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«DAVID HRICIK Associate Professor of Law Mercer University School of Law 1021 Georgia Ave. Macon, GA 31201 hricik_d State Bar of Texas 20TH ...»

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According to Ampex, it matters not when or in what context the subsequent communication occurs. Citing Akeva L.L.C. v. Mizuno Corp., 243 F.Supp.2d 418 (M.D.N.C.2003), a case also cited by the Federal Circuit in its EchoStar opinion, Ampex contends that there is no temporal limitation on the waiver of privilege, if infringing activity continues, nor is there any distinction between advice received from trial counsel and that received from opinion counsel. Ampex asserts that the EchoStar opinion, in conjunction with Akeva, makes everything fair game for discovery, including communications between trial counsel and client during trial.

I am compelled to reject Ampex’s reading of EchoStar as far too broad and its motion as an extravagant demand at odds with the generally understood contours of the attorney-client privilege. … Nothing in th[e factual] context [of EchoStar] … indicates a desire by the Court of Appeals to have every communication a client has with its trial counsel on the very subject of an infringement trial open to review by opposing counsel.

This is not elevating form over substance, as Ampex implies. It is not the form of the communication that matters, it is the content. If one received advice of non-infringement and also received an opinion on that same topic from another attorney, it would not matter on the question of waiver how the communication was labeled. But, if all attorney-client discussions touching on the same subject were to be viewed as “advice” or “opinions” on a par with the legal opinions that were at issue in EchoStar, the court’s comments would have to be understood as demolishing the practical significance of the attorney-client privilege, a result obviously at odds with other comments in EchoStar, see 448 F.3d at 1300-01 (”We recognize the privilege in order to promote full and frank communication between a client and his attorney so that the client can make well-informed legal decisions and conform his activities to the law.”), and with other emphatic pronouncements of the Federal Circuit regarding the privilege, see Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1344 (Fed.Cir.2004) (”There should be no risk of liability in disclosures to and from counsel in patent matters; such risk can intrude upon full communication and ultimately the public interest in encouraging open and confident Intex, 2005 U.S. Dist. LEXIS 10149 at *14-15, quoting BASF, 283 F.Supp.2d at 1006. At least one other court has indicated that it will adopt a balancing approach. Indiana Mills & Mfg., Inc. v. Dorel Indus., 2006 WL 1749413, *6-*7 (S.D. Ind. May 26, 2006) (concluding that EchoStar permits courts to balance the purposes served by the privilege against the need for discovery when addressing whether a waiver will extend to trial counsel or post-filing communications and denying discovery under facts presented) 2006 WL 1995149 (D. Del. July 17, 2006)

Ethical Issues in Opinions of Counsel and in Working with Patent Agents Chapter 17

relationships between client and attorney.”). It will take more than the inference Ampex wants to draw from EchoStar to persuade me that the Federal Circuit intends a wholesale revision of the historical understanding of the attorney-client privilege.62 There are two responses to the problem that this line of cases creates. One is to argue that they are wrong—a position other courts have adopted.63 A leading opponent of the post-suit waiver approach is

Dunhall Pharmaceuticals, Inc. v. Discus Dental, Inc.,64 which rejected post-suit waiver on policy grounds:

Once the lawsuit is filed, the waiver of work product protection ends. This temporal limitation follows from the enhanced interest in protecting against disclosure of trial strategy and planning. Following the filing of the lawsuit, defense counsel is engaged in critical trial preparation, often including analysis of the weaknesses of their client’s case. Such analysis, while likely related to the subject matter of the asserted defense, is fundamentally different from a similar pre-litigation analysis. In comparison to work product produced prior to the filing of the lawsuit, litigation-related work product deserves greater protection. Because the court finds that the balance of competing interests shifts at the time the lawsuit is filed, it rejects plaintiff’s contention that the waiver should extend beyond the date that the lawsuit was filed.65 Courts, therefore, do disagree on the scope of waiver of work product; however, the presence of a prosecuting-litigator does increase the likelihood that post-suit waiver will be imposed.66 Although a court may reject post-suit waiver, it is an increased risk. 67 The other option to avoid post-suit waiver when a prosecuting-litigator is involved is to seek bifurcation of willfulness.68 However, bifurcation may increase costs and may be detrimental to the client if the jury decides liability without knowing that the accused infringer obtained an opinion of counsel, even though that is not technically relevant to infringement. The issue of whether to bifurcate, therefore, may create a conflict between the attorney necessitating obtaining informed consent from the client.

Id. at *2-*3.

63.

E.g., Simmons, Inc. v. Bombardier, Inc., 221 F.R.D. 4 (D. D.C. 2004); K.W. Muth Co. v. Bing-Lear Mfg. Group, L.L.C., 219 F.R.D. 554 (E. D. Mich. 2003).





64.

994 F. Supp. 1202, 1206 (C.D. Cal. 1998).

65.

994 F. Supp. at 1206.

66.

See BASF Aktiengesellschaft v. Reilly Indus., Inc., 283 F. Supp. 2d 1000, 1005-06 (S. D. Ind. 2003) (discussing three-way split among courts on the issue of post-suit waiver of work product).

67.

See generally Amy L. Landers, Intentional Waivers of Privilege and the Opinion of Counsel: Can the Scope of Disclosure be Managed?, 20 SANTA CLARA COMPUTER & HIGH TECH. L.J. 765 (2004); Lakewood Eng’g & Mfg. Co. v. Lasko Prods., Inc., No. 01 C 7867, 2003 WL 1220254 (N.D. Ill. Mar. 14, 2003) (analyzing post-suit waiver in suit involving prosecuting-litigator).

68.

See, e.g., St. Clair Intellectual Prop. Consultants, Inc. v. Sony Corp., No. Civ.A.01-557-JJF, 2002 WL 1901268 (D. Del. Aug.

16, 2002).

Ethical Issues in Opinions of Counsel and in Working with Patent Agents Chapter 17

In light of the enhanced risk of post-suit waiver of work product, and the costs which accompany bifurcation, a client should be informed of the potential risks. Clients should be informed either that a broader privilege waiver may apply, or that the client may need to seek bifurcate on, an action which may not be in the client’s best interest.

–  –  –

The courts disagree on whether “subject matter” in this context includes all opinions about any defense, or only opinions that relate to the same precise defense as the opinion waived.

Some courts hold that if an opinion concerning one defense is relied upon, other opinions may be withheld. Thus, a defendant who relies upon a noninfringement opinion waives protection over the subject matter of infringement, but not invalidity or unenforceability.69

–  –  –

The Federal Circuit's recent decision to hear en banc the questions of whether and if so to what extent trial counsel's opinion is waived will likely shed much light on this subject. In In Re Seagate

Technology LLC, Misc. No. 830 (2007), the Court agreed to hear en banc these three questions:

(1) Should a party's assertion of the advice of counsel defense to willful infringement extend waiver of the attorney-client privilege to communications with that party's trial counsel? See In re EchoStar Commc'n Corp., 448 F.3d 1294 (Fed.Cir.2006).

–  –  –

(3) Given the impact of the statutory duty of care standard announced in Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed.Cir.1983), on the issue of waiver of attorney-client privilege, should this court reconsider the decision in Underwater Devices and the duty of care standard itself?

–  –  –

*Professor Hricik is an Associate Professor of Law at Mercer University School of Law, in Macon, Georgia. He teaches patent law, legal ethics, and other courses, and is a past chair of the Ethics & Professionalism Committee of the Intellectual Property Section of the American Bar Association and currently chairs the Professionalism & Ethics Committee of the American Intellectual Property Law Association.

Prior to becoming a full-time professor, Professor Hricik litigated patent cases and represented lawyers and law firms in malpractice and disqualification matters for fourteen years, first with Baker & Botts, LLP, and most recently with the Houston law firm of Yetter & Warden, LLP.

This is another in a continuing series of articles addressing patent ethics. See David Hricik, How Things Snowball: The Ethical Responsibilities and Liability Risks Arising from Representing a Single Client in Multiple

Patent-Related Representations, 18 Geo. J. Legal Ethics 421 (2005); David Hricik et al., Save a Little Room for Me:

The Necessity of Naming As Inventors Practitioners Who Conceive of Claimed Subject Matter, 55 Mercer L. Rev.

635 (2004); David Hricik, Where the Bodies Are: Current Exemplars of Inequitable Conduct and How to Avoid Them, 12 Tex. Intell. Prop. L.J. 287 (2004); David Hricik, Trouble Waiting to Happen: Malpractice and Ethical Issues in Patent Prosecution, 31 AIPLA L.J. 385 (2003); David Hricik, Aerial Boundaries: The Duty of Candor as a Limitation on the Duty of Patent Practitioners to Advocate for Maximum Patent Coverage, 44 S. Tex. L. Rev. 205 (2002); David Hricik, The Risks and Responsibilities of Attorneys and Firms Prosecuting Patents for Different Clients in Related Technologies, 8 Tex. Intell. Prop. L.J. 331 (2000).

The title is from the song “The Person You Are” by John Wesley Harding off the CD “The Name Above the Title” (1991). I would like to thank my former research assistant, Amy Falkingham (now Pille) (J.D., Mercer University School of Law 2006) for her research assistance with this article, and for financial support from Mercer University School of Law.

Ethical Issues in Opinions of Counsel and in Working with Patent Agents Chapter 17

TABLE OF CONTENTS

1. Introduction

2. The Requirements for Becoming a Patent Agent.

3. Patent Agents are Both Lawyers and Nonlawyers for Purposes of Discipline

A. For Purposes of Discipline the Patent Office Should treat Patent Agents as Patent Lawyers

B. During Disqualification Proceedings, the Patent Office, the Patent Office should treat Patent Agents as Nonlawyers

C. For Purposes of Imputed Disqualification in Litigation and Disciplinary Purposes, Courts and Bar Associations Should treat Patent Agents as Lawyers

D. Conclusion: Consistency

4. For Purposes of Partnership and Sharing Fees, the States, but not the Patent Office, treat Patent Agents as Nonlawyers

A. The Scope of Preemption by the PTO Code

B. States Cannot Prohibit Partnerships Limited to Patent Prosecution

C. Partnership Between Lawyers and Patent Agents.

5. The Fact that Patent Agents Practice Law, But are Not Lawyers, Creates Odd Dichotomies

6. For Purposes of Privilege, Patent Agents Should be Treated as Lawyers.

7. Conclusion

–  –  –

The United States Patent & Trademark Office (the “Patent Office”) permits both lawyers and nonlawyers with certain minimum educational requirements to take the patent bar and become registered with the Patent Office, and thereby become authorized to prosecute patent applications.1 Thus, a license to practice law is neither a condition of, nor is it sufficient to, practice before the Patent Office.

Patent agents offer efficiencies and effectiveness to clients. Obviously, because they have not had to undertake three years of legal education, patent agents, through equally qualified in the eyes of the Patent Office to prosecute patents, may be available at a lower hourly rate to clients. In addition, they may be better or at least more recently technically trained than a lawyer, and so may be better able to communicate with patent applicants and to draft more accurate applications.2 Patent agents, however, suffer from an identity crises in the eyes of the law that inhibits access to these benefits. Courts, bar associations, and disciplinary agencies struggle with whether what they do constitutes the “practice of law,” whether they give “legal advice,” and whether they are “nonlawyers” and so cannot form partnerships with lawyers to practice law.

How they are characterized has critical, real-world consequences. Whether a client can know that information disclosed to the agent will be subject to protection under a privilege, for example, or even must be held confidential by the patent agent, turns on the agent’s status.

The identity crisis is understandable. After all, at one time what we now call patent agents were designated as “patent lawyers” by the Patent Office itself.3 Today, while they can 37 C.F.R. §11.6.

See Penny Prater, The Evolving Rules of Patent Professionals, 2006 Advanced Biotechnology/Chemical Patent Practice Seminar (June 16, 2006), San Jose, California.

See Sperry v. State of Florida, 373 U.S. 379, 385 (1963) (discussing legislative history of this change).

–  –  –

no longer call themselves “lawyers,”4 they are authorized by federal statute to prosecute patents, and prosecuting patents constitutes “practicing law.” Thus, patent agents practice law, but, they are not “lawyers” and cannot call themselves “lawyers.” Alone, this history and those facts has led to confusion and disagreement as to how to treat patent agents for purposes of ethical rules, conflicts of interest principles, and privilege rules: though they practice law, for each purpose, are they “lawyers,” or not?



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