Summary
VISX petitioned the Federal Circuit for a writ of mandamus directing the district court to vacate an order requiring production of materials allegedly protected by the attorney-client privilege. The court held that VISX waived the privilege by making representations to the PTO about communications with its British patent agent and that the district court's production order was not unduly broad. The petition was denied, and VISX's motion for leave to file a reply was granted.
Topics
Practice areas
Questions Presented
- Whether VISX waived the attorney-client privilege by disclosing the substance of communications with its British patent agent in an Information Disclosure Statement filed with the PTO.
- Whether the district court's production order exceeded the proper scope of any subject-matter waiver.
- Whether mandamus was appropriate to vacate the discovery order compelling production of privileged communications.
Holdings
- VISX waived its attorney-client privilege concerning communications with the British patent agent on the same subject matter by making a limited disclosure of the contents of those communications in the PTO filing for its strategic benefit.
- The district court properly ordered production of correspondence concerning the patent agent's authority, correspondence concerning the subject matter of the EPO statement, and other documents on which VISX based its representation to the PTO.
- Mandamus relief was unavailable because the district court did not err in finding waiver and the scope of its disclosure order was not unduly broad.
Key quotations
“By making what amounted to a limited disclosure of the contents of attorney-client communications for strategic purposes, VISX waived its privilege concerning communications with the British patent agent on the same subject matter.” (824)
“Having used otherwise privileged communications to support an assertion that worked to its advantage, VISX cannot now expect Nidek to attempt to respond to that assertion without access to all the facts that pertain to the accuracy of VISX’s claim.” (824)
Factual background
VISX prosecuted United States patent applications related to laser eye surgery while related European proceedings involved arguments concerning whether disclosures associated with Dr. Stephen Trokel were enabling. In an Information Disclosure Statement filed with the PTO, VISX stated that no one at the assignee had directed or suggested that its British patent agent make the challenged assertion to the EPO. During discovery, VISX's Rule 30(b)(6) designee testified that VISX had searched for supporting communications but could not locate documents or oral communications showing such direction or suggestion. The district court ordered production of communications and other documents that VISX reviewed or relied on in making those representations.
Procedural history
VISX sued Nidek for infringement of two patents concerning a laser eye surgery method. During discovery, the district court held that VISX waived the attorney-client privilege by filing an Information Disclosure Statement with the Patent and Trademark Office and ordered production of communications and documents concerning a British patent agent's authority and the subject matter of statements made to the European Patent Office. VISX sought mandamus relief from the Federal Circuit, which denied the petition and granted VISX's motion for leave to file a reply.