in Re: Andrew Silver

Opinion

Denied and Opinion Filed August 17, 2016

In The Court of Appeals Fifth District of Texas at Dallas No. 05-16-00774-CV

IN RE ANDREW SILVER, Relator

Original Proceeding from the 134th Judicial District Court Dallas County, Texas Trial Court Cause No. DC-15-02268

OPINION Before Justices Francis, Evans, and Stoddart Opinion by Justice Stoddart In this original proceeding, relator asks the Court to adopt the patent-agent privilege

recently adopted by the Federal Circuit for use in patent infringement cases. In re Queen’s Univ.

at Kingston, 820 F.3d 1287 (Fed. Cir. 2016). Relator asks the Court to grant his petition and

direct the trial court to withdraw an order compelling production of communications between

relator and the patent agent. Relator also seeks a stay of the discovery order pending resolution

of the original proceeding. We deny the petition and vacate the Court’s July 7, 2016 stay of the

trial court’s June 13, 2016 order. See In re Fisher & Paykel Appliances, Inc., 420 S.W.3d 842,

848 (Tex. App.—Dallas 2014, orig. proceeding) (“It is generally not the role of intermediate

courts of appeals to declare new common law discovery privileges.”).

Background

The underlying case involves a contract dispute related to the invention, patenting, and

commercialization of the “Ziosk,” a device that allows restaurant patrons to order meals, play games, and pay their checks at their table. Relator claims he invented and owns the two patents

for the technology underpinning the Ziosk and is owed money by Tabletop Media, LLC, a

corporation that has marketed the Ziosk.

This original proceeding arises from the trial court’s order compelling relator to produce

more than 300 e-mails between relator and relator’s non-attorney patent agent. Relator argues

that the e-mails are privileged communications because the Federal Circuit has recently extended

the attorney–client privilege to communications with non-attorney patent agents made during the

patent prosecution process. In re Queen’s Univ., 820 F.3d at 1296. To obtain mandamus relief,

relator must show that the trial court abused its discretion and that relator has no adequate

appellate remedy. In re Prudential Ins. Co., 148 S.W.3d 124, 135–36 (Tex. 2004) (orig.

proceeding); Walker v. Packer, 827 S.W.2d 833, 839–40 (Tex. 1992) (orig. proceeding). Relator

has not met this burden.

Analysis

The federal rules of evidence specifically permit federal courts to determine new

discovery privileges. FED. R. EVID. 501. Texas courts, however, are prohibited from doing so.

Abbott v. GameTech Int’l, Inc., No. 03-06-00257-CV, 2009 WL 1708815, at *6 (Tex. App.—

Austin June 17, 2009, pet. denied) (mem. op.) (citing TEX. R. EVID. 501). Only privileges

grounded in the Texas Constitution, statutes, the Texas Rules of Evidence, or other rules

established pursuant to statute are recognized in Texas. Id. Consistent with that prohibition, this

Court has routinely concluded that “[i]t is generally not the role of intermediate courts of appeals

to declare new common law discovery privileges.” In re Fisher & Paykel Appliances, Inc., 420

S.W.3d at 848 (declining “to write into existence a common law self-critical analysis privilege . .

. .”); Landry v. Burge, No. 05-99-01217-CV, 2000 WL 1456471, at *5 (Tex. App.—Dallas Oct.

2 2, 2000, no pet.) (not designated for publication) (refusing to recognize a private-investigator

privilege because no such privilege is included in the Texas Rules of Evidence).

No Texas statute or rule recognizes or adopts a patent-agent privilege. The trial court

declined to recognize such a privilege here. Relator asks this Court to recognize a new discovery

privilege and determine that the trial court abused its discretion for not recognizing the new

privilege. Neither this Court nor the trial court has the authority to adopt a new discovery

privilege. In re Fischer & Paykel Appliances, Inc., 420 S.W.3d at 848. We decline to do so here

and, therefore, conclude the trial court did not abuse its discretion by refusing to adopt the

privilege.

Further, Queen’s University is not binding here. The Federal Circuit applies its own law

for substantive and procedural issues if those issues are “intimately involved in the substance of

enforcement of the patent right.” 820 F.3d at 1290. This includes determination of whether

documents are discoverable “in a patent case because they relate to issues of validity and

infringement.” Id. at 1291. If the case involves substantive issues of patent law, such as claim

construction, validity, and inequitable conduct, then the Federal Circuit applies its own patent

law precedent. Id. Communications between a non-attorney patent agent and his client “that are

not reasonably necessary and incident to the prosecution of patents before the Patent Office,”

however, are outside the scope of a patent-agent privilege. Id. at 1301–02. Whereas the federal

common law governs privilege in a federal case, “in a civil case, state law governs privilege

regarding a claim or defense for which state law supplies the rule of decision.” Id. at 1294

(quoting FED. R. EVID. 501).

This case is not a patent infringement case. It is a breach of contract case governed by

Texas law. The underlying dispute does not involve a determination of the validity of the patent

or whether Tabletop Media, LLC infringed on the patent. The Queen’s University court 3 expressly excluded such cases from the scope of the privilege, and neither this Court nor the trial

court is required to apply federal patent law to the merits of the case. Where, as here, the

substantive claims are governed by state law, the state privilege law also applies. Texas does not

recognize a patent-agent privilege, and we decline to create a new common law privilege.

For these reasons, we DENY the petition for writ of mandamus.

/s/ Craig Stoddart CRAIG STODDART JUSTICE

Evans, J., dissenting