In Re: Queen's University at Kingston, 820 F.3d 1287

Background

Queen’s University (with licensee PARTEQ) sued Samsung in E.D. Tex. for alleged infringement of three U.S. patents directed to "attentive user interfaces."
During discovery Queen’s withheld communications with registered, non‑lawyer patent agents as privileged; Samsung moved to compel production.
The magistrate and district courts ordered production, finding no attorney‑client privilege or separate patent‑agent privilege; Queen’s petitioned the Federal Circuit for mandamus.
The Federal Circuit granted mandamus, concluding the court should recognize a limited patent‑agent privilege for communications with non‑attorney patent agents when the agents act within their authorized practice before the USPTO.
The court stayed production pending resolution and remanded for the district court to assess privilege claims under the scope the Federal Circuit recognized.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether a patent‑agent privilege exists for communications with registered non‑lawyer patent agents	Recognize a privilege to protect confidential communications reasonably necessary to prosecution before the USPTO; clients should be able to choose agents without losing confidentiality	No new privilege; existing attorney‑client privilege should not be expanded and any creation should come from Congress or the Judicial Conference; discovery values outweigh asserted need	Recognized a limited patent‑agent privilege under Rule 501 where agents act within authority before the USPTO; mandamus granted to undo blanket production order
Proper choice of law for privilege/discovery in patent cases	N/A (procedural)	N/A (procedural)	Federal Circuit law applies to privilege/discovery questions intimately related to substantive patent law
Scope of any recognized privilege (what communications qualify)	Privilege should cover communications reasonably necessary and incident to preparing/prosecuting patent applications or PTO proceedings	Privilege scope would be uncertain and create exceptions that undermine truth‑seeking; many agent activities already handled by counsel supervision	Privilege limited to activities authorized by USPTO regulations (communications incident to prosecution/representation before the Office); communications outside that scope (e.g., most infringement opinions, sale/purchase advice) are not privileged
Appropriateness of mandamus to review district court discovery order	Mandamus necessary because disclosure would irreparably destroy confidentiality and issue is of first impression with split authority	Mandamus unnecessary; issue can be resolved on appeal, and intervening IPRs/stay reduce any urgency	Mandamus appropriate: issue was novel, confidentiality would be lost, and immediate clarification would avoid inconsistent doctrine; petition granted

Key Cases Cited

Spalding Sports Worldwide, Inc. v. Baltes, 203 F.3d 800 (Fed. Cir. 2000) (applies Federal Circuit law to privilege issues implicating substantive patent matters)
O2 Micro Int’l Ltd. v. Monolithic Power Sys., 467 F.3d 1355 (Fed. Cir. 2006) (Federal Circuit applies its own law where procedural issues are intimately involved in patent enforcement)
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (describing when Federal Circuit law governs non‑patent procedural issues in patent cases)
Jaffee v. Redmond, 518 U.S. 1 (1996) (Rule 501 allows federal courts to recognize new privileges under the light of reason and experience)
Upjohn Co. v. United States, 449 U.S. 383 (1981) (rationale for attorney‑client privilege: encourage full and frank communication to enable legal representation)
Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963) (patent agents may practice before the Patent Office; federal authorization distinguishes their role from state regulation)
United States v. Nixon, 418 U.S. 683 (1974) (privileges are narrowly construed because they derogate from the search for truth)