A Privileged Place for Patent Agents
Should client communications with U.S. patent agents have the same protection against discovery afforded to communications with attorneys? That was the question recently addressed by the Federal Circuit on a writ of mandamus from the Eastern District of Texas. In re Queen's Univ. at Kingston, No. 2015-145 (Fed. Cir. Mar. 7, 2016). Pointing to the inconsistent treatment of patent agent communications in prior district court cases, and the legal nature of a patent agent's work, the Federal Circuit held that communications with patent agents were indeed privileged, but only in the limited context of "obtaining legal advice on patentability and legal services in preparing a patent application." Id. at 18. More
FairWarning or Fair Weather for Patentees?
Following Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), accused infringers have favored the tactic of filing an early motion to dismiss. The perceived effectiveness of these motions, coupled with their potential to nip a litigation in the bud, propelled their use. This trend met resistance in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games America, Inc., No. 2015-1080 (Fed. Cir. Sept. 13, 2016), where claims survived early dispositive motions. But in the recent case FairWarning IP, LLC v. Iatric Systems, Inc., No. 2015-1985 (Fed. Cir. Oct. 11, 2016), the Federal Circuit affirmed the early invalidation of claims under Alice. This further refinement of patent-eligibility jurisprudence is important for all patent attorneys, both prosecutors and litigators. More
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