In re Silver

540 S.W.3d 530
CourtTexas Supreme Court
DecidedFebruary 23, 2018
DocketNo. 16–0682
StatusPublished
Cited by15 cases

This text of 540 S.W.3d 530 (In re Silver) is published on Counsel Stack Legal Research, covering Texas Supreme Court primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In re Silver, 540 S.W.3d 530 (Tex. 2018).

Opinion

Justice Devine delivered the opinion of the court.

*532In this petition for mandamus relief, relator Andrew Silver asks us to vacate the trial court's order compelling the production of e-mails between Silver and his non-attorney patent agent. The court of appeals, in a divided decision, denied Silver's mandamus petition. 500 S.W.3d 644 (Tex. App.-Dallas 2016, orig. proceeding). The court concluded that the communications between Silver and his patent agent were not protected from discovery because Texas law does not recognize a patent-agent privilege. Id. at 646-47. Silver contends, however, that the documents are protected under Texas Rule of Evidence 503 because patent agents are lawyers for purposes of Texas's lawyer-client privilege. Because we agree that a client's communications with his registered patent agent, made to facilitate the agent's provision of authorized legal services to the client, are privileged under Rule 503, we conditionally grant mandamus relief. See TEX. R. EVID. 503.

I

The United States Patent and Trademark Office (USPTO), an administrative body created by Congress, is responsible for granting and issuing patents. 35 U.S.C. §§ 1(a), 2(a)(1) (2012). The USPTO has authority to regulate the persons who represent patent applicants. Id. § 2(b)(2)(D). Among those the USPTO allows to provide such representation are, of course, patent attorneys. 37 C.F.R § 11.6(a) (2018). These are individuals who are in good standing with the bar of the highest court in any state and meet all the requirements for registration before the USPTO, which includes an examination. Id. §§ 11.1, .6(a), .7. Practice before the USPTO is not limited to attorneys, however. Applicants also have the option of hiring a patent agent-someone who is not an attorney, but has properly registered with the USPTO. Id. § 11.6(b). Patent agents must pass the same exam as patent attorneys. See id. § 11.7(b)(1)(ii). For purposes of prosecuting patents for clients before the USPTO, patent attorneys and patent agents can provide all the same services. See id. §§ 11.5(b), 11.6(a) - (b).

The underlying litigation concerns the Ziosk, a stand-alone tablet designed to allow customers at restaurants to order food and pay their check without having to interact with a waiter or waitress. The Ziosk is sold by Tabletop Media, LLC, which has partnered with chains such as Abuelo's, *533Chili's, and Red Robin to place the device in their restaurants.

Andrew Silver claims he invented the technology that became the Ziosk and sold the patent to Tabletop. Silver brought a breach-of-contract action against Tabletop, alleging it failed to pay him for his patent. Tabletop answered, generally denying Silver's allegations.

During discovery in the underlying contract action, Tabletop sought production of emails between Silver and Raffi Gostanian, the patent agent who represented Silver before the USPTO. Silver refused to produce the emails, claiming them to be covered by the lawyer-client privilege. Although Gostanian is a registered patent agent, he is not a licensed attorney.

Tabletop moved to compel production, which the trial court granted. Silver then sought mandamus relief in the court of appeals to compel the trial court to withdraw the production order, asserting again the communications were privileged.

The court of appeals denied relief. 500 S.W.3d at 647. The court, however, understood Silver's mandamus petition to seek the creation of an independent patent-agent privilege, which the appellate court declined to do because it is "not the role of intermediate courts of appeals to declare new common law discovery privileges." Id. at 645 (quoting In re Fisher & Paykel Appliances, Inc. , 420 S.W.3d 842, 848 (Tex. App.-Dallas 2014, orig. proceeding) ). A dissenting justice argued Silver was not seeking the creation of a new patent-agent privilege but rather asking the court to apply Texas Rule of Evidence 503's lawyer-client privilege to communications between him and his registered patent agent. Id. at 650 (Evans, J., dissenting). We agree the issue is not the creation of a new patent-agent privilege but rather whether the existing lawyer-client privilege extends to communications between a registered patent agent and the agent's client. See TEX. R. EVID. 503 (codifying Texas's lawyer-client privilege).

II

Rule 503(b)(1) states the basic elements of the lawyer-client privilege. See generally , JEFF BROWN AND REECE RONDON, TEXAS RULES OF EVIDENCE HANDBOOK 411 (2016). Under the rule, a client is privileged from disclosing, and may prevent others from disclosing, communications made in confidence for the purpose of obtaining legal services. TEX. R. EVID. 503(b)(1). The rule also protects communications by the lawyer to the client. Id. 503(b)(1)(A)-(E).

At issue here is who may qualify as a lawyer for purposes of the privilege. The rule helpfully defines the term "lawyer" as "a person authorized, or who the client reasonably believes is authorized, to practice law in any state or nation." Id. 503(a)(3). Here, Silver does not contend he reasonably believed Gostanian to be a lawyer or that Gostanian was authorized to provide any legal services outside of the patent application and prosecution. Therefore, the sole issue is whether Gostanian was authorized to practice law when he provided patent-agent services to Silver.

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Cite This Page — Counsel Stack

Bluebook (online)
540 S.W.3d 530, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-silver-tex-2018.