Bingham McCutchen lawyers are fighting for correspondence from the law firm Young & Thompson in a dispute on appeal that explores the scope of attorney-client privilege between a lawyer and a patent agent.
Privilege law on the question is unsettled, according to U.S. District Judge James Robertson, who ruled in December against Bingham McCutchen’s effort to acquire documents from Young & Thompson, a firm in Alexandria that specializes in patent litigation.
Bingham McCutchen represents Silynx Communications, which is accused of infringement in federal court in Maryland. In discovery, Silynx’s lawyers served a subpoena against Young & Thompson. The plaintiff in the patent dispute is a Norwegian company called Nacre, represented by the firm Fish & Richardson. Nacre makes a miniature communication headset, with noise protection, that the company sells to military and law enforcement. Silynx has filed a counterclaim that says Nacre’s patents are unenforceable.
Silynx’s lawyers, including Bingham partner William Cravens, this week took the subpoena dispute to the U.S. Court of Appeals for the D.C. Circuit. No argument date is set. Cravens was not immediately available for comment.
Young & Thompson, which prosecuted Nacre’s patents at the Patent and Trademark Office, withheld 35 documents between its attorneys and employees of ABC-Patent. The firm cited attorney-client privilege in refusing to turn over the requested documents.
Bingham lawyers argued the correspondence is not protected because none of ABC-Patent’s employees, who are based in Norway, are registered with the PTO. The lawyers also contend ABC-Patent was not working under the direction of Young & Thompson.
Robertson (pictured at left) rejected Bingham McCutchen’s motion to compel Young & Thompson to produce the correspondence. The judge ruled that ABC-Patent acted at the direction and control of a foreign client (Nacre) to seek legal advice and assistance from attorneys in the United States. ABC-Patent was working between Nacre and the Young & Thompson lawyers.
“That standard reflects the prevailing trend in privilege law towards a more inclusive definition of ‘client’ in the attorney-client relationship,” Robertson wrote.
Young & Thompson partner Douglas Rigler, who heads the firm’s licensing and litigation group, was not immediately available for comment.