Assign a Patent; Waive a Privilege?

by Adam Philipp on December 14, 2011

Patent assignment
Can waive attorney-client
Privilege, rules court

A District Court has ruled (in HTC Corporation v. IPCom GmbH & Co.) that a patent assignment can waive attorney-client privilege as to the prosecution files transferred as part of the assignment.

HTC sought a declaratory judgment that its products did not infringe US Patent No. 5,390,216, for a synchronization method for a mobile radiotelephone. The ‘216 patent had been acquired by IPCom from Robert Bosch GmbH.

IPCom counterclaimed that HTC’s products did infringe the ‘216 patent and also its Patent No. 7,043,751, for a method of allocating access rights to a telecommunications channel to subscriber stations of a telecommunications network and subscriber station.

HTC moved to compel production of documents related to the ‘216 patent, including prosecution documents. These documents had been transferred from Bosch to IPCom’s counsel, the Frohwitter law firm, pursuant to the patent assignment agreement.

HTC sought production of these documents by the Frohwitter firm and IPCom opposed the motion, claiming that the documents were protected by attorney-client privilege.

The district court disagreed and granted the motion, finding that the privilege had been waived as part of the acquisition of the documents by IPCom, and ordering IPCom to produce the documents. IPCom sought a write of mandamus from the Federal Circuit to reverse or vacate this order but the Federal Circuit denied the writ.

HTC then learned that the prosecution documents were also in the possession of Bosch’s former prosecution counsel, the Holtz firm, and brought another motion to compel production of those documents from Holtz. IPCom again opposed the motion on the grounds that it didn’t have control of these documents and had never had a relationship with Bosch’s law firm.

The court again granted HTC’s motion to compel, finding that because IPCom obtained the patent prosecution files as part of its acquisition of the ‘216 patent, it had the legal right to demand these documents from the Holtz firm. Further, the court found that any privilege belonged only to Bosch, and that Bosch waived that privilege when it transferred the documents to IPCom as part of the assignment of the ‘216 patent.

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