IN RE: QUEEN'S UNIVERSITY AT KINGSTON, PARTEQ RESEARCH AND DEVELOPMENT INNOVATIONS, Petitioners
Petition for Writ of Mandamus to the United States District
Court for the Eastern District of Texas in No.
2:14-cv-00053-JRG-RSP, Magistrate Judge Roy S. Payne, Judge
J. Rodney Gilstrap.
DANIEL BLACKBURN, Susman Godfrey L.L.P., Houston, TX, argued
for petitioners. Also represented by IAN B. CROSBY, RACHEL S.
BLACK, Seattle, WA.
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.
LOURIE, O'MALLEY, and REYNA, Circuit Judges. Dissenting
opinion filed by Circuit Judge REYNA.
U.S.P.Q.2d 1222] O'Malley, Circuit Judge.
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.
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.
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,
fact discovery, Queen's University refused to produce
certain documents it believed contained privileged
information. It produced three privilege logs that withheld
[118 U.S.P.Q.2d 1223] 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.
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).
Choice of Law
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 World Wide, 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).
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
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) [118 U.S.P.Q.2d 1224] (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.
United States Dist. Court, 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.
United States Dist. Court for Southern Dist., 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.
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.
careful consideration, we concluded that mandamus review of
the district court's discovery order in this case
appeared appropriate. This court has not addressed whether a
patent-agent privilege exists--it is an issue of first
impression for this court and one that has split the district
courts. Immediate resolution of this issue
will avoid further inconsistent development of this doctrine.
See In re MSTG, Inc., 675 F.3d 1337, 1342
(Fed. Cir. 2012) (" Mandamus review is appropriate here
as to the privilege issue. The issue of whether settlement
negotiations are privileged is a matter of first impression
before this court and one on which district courts are
were to deny mandamus, moreover, the confidentiality of the
documents as to which such privilege is asserted would be
lost. In the event that the documents were produced and a
judgment on the merits reached, it would be difficult--if not
impossible--for this court to disentangle the effect of the
production of the allegedly privileged documents from other
considerations that led to the judgment. See
Spalding, 203 F.3d at 804 ( " [W]hen a writ of
mandamus is sought to prevent the wrongful exposure of
privileged communications, the remedy of mandamus is
appropriate 'because maintenance of the attorney-client
[118 U.S.P.Q.2d 1225] privilege up to its proper limits has
substantial importance to the administration of justice, and
because an appeal after disclosure of the privileged
communication is an inadequate remedy.'" ) (quoting
In re Regents of Univ. of Cal., 101 F.3d at 1387).
Understanding that the legal standard for obtaining mandamus
relief is an exacting one, we found it likely satisfied here
and ordered additional briefing and argument on the merits of
the privilege claim asserted.
supplemental briefing, Samsung informed the court that it had
filed a request for inter partes review ("
IPR" ) on the patents-in-suit, that the United States
Patent and Trademark Office (" USPTO" or "
Patent Office" ) had instituted those IPRs, and that the
district court had stayed the proceedings pending a ruling
from the Patent Office. Samsung now argues that the current
stay of the district court action and the existence of the
IPRs constitute changed circumstances that warrant denial of
the petition for writ of mandamus, regardless of the merits.
Samsung Pet'r Br. 17-18.
University filed its petition for writ of mandamus in this
court on July 17, 2015. Dkt. No. 1. The magistrate judge
stayed the production of the relevant documents pending
resolution of that petition in this court. Order Granting
Stay of Production, Queen's (E.D. Tex. July 13,
2015), ECF No. 179. Samsung then moved to stay the
proceedings entirely under the theory that (1) the pending
writ of mandamus would prejudice its ability to prepare for
trial, and (2) the refusal to grant a stay would effectively
give Queen's University the relief it sought, since trial
likely would proceed before this court could resolve the
privilege issue. Samsung's Emergency Motion to Stay
Pending Writ of Mandamus, Queen's (E.D. Tex.
July 20, 2015), ECF No. 189. While that motion was pending,
the Patent Trial and Appeal Board (the " Board" )
instituted IPRs against all asserted claims of the
patents-in-suit. See Queen's (E.D. Tex. August
10, 2015), ECF No. 197; Queen's (E.D. Tex. July
31, 2015), ECF No. 194. The magistrate judge then sua
sponte ordered supplemental briefing on whether
institution of the IPR affects its earlier stay of
Queen's University's discovery obligation.
Queen's (E.D. Tex. Aug. 14, 2015), ECF No. 199.
court concluded--as it had previously found--that the "
production remains stayed pending resolution by the Federal
Circuit." Stay Order at 2, Queen's (E.D.
Tex. Aug. 28, 2015), ECF No. 214. The magistrate judge
further found that:
[g]iven the stay of Plaintiffs' production obligations in
light of their petition for writ, and further in view of the
pending IPR proceedings that have been instituted as to all
asserted claims (Dkt. Nos. 194, 197), the Court hereby STAYS
the instant matter until the later of the Federal
Circuit's resolution of Plaintiffs' writ, or the
PTAB's final adjudication in all instituted IPR
contends that this order means there is no longer any
imminent threat to Queen's University regarding its
production obligations. Samsung Pet'r Br. 17. As
Queen's University noted at oral argument, however, while
the district court did stay the proceedings based on the
IPRs, it invoked only the pending mandamus petition to stay
the production of documents withheld by Queen's
University. Oral Arg. at 02:14-02:59, available at
; see Stay Order, Queen's (E.D. Tex.
Aug. 28, 2015), ECF No. 214 at 2 (" [T]he Court elected
to stay Plaintiffs' production 'pending disposition
of the petition or other order of the Court of Appeals.'
(Dkt. No. 179) That production remains stayed pending
resolution by the Federal Circuit." ). We too do not
read the district court order as foreclosing the possibility
that a denial of the writ will require the challenged
production even if
the remainder of the proceedings is stayed for other reasons.
There is, furthermore, no certainty as to when the IPR
proceedings will end or what precisely those proceedings will
resolve. It remains likely that some or all of the documents
as to which privilege is claimed are at risk of disclosure.
It also remains likely that a panel of this court will be
asked to review the very merits issues this panel already has
considered at length. And, it remains virtually certain that
future district courts will be asked to address almost
identical privilege claims. For these reasons, while the IPR
proceedings and accompanying stay certainly weigh against
mandamus relief, we do not believe those changed
circumstances offset the importance of resolving this issue
and clarifying a question with which many district courts
have struggled, and over which they disagree.
to the merits, Queen's University's right to the
issuance of the writ turns on whether a patent-agent
privilege exists. Because we find that such a privilege
should be acknowledged, we find that Queen's
University's " right to issuance of the writ is
clear and indisputable, and . . . it lacks adequate
alternative [118 U.S.P.Q.2d 1226] means to obtain the relief
sought." Spalding, 203 F.3d at 804-05.
Existence of the Patent-Agent Privilege
federal district courts, the scope of discovery is governed
by Rule 26(b)(1) of the Federal Rules of Civil Procedure,
which provides in relevant part: " Parties may obtain
discovery regarding any nonprivileged matter that is relevant
to any party's claim or defense and proportional to the
needs of the case . . . . Information within this scope of
discovery need not be admissible in evidence to be
discoverable." Thus, while the scope of permissible
discovery is broad, it only encompasses documents relating to
" nonprivileged matter[s]."
501 of the Federal Rules of Evidence addresses what is
privileged. Rule 501 states:
The common law--as interpreted by United States courts in the
light of reason and experience--governs a claim of privilege
unless any of the following provides otherwise:
o the United States Constitution;
o a federal statute; or
o rules prescribed by the Supreme Court.
But in a civil case, state law governs privilege regarding
a claim or defense for which state law supplies the rule of
Fed. R. Evid. 501. " Rule 501 of the Federal Rules of
Evidence authorizes federal courts to define new privileges
by interpreting 'common law principles.'"
Jaffee v. Redmond, 518 U.S. 1, 8, 116 S.Ct. 1923,
135 L.Ed.2d 337 (1996). Rule 501 " did not freeze the
law governing the privileges of witnesses in federal trials
at a particular point in our history, but rather directed
federal courts to 'continue the evolutionary development
of testimonial privileges.'" Jaffee, 518
U.S. at 8-9 (quoting Trammel v. United States, 445
U.S. 40, 47, 100 S.Ct. 906, 63 L.Ed.2d 186 (1980)). Samsung
does not contend that recognition of a patent-agent privilege
is foreclosed by the United States Constitution, any federal
statute, or any rule prescribed by the Supreme Court. We thus
turn to " reason and experience" in order to
determine whether a patent-agent privilege is now
so with caution, however, recognizing that there is a
presumption against the recognition of new privileges.
Federal courts must be cognizant of the age-old principle
that " the public . . . has a
right to every man's evidence." United States v.
Bryan, 339 U.S. 323, 331, 70 S.Ct. 724, 94 L.Ed. 884
(1950). Indeed, the Supreme Court has warned that evidentiary
privileges " are not lightly created nor expansively
construed, for they are in derogation of the search for
truth." United States v. Nixon, 418 U.S. 683,
710, 94 S.Ct. 3090, 41 L.Ed.2d 1039 (1974).
most well-known and carefully guarded privilege is the
attorney-client privilege. It is well established that an
attorney-client privilege exists to " encourage full and
frank communication" between counselor and client and
" thereby promote broader public interests in the
observance of law and administration of justice."
Upjohn Co. v. United States, 449 U.S. 383, 389, 101
S.Ct. 677, 66 L.Ed.2d 584 (1981); accord
Trammel, 445 U.S. at 51 (" [P]rivilege rests on
the need for the advocate and counselor to know all that
relates to the client's reasons for seeking
representation if the professional mission is to be carried
out." ). It is also without question that the privilege
attaches to a communication made " for the purpose of
securing primarily legal opinion, or legal services, or
assistance in a legal proceeding." Spalding,
203 F.3d at 805; see also Upjohn, 449 U.S.
at 389 (stating that legal advice " can only be safely
and readily availed of when free from the consequences or the
apprehension of disclosure" ).
true, moreover, that courts have consistently refused to
recognize as privileged communications with other
non-attorney client advocates, such as accountants.
See Couch v. United States, 409 U.S. 322,
335, 93 S.Ct. 611, 34 L.Ed.2d 548 (1973); see also
United States v. Arthur Young & Co., 465 U.S. 805,
817, 104 S.Ct. 1495, 79 L.Ed.2d 826 (1984) (" In light
of Couch, the Court of Appeals' effort to foster
candid communication between accountant and client by
creating a self-styled work-product privilege was misplaced,
and conflicts with what we see as the clear intent of
Congress." ). The same is true for jailhouse lawyers.
See, e.g., Velasquez v. Borg, No. 93-15566,
1994 WL 327328, at *1 (9th Cir. June 8, 1994) (" Because
[Petitioner] does not contend that he thought [the jailhouse
lawyer] was authorized to practice law, he has not proven a
violation of the attorney-client privilege as traditionally
understood." ); Moorhead v. Lane, 125 F.R.D.
680, 686-87 (C.D. Ill. 1989) (refusing to extend the
attorney-client privilege " to communications made to a
'jailhouse attorney.'" ).
U.S.P.Q.2d 1227] Samsung concedes that, where a patent agent
communicates with counsel or receives communications between
his client and counsel, the attorney-client privilege may
protect those communications from discovery. See,
e.g., Park v. Cas Enters., Inc., No. 08-cv-03,
2009 WL 3565293, at *3 (S.D. Cal. Oct. 27, 2009). It
contends, however, that, where counsel is not involved in the
communications--as Queen's University concedes is the
case here--we should neither expand the scope of the
attorney-client privilege nor recognize an independent
patent-agent privilege to protect such communications from
discovery. For the reasons we explain, we find that the
unique roles of patent agents, the congressional recognition
of their authority to act, the Supreme Court's
characterization of their activities as the practice of law,
and the current realities of patent litigation counsel in
favor of recognizing an independent patent-agent privilege.
Sperry v. State of Florida ex rel. Florida Bar, 373
U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428, 1963 Dec. Comm'r
Pat. 211 (1963), the Supreme Court was faced with a challenge
to the State of Florida's attempt to regulate the
activities of patent agents on grounds that those activities
constitute the practice of law.
The Supreme Court addressed the challenge in two stages:
first, determining whether the activities of patent agents
before the Patent Office constitute the practice of law, and,
second, determining whether, if so, the State of Florida had
the authority to regulate those activities. The Supreme Court
answered the first question in the affirmative and the second
in the negative.
Supreme Court expressly found that " the preparation and
prosecution of patent applications for others constitutes the
practice of law." Id. at 383. The Court
[s]uch conduct inevitably requires the practitioner to
consider and advise his clients as to the patentability of
their inventions under the statutory criteria, 35 U.S.C.
§ § 101-103, 161, 171, as well as to consider the
advisability of relying upon alternative forms of protection
which may be available under state law. It also involves his
participation in the drafting of the specification and claims
of the patent application, 35 U.S.C. § 112, which this
Court long ago noted " constitute[s] one of the most
difficult legal instruments to draw with accuracy."
Id. (citations omitted). Sperry, thus,
confirms that patent agents are not simply engaging in
law-like activity, they are engaging in the practice of law
itself. To the extent, therefore, that the traditional
attorney-client privilege is justified based on the need for
candor between a client and his or her legal professional in
relation to the prosecution of a patent, that justification
would seem to apply with equal force to patent agents.
this threshold conclusion in Sperry is important to
our decision, it is the rest of the Sperry opinion
we find most informative. It is not the fact that--within the
limited authority granted to them by the Patent
Office--patent agents engage in the traditional practice of
law that is the most meaningful takeaway from Sperry
, it is the Supreme Court's explanation of why states may
not regulate that practice of law that lends most support to
the recognition of a patent-agent privilege. In holding that
the State of Florida had no authority to regulate the
admitted practice of law by patent agents, the Supreme Court
emphasized that it is Congress who has authorized and
continues to permit the practice of law by patent agents when
appearing before the Patent Office. See id.
at 379 (" '[T]he law of the State, though enacted in
the exercise of powers not controverted, must yield' when
incompatible with federal legislation. Congress has provided
that the Commissioner of Patents 'may prescribe
regulations governing the recognition and conduct of agents,
attorneys, or other persons representing applicants or other
parties before the Patent Office,' 35 U.S.C. § 31,
and the Commissioner, pursuant to § 31, has provided by
regulation that '(a)n applicant for patent . . . may be
represented by an attorney or agent authorized to
practice before the Patent Office in patent cases.' 37
CFR § 1.31." (citing Gibbons v. Ogden, 22
U.S. 1, 211, 6 L.Ed. 23 (1824) (footnote omitted) (emphasis
added)). In explaining its holding, the Supreme Court
discussed the history of the Patent Office's power to
regulate patent agents. Id. at 388-400. Looking to
legislative history, the Court traced the discussion of
patent agents by Congress " back to 1861, when Congress
first provided that 'for gross misconduct [the
Commissioner of Patents] may refuse to recognize any person
as a patent agent, either generally or in any particular case
. . . .'" Id. at 388 (quoting Act of March
2, 1861, ch. 88, § 8, 12 Stat. 247). The 1869 "
Rules and Directions" issued by the Commissioner
" provided that '(a)ny person of intelligence and
good moral character may appear as the attorney in fact or
agent of an applicant upon filing proper power of
attorney.'" Id. at 388-89 [118 U.S.P.Q.2d
1228] (quoting Rules and Directions for Proceedings in the
Patent Office, § 127 (Aug. 1, 1869)). " From the
outset, a substantial number of those appearing in this
capacity were engineers or chemists familiar with the
technical subjects to which the patent application related.
'Many of them were not members of the bar. It probably
never occurred to anybody that they should be.'"
Id. at 389 (quoting Letter from Edward S. Rogers,
Hearings on H.R. 5527 Before the H. Comm. on
Patents, 70th Cong., 1st Sess. 84 (1928)). In 1899,
because non-attorney agents were found " particularly
responsible for the deceptive advertising and victimization
of inventors" at the Patent Office, the Commissioner
first required the registration of those who practiced before
the Office. Id. at 390 (citation omitted). Then,
" in 1922, the [patent] statute was amended to expressly
authorize the Commissioner to prescribe regulations for the
recognition of agents and attorneys," " to provide
for the 'creation of a patent bar[,]' and 'to
require a higher standard of qualifications for
registry.'" Id. at 390-91 (citations
response to a provision in a proposed bill designed to make
it a criminal offense to misrepresent oneself as a registered
patent practitioner, Congress discussed the distinction
between patent lawyers and non-lawyer agents. Id. at
393. " [T]ime and again it was made clear that the . . .
provision was not intended to restrict practice by agents,
but was designed only to prevent them from labeling
themselves 'patent attorneys,' as the Patent Office
had theretofore permitted." Id. (footnote
omitted). Congress made clear that it did not intend to
hinder the Patent Office's right to allow non-attorney
agents to prosecute patents before it, but only to prevent
them from improperly holding themselves out as attorneys:
The proposed bills would not have affected " any
engineers or draftsmen from doing those things which they
have always been doing before the Patent Office" ; the
bills sought " to bring about no change in the status of
the many men now registered and entitled to practice
before the Patent Office, regardless of whether they are
members of the bar or not . . . ." (Emphasis added.)
" [T]here are quite a number of solicitors of patents
who are highly qualified and who are not members of the bar,
who never graduated at law and were never admitted to the
bar. But this bill doesn't disqualify those men. They
can continue to qualify as patent agents."
(Emphasis added.) When asked " [w]hat is going to be the
difference in the legal prerogatives of the agents and the
others that come in," the Commissioner of Patents
responded that " [ t ] heir rights in the
Patent Office will be exactly the same. Their rights in
the courts will be different." (Emphasis added.)
Id. at 393-95 (footnotes omitted). In view of this
storied history, the Supreme Court found " strong and
unchallenged implications that registered agents have a right
to practice before the Patent Office." Id. at
395. Samsung does not challenge the proposition that the
prosecution of patents before the Patent Office constitutes
the practice of law or that non-lawyer patent agents are
allowed to engage in such practice under federal law. Nor can
it, given the Supreme Court's clear language in
debate about whether to allow non-attorney patent agents to
practice law before the Patent Office " received
continuing attention both in and out of Congress during the
period prior to 1952." Id. at 398. In
Sperry, the Court found that the rights conferred to
patent agents are federal rights and that Congress expressly
permitted the Commissioner to promulgate regulations that
allow patent agents to practice before the Patent Office in
the 1952 Patent Act. Ultimately, Congress endorsed a system
in which patent applicants can choose between patent agents
and patent attorneys when prosecuting patents before the
Patent Office. Based on this, the Court found that the State
of Florida could neither prohibit [118 U.S.P.Q.2d 1229] nor
regulate that which federal law allowed. Id. at 379.
" [t]he Office--may establish regulations, not
inconsistent with law, which--may govern the recognition and
conduct of agents, attorneys, or other persons representing
applicants or other parties before the Office." 35
U.S.C. § 2(b)(2)(D). Pursuant to these powers, the
Office has determined that " [a]ny citizen of the United
States who is not an attorney, and who fulfills the
requirements of this ...