In re Queen's Univ. at Kingston

Decision Date07 March 2016
Docket NumberNo. 2015–145.,2015–145.
Citation118 U.S.P.Q.2d 1221,820 F.3d 1287
PartiesIn re QUEEN'S UNIVERSITY AT KINGSTON, Parteq Research and Development Innovations, Petitioners.
CourtU.S. Court of Appeals — Federal Circuit

Shawn Daniel Blackburn, Susman Godfrey L.L.P., Houston, TX, argued for petitioners. Also represented by Ian B. Crosby, Rachel S. Black, Seattle, WA.

Matthew Wolf, Arnold & Porter LLP, Washington, DC, argued for respondents Samsung Electronics Co., Ltd., Samsung Telecommunications America, LLC. Also represented by John Nilsson, Jin–Suk Park.

Before LOURIE, O'MALLEY, and REYNA, Circuit Judges.

Opinion for the court filed by Circuit Judge O'MALLEY. Dissenting opinion filed by Circuit Judge REYNA.

O'MALLEY, Circuit Judge.

Petitioners Queen's University at Kingston and PARTEQ (together, “Queen's University”) are engaged in a patent infringement action against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (together, “Samsung”) in the United States District Court for the Eastern District of Texas. They seek a writ of mandamus directing the district court to withdraw its order compelling the production of Queen's University's communications with its non-attorney patent agents on grounds that the communications are privileged. We grant the petition.


Queen's University at Kingston was established in 1841 and is located in Kingston, Ontario, Canada. In 1987, Queen's University founded PARTEQ Innovations in order to commercialize intellectual property arising from university-generated research. Queen's University is the assignee of U.S. Patent Nos. 7,762,665 ; 8,096,660 ; and 8,322,856 (the “patents-in-suit”), and PARTEQ is the exclusive licensee. The patents-in-suit are directed to Attentive User Interfaces, which allow devices to change their behavior based on the attentiveness of a user—for example, pausing or starting a video based on a user's eye-contact with the device.

On January 31, 2014, Queen's University filed a complaint alleging patent infringement in the Eastern District of Texas against Samsung. In particular, Queen's University alleged that Samsung's SmartPause feature—which is in many of Samsung's newest devices—infringed the patents-in-suit. The district court set trial for November 9, 2015.

Throughout fact discovery, Queen's University refused to produce certain documents it believed contained privileged information. It produced three privilege logs that withheld documents based, inter alia, on its assertion of a privilege relating to communications with its patent agents (we, like the parties, refer to this as a “patent-agent privilege”). Samsung moved the district court to compel the production of these documents, which included communications between Queen's University employees and registered non-lawyer patent agents discussing the prosecution of the patents-in-suit. See Samsung's Motion to Compel Documents, Queen's Univ. at Kingston v. Samsung Elecs. Co., No. 2:14–CV–53–JRG–RSP (E.D.Tex. June 1, 2015), ECF No. 134. After holding a hearing on the matter, the magistrate judge granted Samsung's motion to compel, finding that the communications between Queen's University employees and their non-attorney patent agents are not subject to the attorney-client privilege and that a separate patent-agent privilege does not exist. See Minute Entry for Proceedings Held Before Magistrate Judge Roy S. Payne, Queen's (E.D. Tex. June 17, 2015), ECF No. 149.

Queen's University filed an objection to the magistrate judge's order, which the district court overruled. The district court declined to certify the issue for interlocutory appeal, but agreed to stay the production of the documents at issue pending a petition for writ of mandamus. Order, Queen's (E.D. Tex. July 13, 2015), ECF No. 179. This petition followed and we ordered additional briefing and argument to address it. Because any appeal from the final judgment of the district court will be taken to this court, we have jurisdiction to consider the petition under 28 U.S.C. § 1651(a) (2012).

A. Choice of Law

When reviewing a district court's decision, we apply the law of the regional circuit where that district court sits for non-patent issues, but we apply our own law for questions impacting substantive patent questions. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 803–04 (Fed.Cir.2000). Regarding discovery matters, this court has “held that Federal Circuit law applies when deciding whether particular written or other materials are discoverable in a patent case, if those materials relate to an issue of substantive patent law.” Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1307 (Fed.Cir.2001). [W]e will apply our own law to both substantive and procedural issues intimately involved in the substance of enforcement of the patent right.” O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed.Cir.2006) (internal quotation marks omitted) (quoting Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1363 (Fed.Cir.2004) ). [A] procedural issue that is not itself a substantive patent law issue is nonetheless governed by Federal Circuit law if the issue pertains to patent law, if it bears an essential relationship to matters committed to our exclusive control by statute, or if it implicates the jurisprudential responsibilities of this court in a field within its exclusive jurisdiction.” Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed.Cir.1999) (en banc in relevant part) (citations and internal quotation marks omitted).

Applying these standards, we have held that we apply our own law when deciding whether particular documents are discoverable in a patent case because they relate to issues of validity and infringement. See id. (citing Truswal Sys. Corp. v. Hydro–Air Eng'g, Inc., 813 F.2d 1207, 1212 (Fed.Cir.1987) ([A] determination of relevance implicates the substantive law of patent validity and infringement. Hence, we look to Federal Circuit law.”)). We have also held that we apply our own law when making “a determination of the applicability of the attorney-client privilege to [a party's] invention record [because it] clearly implicates, at the very least, the substantive patent issue of inequitable conduct.” Spalding, 203 F.3d at 803–04. Similarly, this case involves the applicability of privilege for a patentee's communications with a non-attorney patent agent regarding prosecution of the patents-in-suit. Those types of communications are potentially relevant to numerous substantive issues of patent law, including claim construction, validity, and inequitable conduct. See Spalding, 203 F.3d at 803–04 ; Midwest Indus., 175 F.3d at 1359. Accordingly, we apply our own law.

B. Mandamus Review

In deciding whether to grant mandamus review for discovery orders that turn on claims of privilege, we consider whether: (1) there is raised an important issue of first impression, (2) the privilege would be lost if review were denied until final judgment, and (3) immediate resolution would avoid the development of doctrine that would undermine the privilege.” In re Seagate Tech., LLC, 497 F.3d 1360, 1367 (Fed.Cir.2007) (en banc) (internal quotation marks omitted) (quoting In re Regents of the Univ. of Cal., 101 F.3d 1386, 1388 (Fed.Cir.1996) ). “Mandamus may thus be appropriate in certain cases to further supervisory or instructional goals where issues are unsettled and important.” In re Nintendo Co., 544 Fed.Appx. 934, 936 (Fed.Cir.2013) (citing In re BP Lubricants USA Inc., 637 F.3d 1307, 1313 (Fed.Cir.2011) ).

Importantly, a writ of mandamus may be granted to overturn a district court order “only when there has been a clear abuse of discretion or usurpation of judicial authority in the grant or denial of the order.” Connaught Lab., Inc. v. SmithKline Beecham P.L.C., 165 F.3d 1368, 1370 (Fed.Cir.1999) ; see also Schlagenhauf v. Holder, 379 U.S. 104, 110, 85 S.Ct. 234, 13 L.Ed.2d 152 (1964) (finding that “the writ is appropriately issued ... when there is ‘usurpation of judicial power’ or a clear abuse of discretion” (quoting Bankers Life & Cas. Co. v. Holland, 346 U.S. 379, 383, 74 S.Ct. 145, 98 L.Ed. 106 (1953) )). To prevail, a petitioner must establish that it has no other adequate means to attain the desired relief and that its right to issuance of the writ is “clear and indisputable.” See Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367, 380–81, 124 S.Ct. 2576, 159 L.Ed.2d 459 (2004) ; see also In re Regents of the Univ. of Cal., 101 F.3d at 1387 (finding that the petitioner has the burden of establishing “that its right to issuance of the writ is clear and indisputable, and that it lacks adequate alternative means to obtain the relief sought”) (citing Mallard v. U.S. Dist. Court, 490 U.S. 296, 309, 109 S.Ct. 1814, 104 L.Ed.2d 318 (1989) ; Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35, 101 S.Ct. 188, 66 L.Ed.2d 193, (1980) ). As the issuing court, moreover, once the petitioner establishes the two prerequisites, we then have discretion to determine whether the writ is appropriate under the circumstances. Cheney, 542 U.S. at 381, 124 S.Ct. 2576.

In its petition, Queen's University argued that mandamus is appropriate as it is its only remedy. See Queen's University Appellant Br. 1–5. It argued, moreover, that the discovery order it petitions this court to overturn raises an issue of first impression. Id. Finally, it asserted that, if the discovery order is left in place and the communications-at-issue are produced, “the confidentiality of those communications will be lost forever” as [t]he [c]ourt cannot unring that bell.” Id. at 3. In its response to Queen's University's petition, Samsung contended that mandamus is inappropriate because, even if we were to find that a patent-agent privilege exists such that the discovery order is clearly erroneous, the privilege issue can be reviewed as part of a complete appeal. See Samsung Pet'r Br. 14–17.


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