the PTO rules and wouldn't we be putting that person in a conflict situation? [00:24:30] Speaker 01: Absolutely not, Your Honor. [00:24:31] Speaker 01: Section 106, the very last line of 106, and I'm going to paraphrase it says, unless required to produce under for other purposes or other circumstances. [00:24:40] Speaker 04: So the confidentiality rule specifically says... Does that say other purposes or does that say duty of disclosure? [00:24:47] Speaker 01: It's a confidentiality provision. [00:24:49] Speaker 01: I believe it's 106. [00:24:50] Speaker 01: I'm speaking off the top of my head, Your Honor. [00:24:52] Speaker 01: But I believe it's the very last line of 0.106. [00:24:57] Speaker 00: That patent agent would be protected by a court. [00:25:00] Speaker 01: Exactly. [00:25:01] Speaker 01: Absolutely. [00:25:02] Speaker 00: It's specifically called out as... But then in each instance, there would have to be a court order to disclose. [00:25:09] Speaker 01: And that's the way we are. [00:25:10] Speaker 01: Depending on which jurisdiction you're in, that's the place we are. [00:25:15] Speaker 01: Let's not forget the context we're in. [00:25:16] Speaker 01: I know I'm beating a long dead horse here. [00:25:19] Speaker 01: But we're up here on mandamus. [00:25:22] Speaker 01: And whether or not we believe intellectually that someday there should be a patent agent's privilege, and that that should be defined in certain ways with meets and bounds, the question is, under Jaffe, specifically, and under Mohawk more generally, is this the case that deserves mandamus? [00:25:41] Speaker 01: Are there other adequate means? [00:25:44] Speaker 01: Or is this being used as a substitute for appeals process? [00:25:46] Speaker 01: We have yet not heard a single specific example of how queens will be heard if these documents are produced, and then at the end of the day, they shouldn't have been. [00:25:56] Speaker 01: I mean, odds are we've read file histories. [00:25:58] Speaker 01: The odds are the vast majority of the documents that are on this privilege log are irrelevant. [00:26:03] Speaker 01: But the two or three or four that might be important, well, maybe they're important because they get it at the truth. [00:26:09] Speaker 01: Or maybe they're prejudicial. [00:26:11] Speaker 01: But we're telling the district court, we're not going to trust you to weed out what's prejudicial and shouldn't be in front of the jury. [00:26:18] Speaker 01: For example, if the patent agent says, I don't think the claim should be read that broadly, and the judge says quite rightly, well, if he's not won a skill in the art, that's not relevant to the analysis anyway. [00:26:27] Speaker 01: Versus something that may be probative, like the hypothetical I gave you before. [00:26:31] Speaker 01: There's an on sale bar activity that we don't know about sitting here today that we'd learn about if we got these documents. [00:26:37] Speaker 01: But the district judge is perfectly concerned. [00:26:39] Speaker 01: Remember, we're not done when the district court orders production. [00:26:42] Speaker 01: Then we have to prove that they're relevant and that relevance outweighs the prejudice before we can use them in any way. [00:26:50] Speaker 01: So that's another buffer against the risk that they're concerned about. [00:26:53] Speaker 01: Again, the risk not being specified here at all. [00:26:56] Speaker 01: And then the next step is if the judge makes a mistake and lets something in that this court ultimately says was prejudicial, well, then at the end of the appeals process, [00:27:06] Speaker 01: This court can say, sorry, you have to do it again. [00:27:10] Speaker 01: That's the factor. [00:27:11] Speaker 00: The third factor. [00:27:12] Speaker 00: That would be about the last thing that district court would want, right? [00:27:14] Speaker 01: Which would tend to motivate them to keep the documents, if it was a close call, would tend to motivate the court to not allow us to use it in front of the judge for the court's purposes, the jury purposes. [00:27:25] Speaker 01: I want to get to the final standard in my last minute, if it's OK. [00:27:28] Speaker 01: In order for mandamus to issue, there has to be a clear and indisputable right of relief. [00:27:33] Speaker 01: Jaffe says there are three things you look at when deciding whether there's clear and indisputable rights. [00:27:38] Speaker 01: First, what have the states and lower courts done? [00:27:41] Speaker 01: Here, the states have done nothing as a matter of legislature. [00:27:43] Speaker 01: There's nothing. [00:27:45] Speaker 01: And as for the cases, we counted 27 cases, 18 of which said no patent agent privilege. [00:27:50] Speaker 00: How would the states even have occasion to care? [00:27:52] Speaker 01: Well, if you look at the commentators, Your Honor, in the PTO discussion, this comes up a lot in malpractice cases, for example. [00:27:58] Speaker 01: This comes up in product liability cases. [00:28:01] Speaker 01: Professor Frost's statements to the Patent Office, for example, he discusses those. [00:28:06] Speaker 01: So the states have addressed privilege issues routinely, but not this one. [00:28:11] Speaker 01: And more importantly, as I said, the district courts, 18 of 27, have said no patent agent privilege. [00:28:16] Speaker 00: So there's no consensus. [00:28:17] Speaker 00: How can it come up in malpractice cases when the privilege belongs to the client if there's a malpractice that the lawyer can't claim the privilege? [00:28:28] Speaker 01: Well, I have to think this through. [00:28:30] Speaker 01: I'm just citing what the professor said in his brief. [00:28:32] Speaker 01: But I presume it would come up because the lawyer would want to show what they had done. [00:28:42] Speaker 01: The patent agent would want to say, this is the discussions we had to defend myself. [00:28:48] Speaker 01: And the client would say, that's attorney-client privilege. [00:28:50] Speaker 01: Once they sue the lawyer, they've waived the patent. [00:28:52] Speaker 01: That's true. [00:28:52] Speaker 01: So maybe the professor was wrong in that instance. [00:28:55] Speaker 01: I don't think so. [00:28:56] Speaker 01: But Congress, the second issue is Congress has not said anything on the topic. [00:29:00] Speaker 01: And the third factor Jaffee cites is the Judicial Conference Advisory Committee, which has not said anything on the topic. [00:29:07] Speaker 01: So far from there being a consensus of the world out there that there should be a patent agent privilege, the few that have spoken on have said two to one, there should not be. [00:29:19] Speaker 04: Thank you, Mr. Wolf. [00:29:20] Speaker 01: Thank you, Your Honor, for your time. [00:29:22] Speaker 04: Mr. Blackburn has a little rebuttal time, two and a half minutes. [00:29:34] Speaker 03: Thank you, Your Honor. [00:29:36] Speaker 00: Can you start with one of the major points that was made on the other side, which is that you have not really articulated the harm that you would suffer? [00:29:44] Speaker 00: The harm? [00:29:45] Speaker 02: I will put it this way. [00:29:46] Speaker 02: It is very difficult to articulate the exact harm without waiving the privilege, without telling you exactly what is in the documents. [00:29:53] Speaker 02: I can't tell you exactly how Samsung would do it. [00:29:56] Speaker 04: But rest assured, they would use it. [00:29:58] Speaker 04: Isn't the harm the discouragement of free and open communication, which is the purpose of it? [00:30:03] Speaker 02: That is the harm. [00:30:04] Speaker 02: for all people who seek to use patent agents, just as they seek to use patenter. [00:30:08] Speaker 02: But in this case, our harm would be that they would be able to use these documents against us. [00:30:13] Speaker 02: Even post-judgment, we get a reverse law and appeal. [00:30:17] Speaker 02: But that's assuming we lose, right? [00:30:19] Speaker 02: That is assuming we lose, but that's true in all these cases. [00:30:21] Speaker 03: So you don't know, at this point, you don't know if you're going to lose or not. [00:30:24] Speaker 02: That's true, and that was true. [00:30:25] Speaker 03: And if the documents are produced, then the court still has to make some sort of admissibility ruling on them. [00:30:33] Speaker 03: Absolutely true, Your Honor. [00:30:34] Speaker 03: That's another point. [00:30:35] Speaker 03: You don't know how you're going to come out at that point either. [00:30:38] Speaker 02: Absolutely true. [00:30:39] Speaker 02: And that was just as true in MSTG, in which this court conducted a mandamus review. [00:30:44] Speaker 02: It was just as true in Inri Spalding, in which there was a mandamus review, and in Inri Regents of California, in which there was a mandamus review. [00:30:49] Speaker 02: Those are all privilege issues, all of which were uncertain. [00:30:53] Speaker 02: You didn't know that the settlement agreements in MSTG would make it into the expert report, that they would be admissible at trial, that they would be relevant to a reasonable royalty. [00:31:01] Speaker 02: But this court did conduct a mandamus review. [00:31:03] Speaker 02: Because the factors that were laid out in MSTG were met. [00:31:06] Speaker 02: And they're met in this case as well. [00:31:08] Speaker 02: This is four corners on it. [00:31:09] Speaker 02: Samsung has not argued otherwise. [00:31:12] Speaker 02: In the minute that I have, I would like to address the court's stay order in this case. [00:31:16] Speaker 02: Wait. [00:31:17] Speaker 00: First, how do you justify the breadth of the claim of privilege here? [00:31:22] Speaker 02: OK. [00:31:25] Speaker 02: They're using the subject lines from the emails that are on the privilege long. [00:31:28] Speaker 02: They're not using the descriptions of what [00:31:31] Speaker 02: what is actually contained in those emails. [00:31:34] Speaker 02: I, unlike Mr. Wolf, have looked at these documents and I believe that they are privileged. [00:31:38] Speaker 02: I don't believe that they extend beyond the patent age or privilege. [00:31:42] Speaker 02: At any rate, I don't justify, I don't need to justify the breath because the district court did not rule on that. [00:31:48] Speaker 02: They did not raise it. [00:31:49] Speaker 02: They did not meet and confer on it. [00:31:50] Speaker 02: They have long since waived it. [00:31:52] Speaker 02: And we made that point in front of the district court in our civil reply and he in turn did not rule on it because it was waived [00:31:58] Speaker 02: not raised, not met and conferred on. [00:32:00] Speaker 00: Well, I'm not sure how it was waived. [00:32:03] Speaker 00: If your argument is there is no privilege, period. [00:32:06] Speaker 00: Regardless, they don't really have to make the argument of the subset as assuming I lose that point. [00:32:13] Speaker 00: Let's say the privilege has to be narrow. [00:32:15] Speaker 02: Well, I'm not saying the privilege has to be narrow. [00:32:17] Speaker 02: I thought we were talking about the specific entries on the log. [00:32:21] Speaker 02: Because we agree that the privilege should be narrow. [00:32:23] Speaker 02: I think that if the privilege exists, both parties are in full agreement that it [00:32:28] Speaker 02: It's only with respect to patent prosecution before the USPTO, just as was laid out in Sperry, if it exists. [00:32:35] Speaker 00: But it certainly wouldn't cover infringement opinions or damages. [00:32:39] Speaker 02: I agree. [00:32:41] Speaker 02: I 100% agree. [00:32:42] Speaker 02: I disagree that those communications that are on the privilege log actually pertain to that. [00:32:46] Speaker 02: Some of the subject lines say all kinds of things that have nothing to do with patent prosecution at all, but the content [00:32:55] Speaker 02: of those communications between Mr. Shribner and the employees, does. [00:33:00] Speaker 02: And that's why we think that it definitely covers those. [00:33:04] Speaker 03: But at any rate, I don't believe that question is for the court. [00:33:06] Speaker 03: If those communications are relevant material to, let's say, the prosecution, what effect does a duty of candor have on having to disclose those anyway? [00:33:18] Speaker 02: And by duty of candor, you mean duty of candor to the USPTO? [00:33:21] Speaker 02: Yes. [00:33:22] Speaker 02: I think, again, [00:33:24] Speaker 02: If you're talking about claim scope, let me give you a hypothetical. [00:33:28] Speaker 02: It comes from my practice as a patent agent before I became an attorney. [00:33:32] Speaker 02: Oftentimes, clients will come to you, and they think they've invented the world. [00:33:37] Speaker 02: They haven't. [00:33:38] Speaker 02: They haven't invented something, but they haven't invented the world. [00:33:40] Speaker 02: And you have to have very frank conversations with these clients about what exactly it is that they've invented, what their claim should cover, [00:33:49] Speaker 02: The whole point with respect to a patent attorney, and this is why privilege covers patent attorneys practicing for the PTO, is that they should be able to have those conversations without them being used against them later. [00:33:59] Speaker 02: And we simply submitted that same privilege should cover patent agents. [00:34:04] Speaker 03: What about a conversation where the lawyer says, I'm 100% convinced that this prior art is relevant, is applicable, and the client says, no, you're not to use it. [00:34:16] Speaker 03: here not to say anything about this. [00:34:18] Speaker 03: Is there a duty of candor there? [00:34:21] Speaker 02: I think there probably is. [00:34:22] Speaker 02: In fact, I'm sure that there is. [00:34:24] Speaker 02: I apologize. [00:34:27] Speaker 02: I'm not super familiar with the disciplinary rules. [00:34:30] Speaker 02: But I would suspect that you would have to disclose or withdraw, the same way in turning would. [00:34:35] Speaker 02: Also, there's definitely a duty of candor. [00:34:38] Speaker 02: There's potential waiver privilege with respect to crime fraud exception. [00:34:42] Speaker 02: We're certainly not. [00:34:44] Speaker 02: arguing that agents or attorneys should be able to commit fraud on the patent office. [00:34:49] Speaker 04: Thank you. [00:34:50] Speaker 04: Mr. Blackburn, it's been a privilege to hear two good arguments. [00:34:54] Speaker 04: We'll take the case under advisement. [00:34:57] Speaker 04: Thank you, Your Honor. [00:34:58] Speaker ?: Thank you, Your Honor. [00:34:59] Speaker ?: All rise.