wouldn't be affected by the others it's not clear to me your honor that's the question we would what's it say this court was desirous of and official we would need to seek guidance with district court as to whether or not he would want to produce those or not it's simply not clear to me  extraordinary relief national circumstances in a penny pincher been allowed to practice before the p t o almost from its very inception and it seems to me there's not a lot of cases on this this issue doesn't come off that often i'm not saying i don't agree that it's true that district courts there are about twelve or thirteen opinions but reality is that's the tip of the iceberg because discovery opinions usually don't get written right w record it's kind of the same kind of things are going on here these are things are done from these are pictures are made for the purpose of patent prosecution right and they come up because parties want to compel the production of those documents and whole well maybe and maybe not with respect to the justification for the privilege i think it extends both to attorneys and agents right with respect to prosecution they do the exact same agents or it is a separate rule five or one privilege either way would be fine with us but as of yet we were to call it a separate privilege then we run smack up against that seventy five scary all came down in sixty three so in some sense this privilege has existed for forty years depending on the just recording what you're the cases are fairly evenly split i think  slight majority in favor of not recognizing the privilege but the reality is they're operating a gray area which is why i think you know the guidance on this issue is needed understand do you know the thing practice before them they do could they bind the courts i'm not so sure i would still you know you're just like talking to tell agents that agents have to maintain they absolutely can and they absolutely can say that they have to maintain this privilege which would put no i don't think so because i don't think that privilege could bind this court if the p t o is to actually say you know you know there is a privilege court should respect this i don't think that they could do that and then up but mr the p t o actually know what i'm sorry we passengers no i do not believe so there actually are preexisting rules there are only a couple cases from this court such as spaulding that deal with what kind of communications between a patent prosecutor writ large attorney o considerations in light of some of your honor's questions so far this morning the final consideration is whether it's appropriate under the circumstances your honor you asked about whether or not this could be considered after a full appeal and the answer was big a deal in this case second factor as you want to raise the case stay below the comments counsel made i respectfully disagree with his honor stated the case in its entirety pending the later of the two events if this court to as we believe it should say that mandamus should not issue and we go on with the i p r all orders would be stayed including the order to compel the production we would not get the documents unless and until we don't have the stay order in our record do you agree with the mandamus the court expressed frustration that counsel that counsel for queens was not producing the documents there was clearly that sentiment but there was no suggestion that there's a primary and a secondary reason for the stay there reasons for the stay and the evidence of that is the fact that this is the lifting the stay is triggered by one both events have to be done with so if it was the mandamus petition that was the dog in the i p r that was the tail presumably the court would have said production of documents will not occur unless and until the i p r is gone and claims come back to this case the state there will be no production pursuant to this case or pursuant to orders in this case unless and until the claims survive i p r well like why should we even if this is and a perfect vehicle for mandamus why shouldn't we say that this is an important enough issue that will rarely come before us and there's an obvious your honor already raised that and that is that there is consideration there is active discussion in the intellectual property community about whether through regulation or going through congress in national and international a margin is a sion for lack of a better term should be should be ruled and to have this court in parallel particularly on a mandamus petition without being normal weighing in of amaechi that would happen if something was truly important without that the normal appeal that that essentially to scorch and jump in front of that again i believe it was called a day a subspecies or a subchannel of law which by the way is another reason why we should let congress do this job not at least not only and they must petition and this is a an issue that was only lightly touched upon in opening remarks is that a patent agent in this case in fact has given advice on tissues of infringement and we can see that on appendix a ninety and a ninety six on issues of monetisation we can see that on a one fifty seven on the issue of damages we can see that on a one fifty nine that those even under the proposal from your friend on the other side those wouldn't be covered by the  they're asking be created agreed your honor but think of the just on a purely practical level the morass that this would create if there was just a general what the old saying that that the patent office is has to find out the scope of the privilege by defining the scope of the activity well then what is the district court supposed to do with a two thousand and three privilege law is it supposed to go entry by entry and see whether intermixed in the purportedly prosecution documents  discussions of infringement are discussions of validity of third party patents as your own arrays are discussions of damages well presumably if the if the privilege was defined and eliminated then the obligation would be to the party asserting the privilege to only put on that line of things that are privileged which would greatly narrow what the district had them look at or had to examine in him hypothetically your honor but here we have notwithstanding their argument that they're seeking a very narrow path an agent privilege two thousand entries eight hundred of which on their face would seem to be beyond the scope of the patent agent privilege they're seeking in this case so again why this is not an ideal vehicle to say the least for an analysis of the of an issue like this to get into the fundamental point why shouldn't this be done jaffe suggested that the most important policy consideration is the search for the truth that is the presumption that is the predominant consideration if a patent agent privilege is put in place to the extent it's important at all and your honor you raise an interesting question just how important is this i mean it hasn't come up before in ordinary appeal with the full record to see is this important is it not where if if i meet he wanted to weigh in and they could because this obviously affects the patent community potentially all of that would make sense but when it comes to talking about me and daemons that's a very different question and then it doesn't matter judgment is question is precisely on point is this such a big deal but assuming it is a big deal if we're example a patent agent discusses with the inventor ten years ago twelve years ago at the time of invention a potential on sale bar activity or a public use effectivity and the patent agent decides well i don't think it was on sale bar so we don't need to disclose it well if we never find out about that we as the defendants in this case have no way to test whether it was an on sale bar with the be different if it was in the well your honor we've decided for time immemorial that attorneys were willing to sacrifice some true finding for the attorney client privilege but what jaffe tells us is every time we want to find a new privilege we have to ask the question is the desire to find the truth outweighed by an important fundamental public good so we can't say light of what we know but that's water under the bridge for each new privilege we have to ask the question a new does the loss of the truth is that outweighed or or does it outweigh the th benefits and that you're going to ask a critical question which is what are the particular benefits here in this case of the pack maybe age and privilege and in the lawsuit the court did not write mandamus because there were no particular end of the day of course if if these documents are produced and if they are relevant to issues in this case and if the judge considers them or sense them to the jury and this court ultimately decides that there should be a privilege and those documents should have been sent considered to the judge for whatever purpose mark and for martin's already done with summary judgment or if it goes to the jury and the jury decide something based on what the patent agent said then the court can say there was a risk of error is that we if we person in a conflict absolutely not your honor section one zero six the very last line of one of six and i'm going to paraphrase it says unless required to produce under for other purposes or other circumstances so the confidentiality rule specifically said  and that that should be defined in certain ways with means and bounds the question is under jaffery specifically and under mohawk more generally is this the case that district that deserves may day mix or there are other adequate me s or is this being used as a substitute for field process we have yet not heard a single specific example of how queens will be hurt if these documents are produced and then at the end of the day they shouldn't have been i mean  the odds are the vast majority of the documents that are on this privilege law are irrelevant but the two or three or four that might be important well maybe they're important because they get at the truth or maybe they're prejudicial but we're telling the district court we're not going to trust you to weed our what is prejudicial and shouldn't be in front of the jury for example if the patent agent says i don't think the claim should be read that broadly the judge says quite rightly well if he's not want to skill in the art that's not relevant to the analysis anyway versus something that may be probative like the hypothetical i gave you before there is an on sale or activity that we don't know about sitting here today that we could learn about if we got these documents but the district judge is perfectly gets remembered not we're not done when the district court orders production then we have to prove that they're relevant and that there and that relevance outweighs the prejudice before we can use them in any way so that's another buffer against the risk that they're concerned about again not the risk not being specified here at all and then the next step is if the judge makes a mistake and lets something in that this court ultimately says it was prejudicial well then at the end of the appeals process this court can say sorry you have to do it again that's that's the factor the third factor the not the last thing just one thing which would tend to motivate them to keep the documents if it was a close call would tend to motivate the court to not allow us to use it in front of the judge for the for the court's purposes the jury purposes i want to get to the final standard and in my last minute if it's example this comes up in product liability places those are supposed to judge in professor frost's statements to the patent office for example he discusses those so the states have addressed privilege issues routinely but not this one and  but congress the second issue is congress has not said anything on the topic and third the third factor jaffee cites is the judicial conference advisory committee which is not said anything on the topic so far from there being a consensus of you your honor can you start one of the major points that that was made on the other side which is that you have not really articulated the harm that you would suffer from the heart i would put it this way it is very difficult to articulate the exact hard without waiving the privilege without telling you exactly what is in the documents i can't tell you exactly how samsung would rest assured of the rest assured they would use it in the heart of the discouragement of free and open communication which is the purpose of that and that is the harm for all privileges all of which are uncertain right he didn't know that the settlement agreements them s t g would make it into the expert report and they would be admissible at trial that they would be able relevance or reasonable royalty but this court did conduct a mandamus review because the factors that were laid out there ok they're using the subject lines from the e mails they're on the privilege while they're not using descriptions of what they are what is actually contained in those e mails i unlike most will have looked at these doctors  believe that they are for which i don't believe that they extend beyond the patent age or privilege at any rate i don't justify i don't need to justify the rest because of the district court did not rule on that they did not raise it they did not we can confer on it the certainly wouldn't cover infringement and i believe it just i agree i one hundred percent agree i disagree that those communications that are on the privilege actually pertain to that some of the subject lines say all kinds of things that have nothing to invented the world they haven't they have invent something they haven't invented the world and you have to have very frank conversations with these clients about what exactly is they've invented what their claims should cover and the whole point with respect to probably is in fact i'm sure that there is that he may have to i'm my partners i'm not super familiar with the disciplinary rules would suspect that you would have to disclose or withdraw the same way attorney with the also