Legal Case Summary

We have one case this morning in Ray Queens University at Kingston evolving petition for a rid of mandamus and we'll hear from Mr. Crosby. It's Mr. Blackburn, Mr. Crosby's. Oh, sorry. That's okay. May please the court and good morning honors. My name is Sean Blackburn. I represent Queens University at Kingston and part of research and development innovations. The petitioners asked this court for a rid of mandamus directing the district court for the eastern district of Texas to withdraw its order, compelling production of documents, which reflect communications between Queens University's employees and the registered patent agents. What's your response to the argument that even if this is a privilege that we should acknowledge that mandamus is not appropriate in this case because of the stave in light of the exam? Sure. We'll read exam. Well, one, the stave was not simply in light of the reexample. In fact, Samsonl did not move first day for interview the IPR. They moved first day in view of the mandamus petition. The court granted it on both grounds though I would argue that he more relied on the mandamus petition. He actually found that some of the factors would have weighed against them on the IPR because they'd delayed. Granted, it is a date though, in view of the IPR and the mandamus petition. It will not come unstayed until both have been decided. So if we play this out hypothetically, if this court was to say, well, mandamus is not appropriate. Well, that's one of the triggering events, right? Because you issued an opinion saying mandamus is not appropriate

. Then, if in the way we come out of IPR, that would be the second triggering event. At that stage, we will have to produce the documents, no doubt. Right? The case will go on and we will not have another chance to mandamus. I seriously doubt Judge Payne will state a production of these documents again for us to kind of enter a Groundhog's Day scenario and remand amus's order. Moreover, we are currently under a court order that once this mandamus decision has come down, seven days after that, we are to produce these documents. It would be affected by the other stay. It's not clear to me, Your Honor. That's the question. We would once say this court was to die of mandamus position. We would need to seek guidance from a district court as to whether or not he would want us to produce those or not. It's simply not clear to me. If we are required to produce those, Samson could in fact use those documents. One, they're obviously they would have access to them. And two, they could seek to use them in the IPR. They could seek leave of the court. They could seek and leave of the board to use those documents. Just as clean as done with Samson's documents in this case. Okay. What makes this your request extraordinary? I mean, we view Ritz and mandamus as requiring or being based on extraordinary relief, special circumstances. And the Penn agents have been allowed to practice before the PTO, almost from its very inception. Right

. And it seems to me there's not a lot of cases on this particular issue simply because it's not a big issue. Why should we even entertain this under as a Ritz and mandamus issue? Well, I would disagree that it's not a big issue. There are about 12 or 13 opinions and most of those and those have been written over the course of about 50 years. But these are discovery orders. Just as the court in this case did not issue a written opinion. Most of the time in discovery disputes happen to the court. There are no written opinions. I can tell you that personally this issue is a reason twice for me this year. But that's because we usually treat rulings pertaining to discovery as part of the entire appeal. What's just been a final judgment that she... Well, no, that's... I mean, obviously generally we do. But my point is that if you're saying this issue doesn't come off that often. I'm not... I'm saying I don't agree that that is true in the district courts

. There are about 12 or 13 opinions. But the reality is that's the tip of the iceberg because discovery opinions usually don't get written. When party moves to compel, the judge usually will say either an oral argument, what to aes leaning or will it just simply rule from the bench and it will issue an order. The order will be two or three sentences. Getting an actual opinion under discovery issue is fairly rare in my experience. And as I said, I've had this issue rise twice. Also, the reason why I believe it's extraordinary is for the same reason that MSTG was. The same reason that Henry's falleting was. Henry's falleting dealt with a invention disclosure record. It's kind of the same kind of things that are going on here. These are communications that are made for the purpose of patent prosecution. And they come up because parties want to compel the production of those documents. And just as with respect to that and the settlement privilege in MSTG, there's really no other way for this kind of legal issue to be resolved. I mean, generally speaking, it's unlikely that on direct appeal, they will be able to raise this issue. Patent cases generally involve three issues, infringement and validity damages. They're having an expert opinion. It's unlikely that we'll be able to show reversible error to show that the mere compulsion of these documents has so tainted the case that this course should reverse on appeal. Are you asking us to create a new privilege for Patent Nages? Are you asking us to say that the umbrella of the attorney-client privilege covers these communications? I think it can be conceptualized either way and I don't want to get into semantics. I think that's the..

. That's what law is all about. Well, maybe not. With respect to the justification for the privilege, I think it extends both to attorneys and agents. With respect to prosecution, they do the exact same things. They're authorized to do the exact same things. They have the same clients seeking the same advice. Some courts have treated it as a standalone privilege. Others have said it's the attorney-client privilege that extends to Patent Nages. I think the opinion could be written either way and be fully justified. Rule 501 certainly allows the recognition of new privileges. But even if it is written and considered a new privilege. Would you say that it's an analogous privilege? I would say it's an analogous privilege. I absolutely would. For the reasons that all of the reasons that attorney-client privilege apply to Patent prosecution, they should apply with a patent agent. Whether that means that the attorney-client privilege extends to cover agents or it is a separate rule 501 privilege. Either way, it would be fine with us. But as if we were to call it a separate privilege, then we run smack up against the strict presumption against the creation of new privileges, don't we? Yeah, that is true. Although I think it can still be reasoned at, you know, rule 501s is reasoning the experience just by the creation of a privilege. I think reasoned certainly works here. Well, what about experience? There hasn't been this privilege for all these years and everything seems to have been working fine. Well, I'm not sure that that's entirely true

. In Reamp-A-Silent is a 1978 case. The Verna-Chona's 1975. Sparry only came down in 63. So in some sense, this privilege has existed for 40 years, depending on the district court and what you are in. The cases are fairly evenly split. I think there's a slight majority in favor of not recognizing the privilege. But the reality is, they're operating in a gray area, which is why I think, you know, the guidance on this issue is needed. Do you understand, do you know that the PTO was looking into this? I do know that the PTO was looking into this. Although, what, the PTO, if you looked at the PTOs, they issued kind of a call for papers. And they, what they asked, if you read what they say on the top left side says, should the courts recognize this privilege? They didn't ask should Congress and student privilege should the PTO declare by FIOT that there is no privilege. They were asking whether or not the courts should recognize this privilege. That's what it says. Is there anything that the PTO could do by regulation in order to institute an analogous type privilege? Well, it's interesting because it appears as though under the previous professional rules that they may have. So the rules that were in effect from 99 to 2013, the sections, the regulations have changed, I think, three or four times over the past four years. And they changed the last time in 2013. The rules that were in effect from 99 to 2013. In their advance notice of rulemaking, they said that in certain situations, communications with patent agents are considered privileged. They cited an ampah sill in front of that proposition. If you look at 37 CFR 10.57, which is the prior regulation on governing confidentiality, it expressly defines confidence as information covered by the attorney client and agent client privilege. So that makes sense

. I think they have, you know, expressed in that. Do they have that kind of substantive rulemaking authority to create a privilege? I think with respect to practice before them, they do. Could they bind the courts? I'm not so sure. I was still, you know, even if it's not tied to. They can tell agents that agents have to maintain confidence. They absolutely can. And they absolutely can't say that they have to maintain it as privilege, which would put agents in a very strange position. And they have, have them. And they have. Right. But they can't bind the courts. I suspect not. But I think they should still be, you know, even if they're on tie-down to Chevrolet and the difference on that point. I think, you know, uniformity and skidboard difference are certainly appropriate. Isn't that the issue that we should be reviewing, whether the PTO has the authority to extend a privilege or whether it has the authority to implement by regulation, something analogous to the privilege? No, I don't think so because I don't think that privilege could bind this court. If the PTO is to actually say, you know, there's a privilege court should respect this. I don't think that they could do that. But Mr. The PTO action. What, I'm sorry. We're not reviewing the PTO action

. Exactly. So they couldn't, you know, they couldn't issue a regulation, I think, with respect to that kind of collateral type of effect. But certainly the PTO has the authority to regulate the practice of patent agents and to require them to keep these, these communications privileged and they did. If we were to recognize a privilege, how far could it extend? I think it would be co-extensive with the attorney client privilege, with respect to patent prosecution matters before the United States patent office. Okay. So if a patent agent were to, for instance, give a validity opinion with respect to a third party's patent, that wouldn't be covered by this privilege. That, I would agree, such as the kind that comes up in the case of willfulness. That's right. And I frankly, I think something like that with respect to third party's patents is probably not sanctioned by Sparry either. Sparry does talk about patentability opinions. But that's the kind of opinion that a prosecutor has to give to his client prior to filing patent and ethical conditions. It's not an issue just simply extending the existing privilege. We would have to draft an entire new privileged, tailor, custom made just for patent agents. No, I do not believe so. There actually are pre-existing rules. There are only a couple cases from this court, such as spawning, that deal with what kind of communications between a patent prosecutor, writ large attorney or agents, are covered by the attorney client privilege. District courts have developed a doctrine on that. Certain things, they've stated, you know, things that are mere conduits of the patent office are not privileged. I think it would be co-extensive with patent prosecution practice, and it would be the same with this respect to an agent or attorney. I don't think the same. It would be essentially co-extensive with Sparry

. With the description of the activities that Sparry recognized as the practice of law sanctioned by the federal government. Exactly your honor. And I'm nervous. I'm well as part of the bottle of time at this point. If there are no questions, I'd like to reserve the rest of my time. We will do that, Mr. Blackburn. Thank you, Robert. May I please the court. Matthew Wolf, Arnold and Porter on behalf of Samsung. I would like to say that the question is, um, chainy identified three factors that this panel should consider when deciding whether Mandamins should issue. And I'd like to invert the order of those considerations in light of some of your honor's questions so far this morning. The final consideration is whether it's appropriate under the circumstances. Your honor, you asked about whether or not this could be considered after a full appeal. And the answer was, I tried to write it down as best I can. It's unlikely to show reversible error. Well, I would suggest that a Mandamins petition that's unlikely to involve reversible errors, not a Mandamins petition at all. Can't involve the abuse of discretion or use of patient power. It's just not that big a deal in this case. Second factor, as your honor raised, the case stayed below. The comments council made, I respectfully disagree with his honor stayed the case in its entirety, depending the later of the two events

. If this court were to, as we believe it should say that Mandamins should not issue and we go on to the IPR, all orders would be stayed, including the order to compel the production. We would not get the documents unless and until we don't have the stay order in our record. Do you agree with the characterization that essentially the lower court said that the penancy of the court was the Mandamins was really the primary grounds for the stay? No, you're right. There was two reasons. It was the IPR and the Mandamins. The court expressed frustration that council for Queens was not producing the documents. There was clearly that sentiment, but there was no suggestion that there's a primary and a secondary reason for the stay. There were two reasons for the stay. The evidence of that is the fact that the lifting of the stay is triggered by one, both events have to be done with. If it was the mandamus petition, that was the dog and the IPR that was the tail, presumably the court would have said, all lift the stay if mandamus, if and when mandamus is resolved, regardless of what happens in the patent office with the IPR. The evidence, the order itself suggests that they were equally important to the court. Do you agree that it's unclear whether or not upon issuance of any order from this court that that would trigger the obligations? No, I think it is abundantly clear that whatever this court does, that the production of documents will not occur unless and until the IPR is done and claims come back. This case is stay. There will be no production pursuant to this case or pursuant to orders in this case, unless and until the claim survived IPR. Well, why shouldn't we, even if this isn't a perfect vehicle for mandamus, why shouldn't we say that this is an important enough issue that will rarely come before us? And there's an obvious split among the district courts that needs to be resolved so that we should answer the question, regardless of that final prompt. Understood. So let me add one more to the final prompt and then explain, respond your answer in a way to the first two prompts. And your honor already raised it and that is that there is consideration, there is active discussion in the intellectual property community about whether through regulation or going through Congress, a national and indeed international homogenization for lack of a better term should be, should be ruled. And to have this court in parallel, particularly on a mandamus petition, without the normal weighing in of a meeky that would happen if something was truly important without the normal appeal that essentially this court should jump in front of that line. Absent, an appropriate vehicle, I would suggest that that's not the right circumstance. We're not jumping, we wouldn't be jumping in front of a line, we would be deciding a case before us

. Your honor, what rule 501 and what Jaffee suggests 501 should be found is that a new privilege, and let's be clear, this would be a new privilege. Tramble and Jaffee both make clear that the attorney client privilege is based on the status of the individual, not the substance of the communication. So you can't argue a privilege by analogy, that doesn't work under the Supreme Court doctrine that binds this court. The first honor to me, clear, is that the attorney client privilege, the analogy that's trying to draw or to suggest that all Sparry was talking about was the unauthorized practice of law. And in fact there are courts that have rejected the notion that Sparry is broader than that. But Sparry did begin with the proposition that what patent agents are doing before the PTO is the practice of law. Yes, Your Honor, there's no doubt about that. At one court, the pronunciation escapes me, but revastigain, I believe it was, called it a subspecies or subgenre of law, which by the way is another reason why we should let Congress do this job not. At least not on a mandamus petition. And this is an issue that was only lightly touched upon in opening remarks, is that a patent agent in this case in fact has given advice on issues of infringement. And we can see that on appendix, a 90 and a 96 on issues of monetization. We can see that on a 157 on issue of damages. We can see that on a 159. But those even under the proposal from your friend on the other side, those wouldn't be covered by the premise that they're asking be created. Agreed, Your Honor. But think of the, just on the purely practical level, the morass that this would create. If there was just a general saying that the patent offices has defined the scope of the privilege by defining the scope of the activity. Well, then what is the district court supposed to do with a 2000 entry privilege log? Is it supposed to go entry by entry and see whether intermixed in the purportedly prosecution documents? Are discussions of infringement? Are discussions of validity of third party patents, is your own arrays? Are discussions of damages? Well, presumably if the privilege was defined and delimited, then the obligation would be on the party asserting the privilege to only put on that log the things that are privileged, which would greatly narrow what the district court had to look at or had to examine in-campus. Hypothetically, Your Honor, but here we have notwithstanding their argument that they're seeking a very narrow patent agent privilege, 2000 entries, 1800 of which on their face would seem to be beyond the scope of the patent agent privilege they're seeking in this case. So again, why this is not an ideal vehicle to say the least for an analysis of an issue like this? To get into the fundamental point, why shouldn't this be done? Jaffe suggested that the most important policy consideration is the search for the truth. That is the presumption. That is the predominant consideration. If a patent agent privilege is put in place to the extent it's important at all in your honor, you raise an interesting question just how important is this? I mean, it hasn't come up before in the ordinary course. Pat and agent seem to be doing their business just fine for the last 50 years. It's not clear. We don't decide issues from the basis of how often they have come up or not come up in the past. We deal with issues as they come up before us. Your Honor, you do in the ordinary course, but on Mandamus, it does matter how important it is. Deciding whether a Mandamus petition should issue, the import, the severity, the use Serpentive, is that how you pronounce that word from Tramble? The use Serpentive nature of what the district court does. It never used it before today, Your Honor. That comes into play. So you're absolutely right, Your Honor. If this had come up through the ordinary course, through an ordinary appeal, with the full record to see is this important, is it not? Where if Amiki wanted to weigh in, they could, because this obviously affects the patent community potentially, all of that would make sense. But when it comes talking about Mandamus, that's a very different question. And then it does matter, Judge Rainer's question is precisely on point, is this such a big deal? But assuming it is a big deal, if, for example, a patent agent discusses with the inventor 10 years ago, 12 years ago, with the time of invention, a potential on-sale bar activity, or a public use activity, and the patent agent decides, well, I don't think it was on-sale bar, so we don't need to disclose it. Well, if we never find out about that, we, as the defendants in this case, had no way to test whether it was an on-sale bar. How would that be different if it was an attorney? Well, Your Honor, we've decided for time in memoriam that attorneys were willing to sacrifice some truth finding for the attorney client privilege. But what Jaffee tells us is every time we want to find a new privilege, we have to ask the question, is the desire to find the truth outweighed by an important, fundamental public good? So we can't say we can't argue by analogy. Jaffee tells us that's not the right analysis to take. We have to say, in this instance, forget what already exists. We might decide that attorney client privilege, if we were sitting around having a cup of coffee, that attorney client privilege should be tail back in light of what we know. But that's water under the bridge

. That is the predominant consideration. If a patent agent privilege is put in place to the extent it's important at all in your honor, you raise an interesting question just how important is this? I mean, it hasn't come up before in the ordinary course. Pat and agent seem to be doing their business just fine for the last 50 years. It's not clear. We don't decide issues from the basis of how often they have come up or not come up in the past. We deal with issues as they come up before us. Your Honor, you do in the ordinary course, but on Mandamus, it does matter how important it is. Deciding whether a Mandamus petition should issue, the import, the severity, the use Serpentive, is that how you pronounce that word from Tramble? The use Serpentive nature of what the district court does. It never used it before today, Your Honor. That comes into play. So you're absolutely right, Your Honor. If this had come up through the ordinary course, through an ordinary appeal, with the full record to see is this important, is it not? Where if Amiki wanted to weigh in, they could, because this obviously affects the patent community potentially, all of that would make sense. But when it comes talking about Mandamus, that's a very different question. And then it does matter, Judge Rainer's question is precisely on point, is this such a big deal? But assuming it is a big deal, if, for example, a patent agent discusses with the inventor 10 years ago, 12 years ago, with the time of invention, a potential on-sale bar activity, or a public use activity, and the patent agent decides, well, I don't think it was on-sale bar, so we don't need to disclose it. Well, if we never find out about that, we, as the defendants in this case, had no way to test whether it was an on-sale bar. How would that be different if it was an attorney? Well, Your Honor, we've decided for time in memoriam that attorneys were willing to sacrifice some truth finding for the attorney client privilege. But what Jaffee tells us is every time we want to find a new privilege, we have to ask the question, is the desire to find the truth outweighed by an important, fundamental public good? So we can't say we can't argue by analogy. Jaffee tells us that's not the right analysis to take. We have to say, in this instance, forget what already exists. We might decide that attorney client privilege, if we were sitting around having a cup of coffee, that attorney client privilege should be tail back in light of what we know. But that's water under the bridge. For each new privilege, we have to ask the question, a new. Does the loss of the truth, is that outweighed or does it outweigh the benefits? And your, your Honor asked a critical question, which is, what are the particular benefits here in this case of the Pat Navy Agent privilege? And in Lawson, the court denied, mandamus, because there were no particularized explanations of what the harm was. And here, just as in Lawson, there is no particularized explanation of what the harm is. Do you see any alternative forage relief? What are the petitioner? At the end of the day, of course, if, if, if these documents are produced, and if they are relevant to issues in this case, and if the judge considers them or sends them to the jury, and this court ultimately decides that there should be a privilege, and those documents shouldn't have been sent considered to the judge for whatever purpose Markman, or Markman's already done, but some rejudgment. Or if it goes to the jury, and the jury decides something based on what the patent agent said, then the court can say there was a risk of error. If we, if we find there's no privilege, on these circumstances, and the patent agent has to cut up these documents, isn't he then in violation of the PTO rules, and wouldn't we be putting that person in a conflict situation? Absolutely not, Your Honor, Section 106, the very last line of 106, and I'm going to paraphrase it says, unless required to produce under for other purposes or other circumstances. So the confidentiality rule specifically says, Does that say other purposes, or does that say duty of disclosure? I, I, it's a confidentiality provision. I believe it's 106. I'm speaking off the top of my head, Your Honor. But I believe it's the very last line of .106. That, that, that, that patent agent would be protected by. Exactly, absolutely. That specifically called out as, as. And in each instance, there would have to be a court order to disclose. And that's the way we are, depending on which jurisdiction you're in, that's, that's the place we are. And again, let's not forget the context we're in. I know I'm being beating a long dead horse here, but we're up here on mandaimans. And whether or not we believe intellectually that someday there should be a patent agent privilege, and that that should be defined in certain ways with meets and bounds. The question is, under jaffy, specifically, and under Mohawk more generally, is this the case that deserves mandaimans? Are there other adequate means? Or is this being used as a substitute for a field process? We have yet not heard a single specific example of how queens will be heard if these documents are produced, and then at the end of the day they shouldn't have been. I mean, odds are we, we've read file histories

. For each new privilege, we have to ask the question, a new. Does the loss of the truth, is that outweighed or does it outweigh the benefits? And your, your Honor asked a critical question, which is, what are the particular benefits here in this case of the Pat Navy Agent privilege? And in Lawson, the court denied, mandamus, because there were no particularized explanations of what the harm was. And here, just as in Lawson, there is no particularized explanation of what the harm is. Do you see any alternative forage relief? What are the petitioner? At the end of the day, of course, if, if, if these documents are produced, and if they are relevant to issues in this case, and if the judge considers them or sends them to the jury, and this court ultimately decides that there should be a privilege, and those documents shouldn't have been sent considered to the judge for whatever purpose Markman, or Markman's already done, but some rejudgment. Or if it goes to the jury, and the jury decides something based on what the patent agent said, then the court can say there was a risk of error. If we, if we find there's no privilege, on these circumstances, and the patent agent has to cut up these documents, isn't he then in violation of the PTO rules, and wouldn't we be putting that person in a conflict situation? Absolutely not, Your Honor, Section 106, the very last line of 106, and I'm going to paraphrase it says, unless required to produce under for other purposes or other circumstances. So the confidentiality rule specifically says, Does that say other purposes, or does that say duty of disclosure? I, I, it's a confidentiality provision. I believe it's 106. I'm speaking off the top of my head, Your Honor. But I believe it's the very last line of .106. That, that, that, that patent agent would be protected by. Exactly, absolutely. That specifically called out as, as. And in each instance, there would have to be a court order to disclose. And that's the way we are, depending on which jurisdiction you're in, that's, that's the place we are. And again, let's not forget the context we're in. I know I'm being beating a long dead horse here, but we're up here on mandaimans. And whether or not we believe intellectually that someday there should be a patent agent privilege, and that that should be defined in certain ways with meets and bounds. The question is, under jaffy, specifically, and under Mohawk more generally, is this the case that deserves mandaimans? Are there other adequate means? Or is this being used as a substitute for a field process? We have yet not heard a single specific example of how queens will be heard if these documents are produced, and then at the end of the day they shouldn't have been. I mean, odds are we, we've read file histories. The odds are the vast majority of the documents that are on this privilege log are irrelevant. But the two or three or four that might be important, well, maybe they're important because they get it at the truth, or maybe they're prejudicial. But we're telling the district court, we're not going to trust you to weed out what's prejudicial and shouldn't be in front of the jury. For example, if the patent agent says, I don't think the claim should be read that broadly, and the judge says quite rightly, well, if he's not going to skill in the art, that's not relevant to the analysis anyway. Versus something that may be probative, like the hypothetical I gave you before, there's an on sale bar activity that we don't know about sitting here today that we'd learn about if we got these documents. But the district judge is perfectly, remember, we're not done when the district court orders production. Then we have to prove that they're relevant and that relevance outweighs the prejudice before we can use them in any way. So that's another buffer against the risk that they're concerned about. Again, the risk not being specified here at all. And then the next step is if the judge makes a mistake and lets something in that this court ultimately says was prejudicial, well, then at the end of the appeals process, this court can say, sorry, you have to do it again. That's the fact that the third factor would be about the last thing the district court would want, right? Which would tend to motivate them to keep the documents, if it was a close call, would tend to motivate the court to not allow us to use it in front of the court's purposes, the jury purposes. I want to get to the final standard in my last minute if it's okay. In order for mandamus to issue, there has to be a clear and disputable right of relief. Jaffee says there are three things you look at when deciding whether there's clear and disputable rights. First, what have the States and lower courts done? Here, the States have done nothing as a matter of legislature. There's nothing. And ask for the cases we counted 27 cases, 18 of which said no patent agent privilege. How would the States even have occasion to care? Well, if you look at the commentators, Your Honor, and the PTO discussion, this comes up a lot in now. Practice cases, for example, this comes up in product liability cases. Those are in judge in Professor Frost's statements to the patent office, for example, he discusses those. So the States have addressed privileged issues routinely, but not this one

. The odds are the vast majority of the documents that are on this privilege log are irrelevant. But the two or three or four that might be important, well, maybe they're important because they get it at the truth, or maybe they're prejudicial. But we're telling the district court, we're not going to trust you to weed out what's prejudicial and shouldn't be in front of the jury. For example, if the patent agent says, I don't think the claim should be read that broadly, and the judge says quite rightly, well, if he's not going to skill in the art, that's not relevant to the analysis anyway. Versus something that may be probative, like the hypothetical I gave you before, there's an on sale bar activity that we don't know about sitting here today that we'd learn about if we got these documents. But the district judge is perfectly, remember, we're not done when the district court orders production. Then we have to prove that they're relevant and that relevance outweighs the prejudice before we can use them in any way. So that's another buffer against the risk that they're concerned about. Again, the risk not being specified here at all. And then the next step is if the judge makes a mistake and lets something in that this court ultimately says was prejudicial, well, then at the end of the appeals process, this court can say, sorry, you have to do it again. That's the fact that the third factor would be about the last thing the district court would want, right? Which would tend to motivate them to keep the documents, if it was a close call, would tend to motivate the court to not allow us to use it in front of the court's purposes, the jury purposes. I want to get to the final standard in my last minute if it's okay. In order for mandamus to issue, there has to be a clear and disputable right of relief. Jaffee says there are three things you look at when deciding whether there's clear and disputable rights. First, what have the States and lower courts done? Here, the States have done nothing as a matter of legislature. There's nothing. And ask for the cases we counted 27 cases, 18 of which said no patent agent privilege. How would the States even have occasion to care? Well, if you look at the commentators, Your Honor, and the PTO discussion, this comes up a lot in now. Practice cases, for example, this comes up in product liability cases. Those are in judge in Professor Frost's statements to the patent office, for example, he discusses those. So the States have addressed privileged issues routinely, but not this one. And more importantly, as I said, the district courts, 18 of 27 have said no patent agent privilege. So there's no consensus. How can it come up in malpractice cases when the privilege belongs to the client? If there's a malpractice, the lawyer can't claim the privilege? Well, I have to think this through. I'm just citing what the professor said in his brief. But I presume it would come up because the lawyer would want to show what they had done. The patent agent would want to say, this is the discussions we had to defend myself in the patent. And the client would say, that's attorney-climed privilege. Why don't they sue the lawyer? They've waived the patent. That's true. So maybe the professor was wrong in that instance. But Congress, the second issue is Congress, has not said anything on the topic. And the third factor, Jackie Sites, is the Judicial Conference Advisory Committee, which has not said anything on the topic. So far from there being a consensus of the world out there that there should be a patent agent privilege, the few that have spoken on have said two to one, there should not be. Thank you, Mr. Wolfe. Thank you, Your Honor, for your time. Good luck, Perne. It has a little butle time to in half minutes. Thank you, Your Honor. Can you start one of the major points that was made on the other side, which is that you have not really articulated the harm that you would suffer? The harm, I will put it this way, it is very difficult to articulate the exact harm without waiving the privilege. Without telling you exactly what is in the documents, I can't tell you exactly how Samson would rest assured

. And more importantly, as I said, the district courts, 18 of 27 have said no patent agent privilege. So there's no consensus. How can it come up in malpractice cases when the privilege belongs to the client? If there's a malpractice, the lawyer can't claim the privilege? Well, I have to think this through. I'm just citing what the professor said in his brief. But I presume it would come up because the lawyer would want to show what they had done. The patent agent would want to say, this is the discussions we had to defend myself in the patent. And the client would say, that's attorney-climed privilege. Why don't they sue the lawyer? They've waived the patent. That's true. So maybe the professor was wrong in that instance. But Congress, the second issue is Congress, has not said anything on the topic. And the third factor, Jackie Sites, is the Judicial Conference Advisory Committee, which has not said anything on the topic. So far from there being a consensus of the world out there that there should be a patent agent privilege, the few that have spoken on have said two to one, there should not be. Thank you, Mr. Wolfe. Thank you, Your Honor, for your time. Good luck, Perne. It has a little butle time to in half minutes. Thank you, Your Honor. Can you start one of the major points that was made on the other side, which is that you have not really articulated the harm that you would suffer? The harm, I will put it this way, it is very difficult to articulate the exact harm without waiving the privilege. Without telling you exactly what is in the documents, I can't tell you exactly how Samson would rest assured. You can't see the harm. You can't see the harm. You can't see the harm, the discouragement of free and open communication, which is the purpose of the process. That is the harm for all people who seek to use patent agents, just as they seek to use patenters. But in this case, our harm would be that they would be able to use these documents against us. Even post judgment, we get a reversal on a pill. But that is assuming we go booze, right? That is assuming we lose. That is true. At this point, you don't know if you are going to lose or not. That is true. And that is true document. I apologize. The documents are produced. Then the course still has to make some sort of admissibility ruling on. Absolutely true. And that is another point. You don't know how you are going to come out at that point, either. Absolutely true. And that was just as true in MSTG in which this Court conducted a misdemeanor review. It was just as true in in-respaulting in which there was mandamus review and in-reregions of California in which there was mandamus review. Those are all privileged issues

. You can't see the harm. You can't see the harm. You can't see the harm, the discouragement of free and open communication, which is the purpose of the process. That is the harm for all people who seek to use patent agents, just as they seek to use patenters. But in this case, our harm would be that they would be able to use these documents against us. Even post judgment, we get a reversal on a pill. But that is assuming we go booze, right? That is assuming we lose. That is true. At this point, you don't know if you are going to lose or not. That is true. And that is true document. I apologize. The documents are produced. Then the course still has to make some sort of admissibility ruling on. Absolutely true. And that is another point. You don't know how you are going to come out at that point, either. Absolutely true. And that was just as true in MSTG in which this Court conducted a misdemeanor review. It was just as true in in-respaulting in which there was mandamus review and in-reregions of California in which there was mandamus review. Those are all privileged issues. All of which were uncertain. They didn't know that the settlement agreements at MSTG would make it into the expert report. That they would be admissible a trial. That they would be in relative to a reasonable royalty. But this Court did conduct a mandamus review because the factors that were laid out in MSTG were met. And they are met in this case as well. This is four corners on it. Samson is not argued otherwise. In a minute that I have, I would like to address the Court's state order in this case. First, how do you justify the breadth of the claim of privilege here? Okay. They are using the subject lines from the emails that are on the privilege long. They are not using the descriptions of what is actually contained in those emails. I, unlike Mr. Wolf, have looked at these documents. I believe that they are privileged. I don't believe that they extend beyond the patent age or privilege at any rate. I don't justify, I don't need to justify the breadth because the district court did not rule on that. They did not raise it. They did not meet and confer on it. They have long since waved it. We made that point from the district court in our surreply and he in turn did not rule on it because it was waved, not raised, not met and conferred on it

. All of which were uncertain. They didn't know that the settlement agreements at MSTG would make it into the expert report. That they would be admissible a trial. That they would be in relative to a reasonable royalty. But this Court did conduct a mandamus review because the factors that were laid out in MSTG were met. And they are met in this case as well. This is four corners on it. Samson is not argued otherwise. In a minute that I have, I would like to address the Court's state order in this case. First, how do you justify the breadth of the claim of privilege here? Okay. They are using the subject lines from the emails that are on the privilege long. They are not using the descriptions of what is actually contained in those emails. I, unlike Mr. Wolf, have looked at these documents. I believe that they are privileged. I don't believe that they extend beyond the patent age or privilege at any rate. I don't justify, I don't need to justify the breadth because the district court did not rule on that. They did not raise it. They did not meet and confer on it. They have long since waved it. We made that point from the district court in our surreply and he in turn did not rule on it because it was waved, not raised, not met and conferred on it. Well, I'm not sure how it was waved. If there are arguments, there is no privilege period regardless. They don't really have to make the argument of the subset as assuming I lose that point. Let's say the privilege has to be narrow. Well, I'm not saying the privilege has to be narrow. I'm talking about, I thought we were talking about the specific entries on the log. Because we agree that the privilege should be narrow. I think that if the privilege exists, both parties are a full agreement that it's only respect to patent prosecution before the USPTO. Justice was laid out in spary. If it exists. But it certainly wouldn't cover infringement opinions. I agree. I agree. I agree. I, 100% agree. I disagree that those communications that are on the privilege log actually pertain to that. Some of the subject lines say all kinds of things that have nothing to do with patent prosecution at all. But the content of those communications between Mr. Schribner and the employees does. And that's why we think that it definitely covers that. So, anyway, I don't believe that question is for you

. Well, I'm not sure how it was waved. If there are arguments, there is no privilege period regardless. They don't really have to make the argument of the subset as assuming I lose that point. Let's say the privilege has to be narrow. Well, I'm not saying the privilege has to be narrow. I'm talking about, I thought we were talking about the specific entries on the log. Because we agree that the privilege should be narrow. I think that if the privilege exists, both parties are a full agreement that it's only respect to patent prosecution before the USPTO. Justice was laid out in spary. If it exists. But it certainly wouldn't cover infringement opinions. I agree. I agree. I agree. I, 100% agree. I disagree that those communications that are on the privilege log actually pertain to that. Some of the subject lines say all kinds of things that have nothing to do with patent prosecution at all. But the content of those communications between Mr. Schribner and the employees does. And that's why we think that it definitely covers that. So, anyway, I don't believe that question is for you. Those communications are relevant material to, let's say, the prosecution. What effect does a duty of candor have on heavy disclosals, anyway? And by duty of candor, do you mean duty of candor to the USPTO? I think, again, if you're talking about claims scope. Let me give you a hypothetical. It comes from my practice of patent agent before I became attorney. Oftentimes, clients will come to you and they think they've invented the world. They haven't. They haven't invented something but they haven't invented the world. And you have to have very frank conversations with these clients about what exactly is they have invented, what their claims should cover. And the whole point with respect to a patent attorney, and this is why privileged covers patent attorneys practicing for the PTO, is that they should be able to have those conversations without them being used against them later. And we simply submitted that same privilege. Should cover patent agent. What about a conversation where the lawyer says, 100% convinced that this prior art is relevant, it needs applicable, and the client says, no, you're not to use it, and you're not to standing about this. Is there a duty of candor there? I think that probably is. In fact, I'm sure that there is. That you may have to. I apologize. I'm not super familiar with the disciplinary rules. Right. With respect that you would have to disclose or withdraw. The same way in turn would the. Also, there's definitely do you can't

. Those communications are relevant material to, let's say, the prosecution. What effect does a duty of candor have on heavy disclosals, anyway? And by duty of candor, do you mean duty of candor to the USPTO? I think, again, if you're talking about claims scope. Let me give you a hypothetical. It comes from my practice of patent agent before I became attorney. Oftentimes, clients will come to you and they think they've invented the world. They haven't. They haven't invented something but they haven't invented the world. And you have to have very frank conversations with these clients about what exactly is they have invented, what their claims should cover. And the whole point with respect to a patent attorney, and this is why privileged covers patent attorneys practicing for the PTO, is that they should be able to have those conversations without them being used against them later. And we simply submitted that same privilege. Should cover patent agent. What about a conversation where the lawyer says, 100% convinced that this prior art is relevant, it needs applicable, and the client says, no, you're not to use it, and you're not to standing about this. Is there a duty of candor there? I think that probably is. In fact, I'm sure that there is. That you may have to. I apologize. I'm not super familiar with the disciplinary rules. Right. With respect that you would have to disclose or withdraw. The same way in turn would the. Also, there's definitely do you can't. There's an actual economic potential way from privileged respect to crime fraud exception. We're certainly not arguing that agents or attorneys should be able to commit fraud on a patent office. Thank you, Mr. Blackburn. I'm going to privilege to hear. Two good arguments. We'll take a case under advisement. Thank you. Thank you. All right.

We have one case this morning in Ray Queens University at Kingston evolving petition for a rid of mandamus and we'll hear from Mr. Crosby. It's Mr. Blackburn, Mr. Crosby's. Oh, sorry. That's okay. May please the court and good morning honors. My name is Sean Blackburn. I represent Queens University at Kingston and part of research and development innovations. The petitioners asked this court for a rid of mandamus directing the district court for the eastern district of Texas to withdraw its order, compelling production of documents, which reflect communications between Queens University's employees and the registered patent agents. What's your response to the argument that even if this is a privilege that we should acknowledge that mandamus is not appropriate in this case because of the stave in light of the exam? Sure. We'll read exam. Well, one, the stave was not simply in light of the reexample. In fact, Samsonl did not move first day for interview the IPR. They moved first day in view of the mandamus petition. The court granted it on both grounds though I would argue that he more relied on the mandamus petition. He actually found that some of the factors would have weighed against them on the IPR because they'd delayed. Granted, it is a date though, in view of the IPR and the mandamus petition. It will not come unstayed until both have been decided. So if we play this out hypothetically, if this court was to say, well, mandamus is not appropriate. Well, that's one of the triggering events, right? Because you issued an opinion saying mandamus is not appropriate. Then, if in the way we come out of IPR, that would be the second triggering event. At that stage, we will have to produce the documents, no doubt. Right? The case will go on and we will not have another chance to mandamus. I seriously doubt Judge Payne will state a production of these documents again for us to kind of enter a Groundhog's Day scenario and remand amus's order. Moreover, we are currently under a court order that once this mandamus decision has come down, seven days after that, we are to produce these documents. It would be affected by the other stay. It's not clear to me, Your Honor. That's the question. We would once say this court was to die of mandamus position. We would need to seek guidance from a district court as to whether or not he would want us to produce those or not. It's simply not clear to me. If we are required to produce those, Samson could in fact use those documents. One, they're obviously they would have access to them. And two, they could seek to use them in the IPR. They could seek leave of the court. They could seek and leave of the board to use those documents. Just as clean as done with Samson's documents in this case. Okay. What makes this your request extraordinary? I mean, we view Ritz and mandamus as requiring or being based on extraordinary relief, special circumstances. And the Penn agents have been allowed to practice before the PTO, almost from its very inception. Right. And it seems to me there's not a lot of cases on this particular issue simply because it's not a big issue. Why should we even entertain this under as a Ritz and mandamus issue? Well, I would disagree that it's not a big issue. There are about 12 or 13 opinions and most of those and those have been written over the course of about 50 years. But these are discovery orders. Just as the court in this case did not issue a written opinion. Most of the time in discovery disputes happen to the court. There are no written opinions. I can tell you that personally this issue is a reason twice for me this year. But that's because we usually treat rulings pertaining to discovery as part of the entire appeal. What's just been a final judgment that she... Well, no, that's... I mean, obviously generally we do. But my point is that if you're saying this issue doesn't come off that often. I'm not... I'm saying I don't agree that that is true in the district courts. There are about 12 or 13 opinions. But the reality is that's the tip of the iceberg because discovery opinions usually don't get written. When party moves to compel, the judge usually will say either an oral argument, what to aes leaning or will it just simply rule from the bench and it will issue an order. The order will be two or three sentences. Getting an actual opinion under discovery issue is fairly rare in my experience. And as I said, I've had this issue rise twice. Also, the reason why I believe it's extraordinary is for the same reason that MSTG was. The same reason that Henry's falleting was. Henry's falleting dealt with a invention disclosure record. It's kind of the same kind of things that are going on here. These are communications that are made for the purpose of patent prosecution. And they come up because parties want to compel the production of those documents. And just as with respect to that and the settlement privilege in MSTG, there's really no other way for this kind of legal issue to be resolved. I mean, generally speaking, it's unlikely that on direct appeal, they will be able to raise this issue. Patent cases generally involve three issues, infringement and validity damages. They're having an expert opinion. It's unlikely that we'll be able to show reversible error to show that the mere compulsion of these documents has so tainted the case that this course should reverse on appeal. Are you asking us to create a new privilege for Patent Nages? Are you asking us to say that the umbrella of the attorney-client privilege covers these communications? I think it can be conceptualized either way and I don't want to get into semantics. I think that's the... That's what law is all about. Well, maybe not. With respect to the justification for the privilege, I think it extends both to attorneys and agents. With respect to prosecution, they do the exact same things. They're authorized to do the exact same things. They have the same clients seeking the same advice. Some courts have treated it as a standalone privilege. Others have said it's the attorney-client privilege that extends to Patent Nages. I think the opinion could be written either way and be fully justified. Rule 501 certainly allows the recognition of new privileges. But even if it is written and considered a new privilege. Would you say that it's an analogous privilege? I would say it's an analogous privilege. I absolutely would. For the reasons that all of the reasons that attorney-client privilege apply to Patent prosecution, they should apply with a patent agent. Whether that means that the attorney-client privilege extends to cover agents or it is a separate rule 501 privilege. Either way, it would be fine with us. But as if we were to call it a separate privilege, then we run smack up against the strict presumption against the creation of new privileges, don't we? Yeah, that is true. Although I think it can still be reasoned at, you know, rule 501s is reasoning the experience just by the creation of a privilege. I think reasoned certainly works here. Well, what about experience? There hasn't been this privilege for all these years and everything seems to have been working fine. Well, I'm not sure that that's entirely true. In Reamp-A-Silent is a 1978 case. The Verna-Chona's 1975. Sparry only came down in 63. So in some sense, this privilege has existed for 40 years, depending on the district court and what you are in. The cases are fairly evenly split. I think there's a slight majority in favor of not recognizing the privilege. But the reality is, they're operating in a gray area, which is why I think, you know, the guidance on this issue is needed. Do you understand, do you know that the PTO was looking into this? I do know that the PTO was looking into this. Although, what, the PTO, if you looked at the PTOs, they issued kind of a call for papers. And they, what they asked, if you read what they say on the top left side says, should the courts recognize this privilege? They didn't ask should Congress and student privilege should the PTO declare by FIOT that there is no privilege. They were asking whether or not the courts should recognize this privilege. That's what it says. Is there anything that the PTO could do by regulation in order to institute an analogous type privilege? Well, it's interesting because it appears as though under the previous professional rules that they may have. So the rules that were in effect from 99 to 2013, the sections, the regulations have changed, I think, three or four times over the past four years. And they changed the last time in 2013. The rules that were in effect from 99 to 2013. In their advance notice of rulemaking, they said that in certain situations, communications with patent agents are considered privileged. They cited an ampah sill in front of that proposition. If you look at 37 CFR 10.57, which is the prior regulation on governing confidentiality, it expressly defines confidence as information covered by the attorney client and agent client privilege. So that makes sense. I think they have, you know, expressed in that. Do they have that kind of substantive rulemaking authority to create a privilege? I think with respect to practice before them, they do. Could they bind the courts? I'm not so sure. I was still, you know, even if it's not tied to. They can tell agents that agents have to maintain confidence. They absolutely can. And they absolutely can't say that they have to maintain it as privilege, which would put agents in a very strange position. And they have, have them. And they have. Right. But they can't bind the courts. I suspect not. But I think they should still be, you know, even if they're on tie-down to Chevrolet and the difference on that point. I think, you know, uniformity and skidboard difference are certainly appropriate. Isn't that the issue that we should be reviewing, whether the PTO has the authority to extend a privilege or whether it has the authority to implement by regulation, something analogous to the privilege? No, I don't think so because I don't think that privilege could bind this court. If the PTO is to actually say, you know, there's a privilege court should respect this. I don't think that they could do that. But Mr. The PTO action. What, I'm sorry. We're not reviewing the PTO action. Exactly. So they couldn't, you know, they couldn't issue a regulation, I think, with respect to that kind of collateral type of effect. But certainly the PTO has the authority to regulate the practice of patent agents and to require them to keep these, these communications privileged and they did. If we were to recognize a privilege, how far could it extend? I think it would be co-extensive with the attorney client privilege, with respect to patent prosecution matters before the United States patent office. Okay. So if a patent agent were to, for instance, give a validity opinion with respect to a third party's patent, that wouldn't be covered by this privilege. That, I would agree, such as the kind that comes up in the case of willfulness. That's right. And I frankly, I think something like that with respect to third party's patents is probably not sanctioned by Sparry either. Sparry does talk about patentability opinions. But that's the kind of opinion that a prosecutor has to give to his client prior to filing patent and ethical conditions. It's not an issue just simply extending the existing privilege. We would have to draft an entire new privileged, tailor, custom made just for patent agents. No, I do not believe so. There actually are pre-existing rules. There are only a couple cases from this court, such as spawning, that deal with what kind of communications between a patent prosecutor, writ large attorney or agents, are covered by the attorney client privilege. District courts have developed a doctrine on that. Certain things, they've stated, you know, things that are mere conduits of the patent office are not privileged. I think it would be co-extensive with patent prosecution practice, and it would be the same with this respect to an agent or attorney. I don't think the same. It would be essentially co-extensive with Sparry. With the description of the activities that Sparry recognized as the practice of law sanctioned by the federal government. Exactly your honor. And I'm nervous. I'm well as part of the bottle of time at this point. If there are no questions, I'd like to reserve the rest of my time. We will do that, Mr. Blackburn. Thank you, Robert. May I please the court. Matthew Wolf, Arnold and Porter on behalf of Samsung. I would like to say that the question is, um, chainy identified three factors that this panel should consider when deciding whether Mandamins should issue. And I'd like to invert the order of those considerations in light of some of your honor's questions so far this morning. The final consideration is whether it's appropriate under the circumstances. Your honor, you asked about whether or not this could be considered after a full appeal. And the answer was, I tried to write it down as best I can. It's unlikely to show reversible error. Well, I would suggest that a Mandamins petition that's unlikely to involve reversible errors, not a Mandamins petition at all. Can't involve the abuse of discretion or use of patient power. It's just not that big a deal in this case. Second factor, as your honor raised, the case stayed below. The comments council made, I respectfully disagree with his honor stayed the case in its entirety, depending the later of the two events. If this court were to, as we believe it should say that Mandamins should not issue and we go on to the IPR, all orders would be stayed, including the order to compel the production. We would not get the documents unless and until we don't have the stay order in our record. Do you agree with the characterization that essentially the lower court said that the penancy of the court was the Mandamins was really the primary grounds for the stay? No, you're right. There was two reasons. It was the IPR and the Mandamins. The court expressed frustration that council for Queens was not producing the documents. There was clearly that sentiment, but there was no suggestion that there's a primary and a secondary reason for the stay. There were two reasons for the stay. The evidence of that is the fact that the lifting of the stay is triggered by one, both events have to be done with. If it was the mandamus petition, that was the dog and the IPR that was the tail, presumably the court would have said, all lift the stay if mandamus, if and when mandamus is resolved, regardless of what happens in the patent office with the IPR. The evidence, the order itself suggests that they were equally important to the court. Do you agree that it's unclear whether or not upon issuance of any order from this court that that would trigger the obligations? No, I think it is abundantly clear that whatever this court does, that the production of documents will not occur unless and until the IPR is done and claims come back. This case is stay. There will be no production pursuant to this case or pursuant to orders in this case, unless and until the claim survived IPR. Well, why shouldn't we, even if this isn't a perfect vehicle for mandamus, why shouldn't we say that this is an important enough issue that will rarely come before us? And there's an obvious split among the district courts that needs to be resolved so that we should answer the question, regardless of that final prompt. Understood. So let me add one more to the final prompt and then explain, respond your answer in a way to the first two prompts. And your honor already raised it and that is that there is consideration, there is active discussion in the intellectual property community about whether through regulation or going through Congress, a national and indeed international homogenization for lack of a better term should be, should be ruled. And to have this court in parallel, particularly on a mandamus petition, without the normal weighing in of a meeky that would happen if something was truly important without the normal appeal that essentially this court should jump in front of that line. Absent, an appropriate vehicle, I would suggest that that's not the right circumstance. We're not jumping, we wouldn't be jumping in front of a line, we would be deciding a case before us. Your honor, what rule 501 and what Jaffee suggests 501 should be found is that a new privilege, and let's be clear, this would be a new privilege. Tramble and Jaffee both make clear that the attorney client privilege is based on the status of the individual, not the substance of the communication. So you can't argue a privilege by analogy, that doesn't work under the Supreme Court doctrine that binds this court. The first honor to me, clear, is that the attorney client privilege, the analogy that's trying to draw or to suggest that all Sparry was talking about was the unauthorized practice of law. And in fact there are courts that have rejected the notion that Sparry is broader than that. But Sparry did begin with the proposition that what patent agents are doing before the PTO is the practice of law. Yes, Your Honor, there's no doubt about that. At one court, the pronunciation escapes me, but revastigain, I believe it was, called it a subspecies or subgenre of law, which by the way is another reason why we should let Congress do this job not. At least not on a mandamus petition. And this is an issue that was only lightly touched upon in opening remarks, is that a patent agent in this case in fact has given advice on issues of infringement. And we can see that on appendix, a 90 and a 96 on issues of monetization. We can see that on a 157 on issue of damages. We can see that on a 159. But those even under the proposal from your friend on the other side, those wouldn't be covered by the premise that they're asking be created. Agreed, Your Honor. But think of the, just on the purely practical level, the morass that this would create. If there was just a general saying that the patent offices has defined the scope of the privilege by defining the scope of the activity. Well, then what is the district court supposed to do with a 2000 entry privilege log? Is it supposed to go entry by entry and see whether intermixed in the purportedly prosecution documents? Are discussions of infringement? Are discussions of validity of third party patents, is your own arrays? Are discussions of damages? Well, presumably if the privilege was defined and delimited, then the obligation would be on the party asserting the privilege to only put on that log the things that are privileged, which would greatly narrow what the district court had to look at or had to examine in-campus. Hypothetically, Your Honor, but here we have notwithstanding their argument that they're seeking a very narrow patent agent privilege, 2000 entries, 1800 of which on their face would seem to be beyond the scope of the patent agent privilege they're seeking in this case. So again, why this is not an ideal vehicle to say the least for an analysis of an issue like this? To get into the fundamental point, why shouldn't this be done? Jaffe suggested that the most important policy consideration is the search for the truth. That is the presumption. That is the predominant consideration. If a patent agent privilege is put in place to the extent it's important at all in your honor, you raise an interesting question just how important is this? I mean, it hasn't come up before in the ordinary course. Pat and agent seem to be doing their business just fine for the last 50 years. It's not clear. We don't decide issues from the basis of how often they have come up or not come up in the past. We deal with issues as they come up before us. Your Honor, you do in the ordinary course, but on Mandamus, it does matter how important it is. Deciding whether a Mandamus petition should issue, the import, the severity, the use Serpentive, is that how you pronounce that word from Tramble? The use Serpentive nature of what the district court does. It never used it before today, Your Honor. That comes into play. So you're absolutely right, Your Honor. If this had come up through the ordinary course, through an ordinary appeal, with the full record to see is this important, is it not? Where if Amiki wanted to weigh in, they could, because this obviously affects the patent community potentially, all of that would make sense. But when it comes talking about Mandamus, that's a very different question. And then it does matter, Judge Rainer's question is precisely on point, is this such a big deal? But assuming it is a big deal, if, for example, a patent agent discusses with the inventor 10 years ago, 12 years ago, with the time of invention, a potential on-sale bar activity, or a public use activity, and the patent agent decides, well, I don't think it was on-sale bar, so we don't need to disclose it. Well, if we never find out about that, we, as the defendants in this case, had no way to test whether it was an on-sale bar. How would that be different if it was an attorney? Well, Your Honor, we've decided for time in memoriam that attorneys were willing to sacrifice some truth finding for the attorney client privilege. But what Jaffee tells us is every time we want to find a new privilege, we have to ask the question, is the desire to find the truth outweighed by an important, fundamental public good? So we can't say we can't argue by analogy. Jaffee tells us that's not the right analysis to take. We have to say, in this instance, forget what already exists. We might decide that attorney client privilege, if we were sitting around having a cup of coffee, that attorney client privilege should be tail back in light of what we know. But that's water under the bridge. For each new privilege, we have to ask the question, a new. Does the loss of the truth, is that outweighed or does it outweigh the benefits? And your, your Honor asked a critical question, which is, what are the particular benefits here in this case of the Pat Navy Agent privilege? And in Lawson, the court denied, mandamus, because there were no particularized explanations of what the harm was. And here, just as in Lawson, there is no particularized explanation of what the harm is. Do you see any alternative forage relief? What are the petitioner? At the end of the day, of course, if, if, if these documents are produced, and if they are relevant to issues in this case, and if the judge considers them or sends them to the jury, and this court ultimately decides that there should be a privilege, and those documents shouldn't have been sent considered to the judge for whatever purpose Markman, or Markman's already done, but some rejudgment. Or if it goes to the jury, and the jury decides something based on what the patent agent said, then the court can say there was a risk of error. If we, if we find there's no privilege, on these circumstances, and the patent agent has to cut up these documents, isn't he then in violation of the PTO rules, and wouldn't we be putting that person in a conflict situation? Absolutely not, Your Honor, Section 106, the very last line of 106, and I'm going to paraphrase it says, unless required to produce under for other purposes or other circumstances. So the confidentiality rule specifically says, Does that say other purposes, or does that say duty of disclosure? I, I, it's a confidentiality provision. I believe it's 106. I'm speaking off the top of my head, Your Honor. But I believe it's the very last line of .106. That, that, that, that patent agent would be protected by. Exactly, absolutely. That specifically called out as, as. And in each instance, there would have to be a court order to disclose. And that's the way we are, depending on which jurisdiction you're in, that's, that's the place we are. And again, let's not forget the context we're in. I know I'm being beating a long dead horse here, but we're up here on mandaimans. And whether or not we believe intellectually that someday there should be a patent agent privilege, and that that should be defined in certain ways with meets and bounds. The question is, under jaffy, specifically, and under Mohawk more generally, is this the case that deserves mandaimans? Are there other adequate means? Or is this being used as a substitute for a field process? We have yet not heard a single specific example of how queens will be heard if these documents are produced, and then at the end of the day they shouldn't have been. I mean, odds are we, we've read file histories. The odds are the vast majority of the documents that are on this privilege log are irrelevant. But the two or three or four that might be important, well, maybe they're important because they get it at the truth, or maybe they're prejudicial. But we're telling the district court, we're not going to trust you to weed out what's prejudicial and shouldn't be in front of the jury. For example, if the patent agent says, I don't think the claim should be read that broadly, and the judge says quite rightly, well, if he's not going to skill in the art, that's not relevant to the analysis anyway. Versus something that may be probative, like the hypothetical I gave you before, there's an on sale bar activity that we don't know about sitting here today that we'd learn about if we got these documents. But the district judge is perfectly, remember, we're not done when the district court orders production. Then we have to prove that they're relevant and that relevance outweighs the prejudice before we can use them in any way. So that's another buffer against the risk that they're concerned about. Again, the risk not being specified here at all. And then the next step is if the judge makes a mistake and lets something in that this court ultimately says was prejudicial, well, then at the end of the appeals process, this court can say, sorry, you have to do it again. That's the fact that the third factor would be about the last thing the district court would want, right? Which would tend to motivate them to keep the documents, if it was a close call, would tend to motivate the court to not allow us to use it in front of the court's purposes, the jury purposes. I want to get to the final standard in my last minute if it's okay. In order for mandamus to issue, there has to be a clear and disputable right of relief. Jaffee says there are three things you look at when deciding whether there's clear and disputable rights. First, what have the States and lower courts done? Here, the States have done nothing as a matter of legislature. There's nothing. And ask for the cases we counted 27 cases, 18 of which said no patent agent privilege. How would the States even have occasion to care? Well, if you look at the commentators, Your Honor, and the PTO discussion, this comes up a lot in now. Practice cases, for example, this comes up in product liability cases. Those are in judge in Professor Frost's statements to the patent office, for example, he discusses those. So the States have addressed privileged issues routinely, but not this one. And more importantly, as I said, the district courts, 18 of 27 have said no patent agent privilege. So there's no consensus. How can it come up in malpractice cases when the privilege belongs to the client? If there's a malpractice, the lawyer can't claim the privilege? Well, I have to think this through. I'm just citing what the professor said in his brief. But I presume it would come up because the lawyer would want to show what they had done. The patent agent would want to say, this is the discussions we had to defend myself in the patent. And the client would say, that's attorney-climed privilege. Why don't they sue the lawyer? They've waived the patent. That's true. So maybe the professor was wrong in that instance. But Congress, the second issue is Congress, has not said anything on the topic. And the third factor, Jackie Sites, is the Judicial Conference Advisory Committee, which has not said anything on the topic. So far from there being a consensus of the world out there that there should be a patent agent privilege, the few that have spoken on have said two to one, there should not be. Thank you, Mr. Wolfe. Thank you, Your Honor, for your time. Good luck, Perne. It has a little butle time to in half minutes. Thank you, Your Honor. Can you start one of the major points that was made on the other side, which is that you have not really articulated the harm that you would suffer? The harm, I will put it this way, it is very difficult to articulate the exact harm without waiving the privilege. Without telling you exactly what is in the documents, I can't tell you exactly how Samson would rest assured. You can't see the harm. You can't see the harm. You can't see the harm, the discouragement of free and open communication, which is the purpose of the process. That is the harm for all people who seek to use patent agents, just as they seek to use patenters. But in this case, our harm would be that they would be able to use these documents against us. Even post judgment, we get a reversal on a pill. But that is assuming we go booze, right? That is assuming we lose. That is true. At this point, you don't know if you are going to lose or not. That is true. And that is true document. I apologize. The documents are produced. Then the course still has to make some sort of admissibility ruling on. Absolutely true. And that is another point. You don't know how you are going to come out at that point, either. Absolutely true. And that was just as true in MSTG in which this Court conducted a misdemeanor review. It was just as true in in-respaulting in which there was mandamus review and in-reregions of California in which there was mandamus review. Those are all privileged issues. All of which were uncertain. They didn't know that the settlement agreements at MSTG would make it into the expert report. That they would be admissible a trial. That they would be in relative to a reasonable royalty. But this Court did conduct a mandamus review because the factors that were laid out in MSTG were met. And they are met in this case as well. This is four corners on it. Samson is not argued otherwise. In a minute that I have, I would like to address the Court's state order in this case. First, how do you justify the breadth of the claim of privilege here? Okay. They are using the subject lines from the emails that are on the privilege long. They are not using the descriptions of what is actually contained in those emails. I, unlike Mr. Wolf, have looked at these documents. I believe that they are privileged. I don't believe that they extend beyond the patent age or privilege at any rate. I don't justify, I don't need to justify the breadth because the district court did not rule on that. They did not raise it. They did not meet and confer on it. They have long since waved it. We made that point from the district court in our surreply and he in turn did not rule on it because it was waved, not raised, not met and conferred on it. Well, I'm not sure how it was waved. If there are arguments, there is no privilege period regardless. They don't really have to make the argument of the subset as assuming I lose that point. Let's say the privilege has to be narrow. Well, I'm not saying the privilege has to be narrow. I'm talking about, I thought we were talking about the specific entries on the log. Because we agree that the privilege should be narrow. I think that if the privilege exists, both parties are a full agreement that it's only respect to patent prosecution before the USPTO. Justice was laid out in spary. If it exists. But it certainly wouldn't cover infringement opinions. I agree. I agree. I agree. I, 100% agree. I disagree that those communications that are on the privilege log actually pertain to that. Some of the subject lines say all kinds of things that have nothing to do with patent prosecution at all. But the content of those communications between Mr. Schribner and the employees does. And that's why we think that it definitely covers that. So, anyway, I don't believe that question is for you. Those communications are relevant material to, let's say, the prosecution. What effect does a duty of candor have on heavy disclosals, anyway? And by duty of candor, do you mean duty of candor to the USPTO? I think, again, if you're talking about claims scope. Let me give you a hypothetical. It comes from my practice of patent agent before I became attorney. Oftentimes, clients will come to you and they think they've invented the world. They haven't. They haven't invented something but they haven't invented the world. And you have to have very frank conversations with these clients about what exactly is they have invented, what their claims should cover. And the whole point with respect to a patent attorney, and this is why privileged covers patent attorneys practicing for the PTO, is that they should be able to have those conversations without them being used against them later. And we simply submitted that same privilege. Should cover patent agent. What about a conversation where the lawyer says, 100% convinced that this prior art is relevant, it needs applicable, and the client says, no, you're not to use it, and you're not to standing about this. Is there a duty of candor there? I think that probably is. In fact, I'm sure that there is. That you may have to. I apologize. I'm not super familiar with the disciplinary rules. Right. With respect that you would have to disclose or withdraw. The same way in turn would the. Also, there's definitely do you can't. There's an actual economic potential way from privileged respect to crime fraud exception. We're certainly not arguing that agents or attorneys should be able to commit fraud on a patent office. Thank you, Mr. Blackburn. I'm going to privilege to hear. Two good arguments. We'll take a case under advisement. Thank you. Thank you. All right