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Patents Attorney-Client Privilege

Patterson Belknap Webb & Tyler LLP

Nothing to See Here: Judge Reznik Finds that Privilege with a Patent Prosecuting Attorney Belongs to the Assignee, Not the...

On November 22, 2023, United States Magistrate Judge Victoria Reznik (S.D.N.Y.) provided some rare insight into “the applicability and scope of the attorney-client privilege as it relates to patent counsel.” Op. at 1. Judge...more

American Conference Institute (ACI)

[Event] 6th Annual Summit on Life Sciences IP Due Diligence - November 28th - 29th, Boston, MA

ACI’s 6th Annual Life Sciences IP Due Diligence Summit is devoted to providing corporate and IP counsel with expert strategies for assessing, valuing, and commercializing IP assets when conducting strategic IP due diligence –...more

Jenner & Block

Protecting Confidential Legal Information: A Handbook Analyzing Issues under the Attorney-Client Privilege and the Work Product...

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I. THE ATTORNEY-CLIENT PRIVILEGE - Historically, the attorney-client privilege developed upon two assumptions: (1) good legal assistance requires full disclosure of a client’s legal problems; and (2) a client will only ...more

Patterson Belknap Webb & Tyler LLP

Judge Parker Finds GE’s Privileged Documents Show No Signs of Fraud in Medical Imaging Devices Misappropriation Case

On August 8, 2023, Judge Katharine H. Parker (S.D.N.Y.) denied Spectrum Dynamics Medical Limited’s (“Spectrum”) motion to compel the production of documents that it argued fell under the crime-fraud exception to the...more

Fox Rothschild LLP

Patent Litigation Funding: What You Need to Know

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Enforcing a patent can be expensive and time consuming. Patent litigation funding, also known as patent litigation financing, is one way patent owners can protect their rights without incurring the unwanted expense of...more

Akin Gump Strauss Hauer & Feld LLP

Witness Testimony Regarding Intent to Infringe Excluded Because Defendant Refused Such Discovery Based on Privilege

The U.S. District Court for the District of Colorado granted a motion in limine to preclude testimony from corporate executives about their “business understanding” regarding infringement because the defendant previously...more

Proskauer - Minding Your Business

Beware the Privilege Waiver During Investor Due Diligence

As though commercial transactions were not already fraught with enough potential pitfalls, a recent decision from the Southern District of New York highlighted yet another risk that could carry significant consequences to...more

Patterson Belknap Webb & Tyler LLP

Judge Hall Holds an Answer Waived Privilege by Selectively Pleading Protected Communications

On September 19, 2019, U.S. District Judge LaShann DeArcy Hall denied an appeal by the defendant in a litigation to correct the inventorship of patents of rulings by Magistrate Judges Gary R. Brown and Peggy Kuo that the...more

Akin Gump Strauss Hauer & Feld LLP

Dual-Purpose, Patent Analysis Documents Found Immune from Discovery under Work Product Doctrine

In Limestone Memory Systems LLC v. Micron Technology, Inc. et al., the Discovery Master ruled that, under 9th Circuit law, pre-suit, patent analysis documents qualified for immunity from discovery under the work product...more

Mintz - Intellectual Property Viewpoints

When Is Pre-Acquisition Analysis of Patents Protected from Discovery During Litigation?

A Discovery Master in Limestone Memory Systems LLC v. Micron Tech., Inc. pending in the Central District of California recently provided additional guidance to practitioners and patent owners on this important question. The...more

Hinshaw & Culbertson LLP

Description of "Client" in Outside Counsel Guidelines Prohibits Representation Adverse to Affiliates of Firm's Current Client

Falk Pharma GMBH v. Generico, LLC, Nos. 2017-2312, 2017-2636, 2018-1320, 2018-2097, 2019 U.S. App. LEXIS 4859 (Fed. Cir. Feb. 8, 2019) - Brief Summary - The U.S. Court of Appeals for the Federal Circuit has ruled that a...more

Nutter McClennen & Fish LLP

What’s the Purpose of it All? Determining Invention Disclosure Privilege

Invention disclosures made by an inventor to an attorney, or a review committee including attorney(s), often contain sensitive information that a client would prefer to keep confidential. It is important for both inventors...more

Cozen O'Connor

Attorney-Client Privilege Can Protect Multi-Purpose Corporate Communications

Cozen O'Connor on

A question that has vexed corporate litigants is whether communications between counsel (be it in-house or outside counsel) and a corporation’s employees are protected from discovery under the attorney-client privilege if...more

McDermott Will & Emery

Hi Ho Silver: Texas Supreme Court Finds Patent Agent Communications Protected

The Supreme Court of Texas held that a client’s communications with a registered patent agent, made to facilitate the agent’s provision of authorized legal services to the client, fall within the Texas attorney-client...more

Clark Hill PLC

Attorney-Client Privilege Extends to Patent Agents

Clark Hill PLC on

In a recent opinion, the Texas Supreme Court resolved a question of interest to patent attorneys—is there a privilege for communications between a patent agent and his client? In re Silver, No. 16-0682, 2018 Tex. LEXIS 171...more

Fox Rothschild LLP

Are Invention Disclosure Documents Protected By Attorney-Client Privilege?

Fox Rothschild LLP on

A common first step in the patent filing process is the completion of an invention disclosure form. The form asks the inventors to provide basic details about the invention, including who invented it, what problem does the...more

Miles & Stockbridge P.C.

Use of Patent Agents Increasingly Fortified

On Friday, February 23, 2018, the Texas Supreme Court overturned a lower court’s ruling that attorney-client privilege does not extend to patent agents. The ruling, bound to reverberate throughout the intellectual property...more

McDermott Will & Emery

Intellectual Property Law Year in Review - March 2018

This year was a significant year for intellectual property cases at the Supreme Court level. In fact, the Supreme Court granted certiorari for seven patent cases, and decided five of these cases before the end of the year....more

Husch Blackwell LLP

Texas High Court Rules That Patent Agent-Inventor Communications Are Covered By The Attorney-Client Privilege

Husch Blackwell LLP on

On February 23, 2018, in In re Silver, the Supreme Court of Texas conditionally granted mandamus relief and vacated the trial court’s order compelling production of emails between an inventor and his non-lawyer registered...more

McDermott Will & Emery

New PTO Rule on Attorney-Client Privilege Before the PTAB

McDermott Will & Emery on

The US Patent and Trademark Office (PTO) issued a new rule on attorney-client privilege for trials before the Patent Trial and Appeal Board (PTAB) on November 7, 2017. The new rule takes effect December 7, 2017. The new rule...more

Goodwin

Issue Nine: PTAB Trial Tracker

Goodwin on

Motions to Amend: Burden to Prove Amended Claims are Unpatentable Rests with Petitioner - On October 4, 2017, the Federal Circuit issued its long-awaited en banc opinion in Aqua Products, Inc. v. Matal, regarding the...more

Goodwin

PTAB Adopts New Attorney-Client Privilege Rule for PTO Trial Proceedings, Extending Protection to Patent Agents and Foreign Patent...

Goodwin on

Earlier this week the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) published a Final Rule regarding the scope of the attorney-client privilege in proceedings before the PTAB. The Rule states that...more

Nutter McClennen & Fish LLP

Your Patent Agent Communications Are Secret at the PTAB…or Are They?

Earlier this week, the United States Patent and Trademark Office (“PTO”) finalized a new rule, extending the attorney-client privilege to communications between clients and their non-attorney patent agents and foreign...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Final Rule Establishing Patent Agent Privilege

Earlier on November 7, 2017, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board ("PTAB") published its Final Rule establishing the attorney-client privilege for application in PTAB proceedings. Before the...more

WilmerHale

Federal Circuit Patent Updates - September 2017

WilmerHale on

Jang v. Boston Scientific Corporation (No. 2016-1575, 9/29/17) (Prost, O'Malley, Chen) - Chen, J. Affirming denial of motion for JMOL, vacatur of verdict of infringement under the doctrine of equivalents, and judgment of...more

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