How PTO Submissions Can Waive Privilege to Future Communications – Even for Trial Counsel and Subsequent Patent Owners

In re OptiumInsight (Federal Circuit 2017)

The Federal Circuit has denied OptumInsight’s petition for writ of mandamus on privilege waiver.

In the underlying litigation, OptumInsight has sued Cave Consulting for infringement of several healthcare analytics patents.  One of the originally asserted patents – U.S. Patent No. 5,835,897 – was developed by Symmetry Health Data Systems who later merged with Optum. (In particular, Optum bought Symmetry as the settlement of Symmetry’s infringement case against Optum).

Antitrust claim: An element of the Cave Consulting defense is an antitrust claim against the patentee for “knowingly asserting a fraudulently procured patent.”  The allegations argue that Symmetry (now part of Optum) lied about the conception date of the ‘897 patent during a prior reexamination.  As the appellate court describes:

Symmetry submitted an Information Disclosure Statement and a supporting affidavit from its patent attorney. The affidavit asserted that the ETG Program was not ready for patenting at the time of [its] RFP response because the inventor did not conceive of all the claimed concepts until August 1994. Symmetry successfully persuaded the patent examiner that the RFP response was not an invalidating offer for sale, and Symmetry thereafter filed additional patent applications that claimed priority to the ’897 patent.

To pursue its antitrust claim, Cave Consulting then demanded discovery of information relating to conception and first-sale of the invention. Optum refused – claiming privilege, but the district court ordered disclosure, including post-merger-communications – finding that the PTO submissions constituted waiver.

Under the Federal Rule of Evidence 502(a), the disclosure of to a federal agency or court waives attorney-client privilege and work-product protection as to information disclosed.  That intentional disclosure also extends to otherwise undisclosed communications if they “concern the same subject matter” and “they aught in fairness to be considered together.”  As the Federal Circuit has explained: “The rule prevents parties from selectively disclosing privileged information as an affirmative legal strategy, but falling back on the privilege to conceal inconsistent information.” See Seagate.

Here, Optum argues that Symmetry’s waiver should not apply to its successor.  In response, the Federal Circuit refused to “adopt such a categorical rule.” Rather, the approach of Section 502 is to extend waiver to the scope deemed fair. Further, the court writes: “Logically, if a successor company can assert privilege over its predecessor’s communications, the flipside of that principle is that a successor company can also be subject to its predecessor’s intentional waiver in certain circumstances.”

= = = = =

A big caveat here that the court determined was important is that the PTO submission by Symmetry was in a reexamination in the midst of a litigation campaign by Symmetry – asserting the very patent at issue.  Although attorney submissions during patent prosecution will also result in waiver, they are less likely to apply to extend to either (1) later communications with trial counsel or (2) subsequent owners of the patent rights.

48 thoughts on “How PTO Submissions Can Waive Privilege to Future Communications – Even for Trial Counsel and Subsequent Patent Owners

  1. 11

    Does it strike anybody as completely unconstitutional to investigate anybody to see if they could possibly have committed a crime? It would seem to me that before law enforcement should have the power to investigate anybody for possible criminal violations, they should first obtain a warrant from a court laying out the possible criminal violation they will be investigating and their investigation should be confined and supervised by a court of law.

    1. 11.1

      I quote:

      The importance of the Star Chamber increased during the reigns of James I (1603–25) and Charles I (1625–49). Under Archbishop William Laud, the court became a tool of royal oppression, seeking out and punishing religious and political dissidents.

      During this time the court met in secret, extracting evidence by torturing witnesses and handing out punishments that included mutilation, life imprisonment, and enormous fines. It turned equity’s traditionally broad discretion into a complete disregard for the law. The Star Chamber sometimes acted on mere rumors in order to suppress opposition to the king.
      The Star Chamber’s Arbitrary use of power and the cruel punishments it inflicted produced a wave of reaction against it from Puritans, advocates of common-law courts, and others opposed to the reign of Charles I. In 1641 the Long Parliament abolished the court and made reparations to some of its victims.

      The term star chamber has come to mean any lawless and oppressive tribunal, especially one that meets in secret. The constitutional concept of Due Process of Law is in part a reaction to the arbitrary use of judicial power displayed by the Star Chamber.

      1. 11.1.3

        Investigating billionaires at the top levels of government who l i e to the country on a daily basis: HORRIBLE CRIME!!

        Terr 0rizing families of brown people and separating innocent children from their families: MAKES NED HELLER SLEEP BETTER

    2. 11.2

      It strikes me as wrong and unconstitutional. I don’t like you so I am going to find something I can put you in jail for, or at least we will take years of your life and lots of your money.

    3. 11.3

      ? Ned, post a video of the response you get of your sweeping constitutional allegation here the next time you get stopped by a highway patrol car.
      A warrant may be needed to search your house or personal office, but not for most other investigative activities, much less a civil case document discovery order by the defendant against the plaintiff. If their response would lead to self-incrimination perhaps they can take the 5th? But an attorney who did that would be in serious trouble.

      1. 11.3.1

        Paul, I have people who have actually come to me about police searches and seizures after having hear of our case. The people are not happy across the board, Paul, with the state of due process. I actually heard Senator Paul heavily criticize Sessions for abuse of power in focusing to heavily on seizing property of ordinary people subject to criminal investigations.

    4. 11.4

      completely unconstitutional to investigate anybody


      Meet Ned Heller, a patent attorney (yes, an actual attorney wrote that) who can’t argue his way out of a paper bag and whose understanding of the law was shaped by a steady diet of Faux News. This is not uncommon. Lots of small minds stumbling around in Silly Con Valley, muttering about Ayn Rand and “individual freedom” while genuflecting before Emperor Tangerine. These are some of the worst human beings on the planet.

  2. 10

    MM, you said self-driving cars would never work, which, of course, contradicts your earlier statements about anything on the computer being trivial and that you need only tell the copyboy to make the computer do what you want.

    Really sad that this blog has been driven into the ground by MM and Google.

    1. 10.1

      NWPA: You have to remember that Lemley [is] advocating the complete abolishment of the patent system.

      Show us the quote you p @ th et ic l y in g t -0 0 l.

      1. 10.1.1

        Go read the paper below.

        >Why patents are holding back U.S. Innovation
        VBNews online
        A new paper, Does Patent Licensing Mean Innovation, by Robin Feldman, of the University of California-Hastings Law School, and my colleague Mark Lemley, of Stanford Law School, dispels what doubt there may have been about the innovation value of patents..

    2. 10.2

      you said self-driving cars would never work

      LOL No, I never said that.

      your earlier statements about anything on the computer being trivial

      LOL Never said that either.

      you need only tell the copyboy to make the computer do what you want.

      The computer will do what it’s told to do. That’s true. Someone needs to type the instructions. In many cases, that person need never to have taken a computer science class. They just need to know how to follow instructions for giving instructions, and then they need to give the instructions.

      I know this is really difficult stuff for you to understand, Night Wiper. I’m sorry that you’re frustrated. It’s a common malady these days among rich entitled white men. Don’t be afraid! I saw on the Internet today that they have diapers for adults like you.

  3. 9

    At the end of a Senate subcommittee hearing on Tuesday morning, Chairman Susan Collins (R-Maine) didn’t switch off her microphone. Apparently speaking to Sen. Jack Reed (R.I.), the ranking Democrat of the committee, Collins discussed the federal budget — and President Trump’s lack of familiarity with the details of governing…..

    “I swear, [the Office of Management and Budget] just went through and whenever there was ‘grant,’ they just X it out,” Collins says. “With no measurement, no thinking about it, no metrics, no nothing. It’s just incredibly irresponsible.”

    “Yes,” Reed replies. “I think — I think [the President] is crazy “I mean, I don’t say that lightly and as a kind of a goofy guy.”

    “I’m worried,” Collins replies.

    It’s not the first time we’ve had a senile incompetent plainly soiling himself (and the entire country) in the Oval Office. That happened with Ronald Reagan, too. And in both cases the Super Serious and Responsible White Daddies just looked the other way.

    1. 9.1

      Super Serious and Responsible White Daddies just looked the other way.

      ? Of course, this blatantly classISM, racyISM will not only be removed as offensive, comments discussing the offense will be quickly expunged.

      The perceptions created by the editorial choices do not go away with those expungements.

    2. 9.2

      Coming up next MM blames N. Korea on patents.

      (Hard to believe that the content of this blog isn’t being sponsored by one of the software cartel.)

  4. 8

    Proponents of self-driving cars say they’ll make the world safer, but autonomous vehicles need to predict what bicyclists are going to do. Now researchers say part of the answer is to have bikes feed information to cars.


    Nobody could have predicted any of this.

    Can we hear the glibertarians cheer about “individual rights” now? C’mon, guys! So exciting. For years I had to listen to the patent maximalists champion all these junky “use logic to drive a car” patents. It’s time to jump up and down and holler “hooray”! We’re almost there. Next thing you know “researchers” will be telling us that “part of the answer” to having robot cars on every street is to use information from …. humans!

    Better register now. LOL

    1. 8.1

      Actually, humans are not bikes.

      The sentence you reference does not say that bike riders will be supplying the information.

      (do you remember the word: anthropomorphication…? 😉 )

      1. 8.1.1

        What about pedestrians?

        Oops — sorry. That’s a third grade level extension of logic. You’re not prepared yet.

        Meanwhile, I’m sure you’re cheering this result:

        The Supreme Judicial Court ruled that doing so amounts to a fresh arrest of the person that is not authorized by state law, in the first such ruling to apply to an entire state, according to Massachusetts’ attorney general.

        “Massachusetts law provides no authority for Massachusetts court officers to arrest and hold an individual solely on the basis of a Federal civil immigration detainer, beyond the time that the individual would otherwise be entitled to be released from State custody,” the court wrote in its decision.

        Right? I know I am. Oh but wait! I’m “against all individual rights.” I almost forgot.



          “I’m “against all individual rights.” I almost forgot.”

          Nah, you’re only fer dem ind’vidul rights when its fer illegals. Amirite?

          Hopefully Mass lawlmakers will do their job and get to passin’ some legislation duly helping out the federal gubmit giving them so much money.


          Oops — sorry. That’s a third grade level extension of logic. You’re not prepared yet.

          LOL – that is not germane to my post correcting your error.

          Bikes still are not human. YOUR comment was directly to bikes – even a third grader can tell that difference.

          Now if INSTEAD you wanted to make a different point, the point that you now reach for, then that different point would perhaps be worth discussing.

          It might then take a few seconds to consider that claims looking to retrieve information about objects might need to retrieve information from objects that include humans.

          But does that mean what you are trying to make it mean?

          Can there be ways of collecting information from objects that does not depend on the object being a human or not?

          Or did you have some other dissembling in mind? Did you have in mind the dissembling that you employ when you try to move the goalposts for claims to be TOTALLY in the mind?

          As to “Meanwhile, I’m sure you’re cheering

          Why do you insist on projecting?

          I have no clue what story you are referencing or why you are taking a snippet of the story and attempt a jeer with it.

          What is the point with your snippet?
          What is the legal point under consideration for the Commonwealth of Massachusetts?
          Where does the strawman of you being “against ALL individual rights” come from?

          You seem to want to act like there could be zero overlap in items that you may be for and items that those who want strong patents ALSO may be for.

          What kind of “logic” is that?


            I see the types of “dozens of addresses” that you pat yourself on the back with…

  5. 7

    link to

    VidRay instantly creates video files small enough to attach to medical records, radiology information systems (R.I.S.) and emails without impacting radiologist workflow.

    LOL Because creating “small enough” video files was such a huuuuuuge techno challenge. Oh, but wait! These are “attached to medical records.” Totally different!

    I was shocked — shocked! — to find this rotten-to-the-core company bragging about its junk patents. Here they are making news again:

    link to

    1. 7.1

      Feel free to do without – as you may also do without ANY of the things that you constantly whine about…

      1. 7.1.1

        you may also do without ANY of the things

        Gosh forbid there are no patents on attaching “small enough” files to emails wherein the content of the file is related to X. How will the world continue to turn without those patents? Nobody will know how to attach files to emails wherein the content of the file is related to X. “Engineers” everywhere will be totally stumped. Files with content related to R or S — sure, that’s easy. But T, U or V? That’s tricky stuff. Don’t even get me started on W or X! That’s like rocket science.


          As I said – feel free to do without.

          (your own whines work against you)

          Do you think that a Flash of Genius must be involved before a patent can be earned?

          (that was a rhetorical question)


            Do you think that a Flash of Genius must be involved before a patent can be earned?


            (that was a rhetorical question)

            It should be because I’ve addressed the issue dozens of times, including your silly cartoonish caricature of it.


              I am absolutely sure that “ I’ve addressed the issue dozens of times” means absolutely nothing.

              “address the issue” of Flash of Genius?
              Dozens of times?

              Do you even understand the term and its role in the history of US patent law?

              Here’s a hint: the Act of 1952 rebuking a Supreme Court that had grown anti-patent.

              Ring a bell now, Mr. “dozen addresses”…?

  6. 6

    How are alleged AT acts of fraud on the PTO to obtain an invalid patent immune from discovery by attorney-client privilege even without a waver argument?

  7. 5

    Trump has asked his advisers about his power to pardon aides, family members and even himself in connection with the probe, according to one of those people. A second person said Trump’s lawyers have been discussing the president’s pardoning powers among themselves.

    Heckuva job, Repukkkes.

    To all the maximalist types who voted for this unbelievable piece of shirt: eff you.

  8. 2

    Nobody can predict how this is going to turn out for OptumInsight and the super credible attorney who filed that affidavit.


  9. 1

    Not quite on the post topic, but here’s claim 1 in the patent in suit. No 112/antecedent issue with the bolded text? It seems misplaced.

    1. A computer-implemented process for processing medical claims including the steps of:
    (a) reading a medical claim data, input as at least one of a plurality of data records, into a computer memory;
    (b) validating each of the at least one of a plurality of data records for at least one of a diagnosis code and a treatment code;
    (c) reading at least one pre-defined relationship between the at least one of a diagnosis code and a treatment code in the validated at least one of a plurality of data records and pre-defined episode treatment categories; and
    (d) grouping the validated at least one of a plurality of data records to an episode treatment category based upon the pre-defined relationship, each episode treatment category having a dynamic time window defining a time period during which validated at least one of plurality of data records may be grouped to an episode treatment category.

    I wonder how this part of the claim has been construed in the litigation. Also the phrase itself is not in the spec (“pre-defined episode treatment categories” nor “episode treatment categories”, nor even “treatment categories”, although there are “treatment groups” mentioned in the spec.)

    1. 1.1

      A computer-implemented process for processing medical claims

      No point in reading the claim beyond this. It’s g@ rbage.

      Attorneys who can’t tank this in five seconds: incompetent.

      Attorneys who suggest taking a license to this kind of cr@p: worse than incompetent.

      1. 1.1.1

        Presumably the defendant will go Alice on it when the time comes; for now I assume they’re in discovery given this post concerns an interlocutory appeal about privilege.

    2. 1.2

      reading at least one pre-defined relationship between X and Y


      Deep, serious stuff folks. Revolutionary!

    3. 1.3

      No Marsh there is not antecedence problem. If it read THE pre-defined episode treatment categories, then there would be a minor problem. As it is, the term is properly introduced.

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