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Miscellaneous Docket No. 15-145

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In re QUEEN'S UNIVERSITY AT KINGSTON and PARTEQ RESEARCH AND DEVELOPMENT INNOVATIONS,

Petitioners.

On Petition for Writ of Mandamus to the United States District Court for the Eastern District of Texas, Marshall Division

No.2: 14-cv-00053-JRG-RSP, Honorable Rodney Gilstrap, District Judge and Honorable Roy Payne Magistrate Judge

REPLY IN SUPPORT OF PETITION FOR WRIT OF MANDAMUS

August 4, 2015

Ian B. Crosby (Principal Attorney) Rachel S. Black Susman Godfrey LLP 1201 Third Avenue, Suite 3800 Seattle, Washington 98101 Telephone: (206) 516-3880

Attorneys for Petitioners

Case: 15-145 Document: 16 Page: 1 Filed: 08/05/2015

124

FORM 9. Certifi cate of Interest

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

____________________________ v. ____________________________

No. _______

CERTIFICATE OF INTEREST

Counsel for the (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party) _______________________ certifies the following (use “None” if applicable; use extra sheets if necessary):1. The full name of every party or amicus represented by me is:_______________________________________________________________________________________________________________________________________________________________________________________________________________________________________2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is:_______________________________________________________________________________________________________________________________________________________________________________________________________________________________________3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are:_______________________________________________________________________________________________________________________________________________________________________________________________________________________________________4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are:__________________________________________________________________________________________________________________________________________________________

_____________________ _______________________________ Date Signature of counsel _______________________________ Printed name of counselPlease Note: All questions must be answeredcc: ___________________________________

Form 9

________________________________________

______________________________________________________________________ __ SiSigngnatatururururururrrre e e eee eee ofof c c

__________________________________________ii dd ff

In re Queen's University, et al. Samsung Electronics, et al.

15-145

Queen's University and PARTEQ R&D

Queen’s University at Kingston and PARTEQ Research and Development Innovations

NA

NA

✔

See Attached

Ian B. Crosby

8/4/2015


TABLE OF CONTENTS

TABLE OF CONTENTS ............................................................................ i

TABLE OF AUTHORITIES ............... .............. ............................. ............ ii

1. SUMMARY OF ARGUMENT .......................................................... 1

II. ARGUMENT .................................................................................... 1

A. The existence of a patent agent privilege is a question of Federal Circuit law ............................................... 1

B. The existence of a patent agent privilege is a matter of first impression in this Court .............................................. 3

C. This Court should recognize a patent agent privilege ................................................................................... 4

D. Mandamus review is appropriate in this case ........................ 8

III. CONCLUSION ................................................................................. 9

CERTIFICATE OF SERVICE .................................................................... i

1


TABLE OF AUTHORITIES

Cases

Dow Chem. Co. v. Atl. Richfield Co., No. 83-CV-3763, 1985 WL 71991 (E.D. Mich. Apr. 23, 1985) ..... 5, 6

E.!. du Pont de Nemours & Co v. MacDermid, Inc., 2009 WL 3048421 (D.N.J. 2009) ...................................................... 8

Falsone v. United States, 205 F.3d 734 (5th Cir. 1953) .... ........................................................ 4

In re Ampicillin, 81 F.R.D. 377 (D.D.C. 1978) ............................................................ 6

In reMSTG, 675 F. 3d 1377 (Fed. Cir. 2012) .................................................... 8, 9

In re Pioneer Hi-Bred Intern., Inc., 238 F.3d 1370 (2001) ........................................................................ 2

In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 53 USPQ2d 1747 (Fed. Cir. 2000) ..................... 2, 3 4

In re US Dept. of Homeland Sec., 459 F. 3d 565 (5th Cir. 2006) ....... ... ................................................. 9

In re VISX, Inc., 18 F. App'x 821 (Fed. Cir. 2001) ............................................ ...... 2, 3

Mallard v. U. S. District Court, 490 U.S. 296 (1989) .......................................................................... 9

Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100 ........................... ............. ....................... ...................... 9

Power Mosfet Techs. v. Siemens AG, 206 F.R.D. 422 (E.D. Tex. 2000) ................................... ................... 7

Reedhycalog UK, Ltd. V. Baker Hughes Oilfield Operations Inc., 251 F.R.D. 238 (E.D. Tex. 2008) ...................................................... 7

SmithKline Beecham Corp. V. Apotex Corp., 2000 WL 1310668 (N.D. IlL 2000) ................................................... 7

11


Sperry v. Florida, 373 U.S. 379 (1963) .......................................................................... 5

Vernitron Medical Products, Inc., No. 616-73, 1975 WL 2116 (D.N.J. 1975) ...................................... .. 5

Regulations

37 C.F.R. § 10 ................. .......... ... ... ... ............................................... ......... 6

Other Authorities

8 Wigmore on Evidence (3rd. ed.) ............................................................. 5

111


I. SUMMARY OF ARGUMENT

In its Opposition ("Opp.") to Queen's University's Petition for Writ

of Mandamus ("Pet."), Samsung does not dispute that this case poses a

question of first impression under Federal Circuit law regarding the ex-

istence of a privilege over communications with registered patent

agents regarding patent prosecution. Nor does Samsung cite to any con-

trolling authority that fails to recognize such a privilege; the Fifth Cir-

cuit and district court authorities Samsung relies on are neither binding

nor persuasive on this point. The logic of the Supreme Court's recogni

tion that Congress has placed patent agents and attorneys on equal

footing with respect to patent prosecution compels the recognition of an

equal privilege over client communications on that subject. Mandamus

is the appropriate vehicle to enforce this privilege and preserve the con

fidentiality of sensitive communications between Queen's University

and its registered patent agent.

II. ARGUMENT

A. The existence of a patent agent privilege is a question of Federal Circuit law.

Samsung's opposition fails to respond to Queen's University's show-

ing that the existence of a patent agent privilege is a question of Feder

al Circuit law. Samsung does not dispute that the question relates to

1


substantive issues of patent law. See Pet. at 8. Nor does it deny that the

question itself is unique to patent law. See id. at 8-9.

Samsung justifies its main reliance on Fifth Circuit law only indi

rectly by reference in a footnote to this Court's unpublished decision to

apply regional circuit law to the waiver of a privilege in In re VISX,

Inc.,In re VISX, Inc., 18 Fed. Appx. 821, 823 (Fed. Cir. 2001). See Opp.

at 4 n.l. But the issue of waiver-which in VISX involved whether "a

limited disclosure of the contents of attorney-client communications for

strategic purposes" amounted to waiver respecting communications

with a "British patent agent on the same subject matter"-is not at all

analogous to whether a privilege exists in the first place. Id. at 824.

Indeed, in In re Pioneer Hi-Bred Intern., Inc., 238 F.3d 1370, 1374

n.3 (2001), cited by VISX, this Court affirmed that "[oJf course 'Federal

Circuit law applies when deciding whether particular written or other

materials are discoverable in a patent case'" in the first place, "at least

if that issue clearly implicates substantive patent law." (emphasis add

ed) (quoting In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 803,

53 USPQ2d 1747, 1750 (Fed. Cir. 2000)). Id. Because the issue here is

the existence rather than the waiver of a privilege that Samsung does

not dispute is unique to and substantively implicates patent law, Sam

sung's reliance on VISX to justify the application of Fifth Circuit law is

misplaced.

2


Resolving the existence of the patent agent privilege as a matter of

regional circuit law also makes no sense in light of this Court's exclu

sive jurisdiction over appeals from patent cases. Samsung does not

claim that the Fifth or any other regional circuit addressed this issue

before the creation of that jurisdiction. Mter the creation of that juris-

diction, it is impossible to imagine the circumstances in which another

circuit ever will. For this Court to apply non-existent regional circuit

law to the question amounts to a prediction of the outcome of a decision

that another circuit will never make.

B. The existence of a patent agent privilege is a matter of first impression in this Court.

This Court has not yet addressed whether a patent agent privilege

exists. Although Samsung repeats the Magistrate's erroneous observa

tion that this Court rejected such a privilege in VISX, Opp. at 3-4,

Samsung acknowledges that VISX concerned whether an asserted privi-

lege regarding communications with a British patent agent was waived,

not whether that privilege existed. See Opp. at 4 n.1. Far from deciding

that issue, this Court assumed that the foreign patent agent communi

cations were privileged for purposes of affirming the waiver. See VISX,

18 F. App'x at 824.

Samsung's reliance on In re Spalding Sports Worldwide, Inc., 203

F.3d 800 (Fed. Cir. 2000) is similarly misplaced. Whether a patent

agent privilege exists was not at issue in Spalding. See id. at 805. Ra-

3


ther, the question was whether the record was principally a technical

document or had instead been prepared for the purpose of seeking legal

advice. Id. at 805-6. The Courtdetermined that the provision of the

document to the patentee's attorney for the latter purpose rendered it

privileged, but did not speak to whether it would have reached a differ

ent determination if the recipient had instead been a patent agent.

C. This Court should recognize a patent agent privilege.

Samsung's declaration that the "creation of a patent agent privi-

lege" would be "inconsistent with the law of the United States Court of

Appeals for the Fifth Circuit" not only ignores its tacit concession that

Federal Circuit rather than regional circuit law applies, but also mis

understands the law of the Fifth Circuit. Op. Br. 1-2. The Fifth Circuit

authority relied on by Samsung does not hold as a general proposition

that communications with statutory agents admitted to practice before

administrative agencies are not privileged.

Falsone v. United States, 205 F.3d 734, 740-41 (5th Cir. 1953), con

cerned a narrow question regarding a conflict between a Congressional

statute authorizing the Commissioner of Internal Revenue to compel

testimony of accountants and a regulation authorizing enrolled ac

countants to act in same capacity as attorneys in proceedings before the

Treasury Department. While acknowledging commentary favoring

recognition of a privilege over communications with such agents, the

4


Fifth Circuit held that such a privilege would "conflict with the statute,"

which "must prevail." Id. (citing 8 Wigmore on Evidence (3rd. ed.),

2300(a), pp. 583, 584).

No such conflict between a Congressional enactment and a subor

dinate regulation is at issue here. To the contrary, the Supreme Court

in Sperry v. Florida, 373 U.S. 379, 388 (1963), found both "congressional

... and administrative ... recognition that registration in the Patent Of

fice confers a right to practice before the [Patent] Office" (emphasis

added). Thus, the statutory conflict that defeated the recognition of a

privilege for communications with non-lawyer Treasury practitioners is

not present in this case.

Other considerations that are unique to patent practice further dis

tinguish this case from Falcone. For example, the Code of Federal Regu

lations mandates that unpublished pending and abandoned patent ap

plications be kept secret, supporting the fact that communications be

tween agents and their clients remain confidential. See Dow Chem. Co.

v. Atl. Richfield Co., No. 83-CV-3763, 1985 WL 71991, at *5 (E.D. Mich.

Apr. 23, 1985). In addition, many patent applications require technical

expertise that attorneys often do not possess. Vernitron Medical Prod

ucts, Inc., No. 616-73, 1975 WL 2116, at *1-*2 (D.N.J. 1975). Samsung

has failed to identify anyany analogous considerations relating to the

Treasury practitioners at issue in Falcone.

5


Despite these considerations, Samsung argues that patent agents

and attorneys need not be treated the same way "for all purposes" un

der Sperry. Opp. at 7-8. But the protection of communications with reg

istered patent agents that specifically relate to patent prosecution-i.e.,

the specific function for which Sperry deems them equal-would not ac-

cord patent agents "the status of an attorney," as Samsung suggests.

Opp. at 8. 1

Samsung also argues that 37 C.F.R. § 10, which recognized the eth

ical duty of registered patent agents, should not persuade this Court to

afford their communications protected status. Opp. at 8-9. In making

this argument, Samsung ignores the reasoning in Dow, which explained

that patent agents would be forced into an impossible dilemma if com

pelled to disclose their communications with their clients, because pa

tent agents are bound by the same ethical duties as attorneys. 1985 WL

71991, at *6; see also In re Ampicillin, 81 F.R.D. 377, 394 (D.D.C. 1978)

1 Samsung's claim that some communications on Queen's University's privilege log identify issued patents is not properly before this court. See Opp. at 7. In this regard, it is significant that Queen's University has had continuation applications pending at the time of all of the entries that Samsung has identified as relating to issued patents. Regardless, it is for the District Court to apply any articulation of the scope of the patent agent privilege that this Court may order to particular entries in the first instance, if at all.

6


("[W]here, where a client, in confidence, seeks legal advice from a regis

tered patent agent who is authorized to represent that client in an ad

versary process that will substantially affect the legal rights of the cli

ent, which thereby necessitates a full and free disclosure from the client

to the legal representative so that the representation may be effective,

the privilege will be available.").

Samsung's reliance on district court cases also does not support its

position. Samsung fails to respond to Queen's University's distinguish

ing of many of those cases in its opening brief. Compare Opp. at 4-7

with Pet. at 14-15. The additional district court authorities Samsung

cites are also distinguishable. In Reedhycalog UK, Ltd. v. Baker Hughes

Oilfield Operations Inc., the court did not reach the question of whether

patent agent privilege should be recognized. 251 F.R.D. 238, 243-44 &

n. 3 (E.D. Tex. 2008). Power Mosfet Techs. v. Siemens AG stated that

work product protection did not exist within the context of patent prose

cution, but likewise did not address the question of attorney-client privi

lege in that context. 206 F.R.D. 422, 423-24 (E.D. Tex. 2000).

SmithKline Beecham Corp. v. Apotex Corp. analyzed the question of

privilege over communications with foreign, rather than domestic, pa

tent agents. 2000 WL 1310668, *2 (N.D. Ill. 2000). Finally, the court in

E.!. du Pont de Nemours & Co v. MacDermid, Inc., refused to recognize

a privilege between a client and its registered patent agent because the

7


communications were clearly not related to patent prosecution. See

2009 WL 3048421, at *5 (D.N.J. 2009). Again, that is not the case here.

The district court cases Samsung cites should not persuade this

Court. Rather, this Court should follow the logic of Sperry, which coun

sels that federally registered patent agents should enjoy the same com

munication privilege as attorneys in the context of patent prosecution.

D. Mandamus review is appropriate in this case.

Finally, Samsung contends that Queen's University's mandamus

petition is not the appropriate method for review of the important ques

tion of patent agent privilege. Op. Br. 11-12. Samsung claims that er

roneous production of Queen's University's privileged communications

will not irreparably harm Queen's University, but cannot explain why.

In fact, such disclosure would inevitably touch on sensitive judgments

such as balancing the breadth of claim scope with distinctions over the

prior that could not simply be forgotten by an opposing attorney craft

ing a defense strategy after a reversal of the District Court's privilege

determination following direct review.

For this reason, Samsung's attempt to distinguish In re MSTG, 675

F.3d 1377 (Fed. Cir. 2012), on the basis of its recognition of the public

policy of keeping settlement communications confidential is unpersua

sive. See Op. Br. 12. In fact, this Court in MSTG recognized that there

is often no adequate remedy on appeal for erroneously mandating the

8


production of confidential documents. 675 F.3d at 1341-42 (Fed. Cir.

2012); see also In re US Dept. of Homeland Sec., 459 F.3d 565, 568 (5th

Cir.2006).

Samsung's reliance on Mohawk Indus., Inc. v. Carpenter is also un

persuasive, as the Court in that case was not reviewing a petition for

writ of mandamus, but rather held that a party could not meet its bur

den to satisfy the "effective unreviewability" prong of collateral order

jurisdiction in part because mandamus review was still available after

the denial of an interlocutory appeal. 558 U.S. 100, 111-12 (2009). In

terlocutory appeal is not available here, as the district court denied

Queen's University's request to certify the appeal for this Court's re

view. Petitioner's Appendix at A271. Indeed, mandamus review is the

only relief available to Queen's University on this critical issue. See

Mallard v. U. S. District Court, 490 U.S. 296, 309 (1989). Mandamus re

view is necessary and appropriate in this case.

III. CONCLUSION

This Court should grant review and issue a writ of mandamus di-

recting the district court to withdraw its order compelling the produc

tion of Queen's University's confidential communications with their reg

istered patent agents. No regional circuit has addressed this issue, and

particularly in light of the divided authority in the district courts, this

Court should take the opportunity to follow the Supreme Court's guid-

9


ance set out in Sperry. The uniform recognition of a patent agent privi

lege by this Court will facilitate effective representation of clients by

technically qualified patent agents as Congress has long intended, and

thereby benefit the U.s. patent system as a whole.

Dated: August 4,2015

S. Calvin Capshaw Texas State Bar No. 03783900 Elizabeth L. DeRieux Texas State Bar No. 05770585 D. Jeffrey Rambin Texas State Bar No. 00791478 CAPSHAW DERIEUX L.L.P. 114 East Commerce Avenue Gladewater, Texas 75647 Telephone: (903) 236-9800 Fax: (903) 236-8787 [email protected] [email protected] [email protected]

J ack Wesley Hill Texas State Bar No. 24032294 WARD, SMITH & HILL, PLLC P.O. Box 1231 1127 Judson Rd., Suite 220 Longview, Texas 75601 Telephone: (903) 757-6400 Fax: (903) 757-2323 [email protected]

Respectfully submitted,

/s/ Ian B. Crosby

William C. Carmody Texas State Bar No. 03823650 SUSMAN GODFREY LLP 560 Lexington Avenue, 15th Floor New York, New York 10022-6828 Telephone: (212) 336-8330 Fax: (212) 336-8340 [email protected]

Ian B. Crosby WA State Bar No. 28461 Rachel S. Black WA State Bar No. 32204 SUSMAN GODFREY LLP 1201 Third Avenue, Suite 3800 Seattle, Washington 98101 Telephone: (206) 516-3880 Fax: (206) 516-3883 [email protected] [email protected]

Shawn Daniel Blackburn Texas State Bar No. 24089989 SUSMAN GODFREY LLP 1000 Louisiana Street, Suite 5100

10


Houston. Texas 77002-5096 Telephone: (713) 653-7873 Fax: (713) 654-6666 [email protected]

Counsel for Plaintiffs Queen's University at Kingston and PARTEQ Research and Development Innovations

11


3790287v1/013771

CERTIFICATE OF SERVICE

I hereby certify that on August 5, 2015, I served a copy of the fore-

going Reply in Support of Petition for Writ of Mandamus via CM/ECF

Notice on the following counsel of record:

Matthew M. Wolf Jin-Suk Park John E. Nilsson Arnold & Porter LLP 555 12th Street, NW Washington, DC 20004 Telephone: (202)942-5000 Facsimile: (202)942-5555

I hereby certify that on August 5, 2015, I served a copy of the fore-

going Reply in Support of Petition for Writ of Mandamus via electronic

mail on the following counsel of record:

Tara L. Williamson Samuel M. Drezdzon Patrick C. Reidy Joshua M. Rychlinski Arnold & Porter LLP 555 12th Street, NW Washington, DC 20004 Telephone: (202)942-5000 Facsimile: (202)942-5555

Ryan M. Nishimoto ARNOLD &PORTER LLP 777 South Figueroa Street 44th Floor Los Angeles, CA 90017-5844 Telephone: (213)243-4000 Facsimile: (213)243-4199


3790287v1/013771

Melissa Smith William R. Lamb Gillam & Smith, LLP 303 South Washington Avenue Marshall, TX 75670 Telephone: (903)934-9257 Facsimile: (903)934-9257

I further certify that on August 5, 2015, I served a copy of the fore-

going Reply in Support of Petition for Writ of Mandamus via first class

mail on the district court:

The Honorable Rodney Gilstrap, District Judge Sam B. Hall, Jr. Federal Building & United States Courthouse 100 East Houston Street Marshall, TX 75670

/s/ Ian B. Crosby


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