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.
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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
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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
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in Re: Andrew Silver
Combined Opinion