In re Silver

• Decision Date: 23 February 2018
• Docket Number: No. 16–0682,16–0682
• Citation: In re Silver, 540 S.W.3d 530 (Tex. 2018)
• Parties: IN RE Andrew SILVER, Relator
• Court: Texas Supreme Court

540 S.W.3d 530

IN RE Andrew SILVER, Relator

No. 16–0682

Supreme Court of Texas.

Argued November 9, 2017

Opinion Delivered: February 23, 2018

Jane Langdell Robinson, Demetrios Anaipakos, Edward B. Goolsby, Iftikhar ‘Ifti’ Ahmed, Timothy C. Shelby, Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing, P.C., Houston, TX, for RelatorAndrew Silver.

Brett C. Govett, Jason K. Fagelman, Nathan B. Baum, Robert L. Greeson, Warren S. Huang, Norton Rose Fulbright U.S. LLP, Dallas, TX, for Real Party in Interest Tabletop Media, LLC.

Peter E. Mims, Vinson & Elkins, Houston, TX, for Amicus Curiae American Intellectual Property Law Association.

Stephen Dartt, Dechert LLP, Austin, TX, for Amicus Curiae Austin Intellectual Property Law Association.

Christopher T. Blackford, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC, for Fédération Internationale Des Conseils En Propriété Intellectuelle.

Lawrence J. Fox, New Haven, CT, pro se.

Robert Alan Blackwell, Blackwell Blackburn & Singer, LLP, Dallas, TX, for Amicus CuriaeLawrence J. Fox.

Daniel J. Krueger, Iselin Law PLLC, Cypress, TX, for Amicus Curiae Houston Intellectual Property Law Association.

David Hricik, Macon, GA, pro se.

Richard F. Phillips, ExxonMobil Corporation, Baytown, TX, Sparkle T. Ellison, Boulware & Valoir, Houston, TX, for Amicus Curiae Intellectual Property Owners Association.

Ian B. Crosby, Susman Godfrey LLP, Seattle, WA, Louis J. Hoffman, Hoffman Patent Firm, Scottsdale, AZ, Shawn D. Blackburn, Susman Godfrey LLP, Houston, TX, for National Association of Patent Practitioners, Inc.

Justice Devinedelivered the opinion of the court.

In this petition for mandamus relief, relator Andrew Silver asks us to vacate the trial court's order compelling the production of e-mails between Silver and his non-attorney patent agent.The court of appeals, in a divided decision, denied Silver's mandamus petition.500 S.W.3d 644(Tex. App.—Dallas 2016, orig. proceeding).The court concluded that the communications between Silver and his patent agent were not protected from discovery because Texas law does not recognize a patent-agent privilege.Id. at 646–47.Silver contends, however, that the documents are protected under Texas Rule of Evidence 503 because patent agents are lawyers for purposes of Texas's lawyer-client privilege.Because we agree that a client's communications with his registered patent agent, made to facilitate the agent's provision of authorized legal services to the client, are privileged under Rule 503, we conditionally grant mandamus relief.SeeTEX. R. EVID. 503.

I

The United States Patent and Trademark Office(USPTO), an administrative body created by Congress, is responsible for granting and issuing patents.35 U.S.C. §§ 1(a),2(a)(1)(2012).The USPTO has authority to regulate the persons who represent patent applicants.Id.§ 2(b)(2)(D).Among those the USPTO allows to provide such representation are, of course, patent attorneys.37 C.F.R § 11.6(a)(2018).These are individuals who are in good standing with the bar of the highest court in any state and meet all the requirements for registration before the USPTO, which includes an examination.Id.§§ 11.1, .6(a), .7. Practice before the USPTO is not limited to attorneys, however.Applicants also have the option of hiring a patent agent—someone who is not an attorney, but has properly registered with the USPTO.Id.§ 11.6(b).Patent agents must pass the same exam as patent attorneys.Seeid.§ 11.7(b)(1)(ii).For purposes of prosecuting patents for clients before the USPTO, patent attorneys and patent agents can provide all the same services.Seeid.§§ 11.5(b), 11.6(a) - (b).

The underlying litigation concerns the Ziosk, a stand-alone tablet designed to allow customers at restaurants to order food and pay their check without having to interact with a waiter or waitress.The Ziosk is sold by Tabletop Media, LLC, which has partnered with chains such as Abuelo's, Chili's, and Red Robin to place the device in their restaurants.

Andrew Silver claims he invented the technology that became the Ziosk and sold the patent to Tabletop.Silver brought a breach-of-contract action against Tabletop, alleging it failed to pay him for his patent.Tabletop answered, generally denying Silver's allegations.

During discovery in the underlying contract action, Tabletop sought production of emails between Silver and Raffi Gostanian, the patent agent who represented Silver before the USPTO.Silver refused to produce the emails, claiming them to be covered by the lawyer-client privilege.Although Gostanian is a registered patent agent, he is not a licensed attorney.

Tabletop moved to compel production, which the trial court granted.Silver then sought mandamus relief in the court of appeals to compel the trial court to withdraw the production order, asserting again the communications were privileged.

The court of appeals denied relief.500 S.W.3d at 647.The court, however, understood Silver's mandamus petition to seek the creation of an independent patent-agent privilege, which the appellate court declined to do because it is "not the role of intermediate courts of appeals to declare new common law discovery privileges."Id. at 645(quotingIn re Fisher & Paykel Appliances, Inc. , 420 S.W.3d 842, 848(Tex. App.—Dallas 2014, orig. proceeding)).A dissenting justice argued Silver was not seeking the creation of a new patent-agent privilege but rather asking the court to apply Texas Rule of Evidence 503's lawyer-client privilege to communications between him and his registered patent agent.Id. at 650(Evans, J., dissenting).We agree the issue is not the creation of a new patent-agent privilege but rather whether the existing lawyer-client privilege extends to communications between a registered patent agent and the agent's client.SeeTEX. R. EVID. 503(codifying Texas's lawyer-client privilege).

II

Rule 503(b)(1) states the basic elements of the lawyer-client privilege.See generally , JEFF BROWN AND REECE RONDON, TEXAS RULES OF EVIDENCE HANDBOOK 411 (2016).Under the rule, a client is privileged from disclosing, and may prevent others from disclosing, communications made in confidence for the purpose of obtaining legal services.TEX. R. EVID. 503(b)(1).The rule also protects communications by the lawyer to the client.Id.503(b)(1)(A)-(E).

At issue here is who may qualify as a lawyer for purposes of the privilege.The rule helpfully defines the term "lawyer" as "a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation."Id.503(a)(3).Here, Silver does not contend he reasonably believed Gostanian to be a lawyer or that Gostanian was authorized to provide any legal services outside of the patent application and prosecution.Therefore, the sole issue is whether Gostanian was authorized to practice law when he provided patent-agent services to Silver.The parties disagree, however, about whether the phrase "authorized to practice law" is broad enough to include a registered patent agent.

Silver argues the rule's plain language includes a patent agent, such as Gostanian, within the definition of a "lawyer."He points to federal law that allows patent agents to provide the same services as patent attorneys before the USPTO upon passing the patent bar.Because the federal government allows patent agents to provide legal services to their clients, Silver concludes that patent agents are authorized to practice law within the rule's meaning.

Finally, Silver submits the federal courts have already determined that a registered patent agent is a person authorized to practice law in the United States—albeit in a limited setting—and that these decisions should control the interpretation of the privilege under our own state rule.SeeSperry v. State of Florida ex rel. Florida Bar , 373 U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428(1963);In re Queen's Univ. at Kingston,820 F.3d 1287(Fed. Cir.2016).

In Queen's University , the Federal Circuit Court of Appeals extended the attorney-client privilege to communications with patent agents, recognizing as a matter of federal common law "a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent's authorized practice of law before the Patent Office."In re Queen's Univ.,820 F.3d at 1302.The Federal Circuit read the Supreme Court's decision in Sperry as confirmation that "patent agents are not simply engaging in law-like activity, they are engaging in the practice of law itself," thereby justifying the recognition of a privilege similar to that of the traditional attorney-client privilege.Id. at 1296.

In Sperry , the State of Florida sought to enjoin a registered patent agent from representing Florida clients before the USPTO because the agent was not a member of the Florida bar.Sperry , 373 U.S. at 381, 83 S.Ct. 1322.The Florida Supreme Court concluded that Sperry's actions constituted the unauthorized practice of law, which the State could prohibit.Id. at 382, 83 S.Ct. 1322.The United States Supreme Court disagreed, although the Court did "not question the determination that under Florida law the preparation and prosecution of patent applications for others constitutes the practice of law."Id. at 383, 83 S.Ct. 1322(emphasis added).Because Congress allowed the Commissioner of Patents to regulate who was authorized to appear before the USPTO, however, the Court held the Supremacy Clause prohibited Florida from "deny[ing] to those failing to meet its own qualifications the right to perform the functions within the scope of federal authority."Id. at 385, 83 S.Ct. 1322.Thus, the Supreme Court did not disagree that the work performed by a registered patent agent constitutes the practice of law under Florida law.

Both cases may be viewed as persuasive authority that the work of a registered patent agent is the practice of law, although neither speaks directly to the...