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*ATTORNEY-CLIENT PRIVILEGE NOT AUTOMATICALLY TERMINATED BY ALLEGED CONFLICT OF INTEREST
Trustees of Columbia Uni. v. Gen Digital Inc., 24-1244 — Yesterday in an opinion by Judge DYK, the Federal Circuit reversed a district court order requiring Norton’s counsel, Quinn Emanuel Urquhart & Sullivan LLP, to disclose its privileged communications with a former Norton employee. The former employee had retained Quinn in 2014 when deposed in Columbia’s patent suit against Norton. In 2019, he told Columbia he was not represented by counsel for purposes of testifying against Norton at trial. When Quinn subsequently moved for sanctions against Columbia, the district court found it was undetermined whether the employee was represented by counsel in 2019 but identified a conflict of interest in Quinn representing both Norton and the former employee.
The Federal Circuit agreed with Quinn that privilege was not automatically terminated by the purported conflict of interest because such a rule would be “unfairly damaging to a good-faith client” and would punish the client for the lawyer’s impropriety. To the extent the district court sought to determine whether the employee was represented by Quinn in 2019, it should have ordered in camera review of the communications rather than public disclosure.
(1 to 4 stars rate impact of opinion on patent & trademark law)
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*METHOD OF VIRUS DETECTION WAS AN INELIGIBLE ABSTRACT IDEA
Trustees of Columbia Univ. v. Gen Digital Inc., 24-1243 — Yesterday in an opinion by Judge DYK, the Federal Circuit vacated a district court judgment that Columbia’s claims for a method of protecting computer systems from malicious activity were not ineligible under 35 U.S.C. § 101. Columbia argued the claims were not directed to an abstract idea because its method employed a model created using different computers, thereby increasing efficiency and improving the rate at which viruses were detected.
The Federal Circuit disagreed. Although using multiple computers did increase speed and detection rates, Columbia conceded its method ran on conventional technology. The “divide-and-conquer” approach of distributing a single task across multiple computers was itself an abstract idea, meaning the efficiency gains were likewise abstract. The court remanded the Alice step two determination due to remaining factual issues and instructed the district court to examine more closely whether the “model of function calls” supplied an inventive concept sufficient to transform the claims into eligible subject matter.
(1 to 4 stars rate impact of opinion on patent & trademark law)
IPO SUBMITS COMMENTS ON DRAFT AGREEMENT ON CROSS-BORDER ASPECTS OF CLIENT-PATENT-ATTORNEY PRIVILEGE
As previously reported, earlier this year, the IPO Board of Directors passed a resolution on cross-border patent practitioner privilege. Last week IPO President JOHN CHEEK (Tenneco LLC) submitted comments on behalf of IPO to the Group B+ Core Group on its “Draft Agreement on Cross-Border Aspects of Client-Patent-Attorney Privilege.” IPO’s comments state that it “commends the collective effort to develop a framework aimed at improving certainty and uniformity in the protection of confidential communications in cross-border patent practice.” They explain that “[e]nsuring that clients and practitioners can exchange confidential information without risk of compelled disclosure is essential to the proper functioning of the global patent system.” The comments address five specific aspects of the Draft Agreement and offer suggestions for improvement.
Thank you to IPO Past President and Harmonization Committee Chair DANIEL STAUDT (Siemens Corp.) and Harmonization Committee members EDWARD BLOCKER (Board Member Emeritus) and DEAN HARTS (3M Innovative Properties Co.) for assisting with preparing IPO’s Comments.
SENATE JUDICIARY COMMITTEE TO HOLD HEARING ON “STEALTH STEALING: CHINA’S ONGOING THEFT OF U.S. INNOVATION”
The Senate Judiciary Committee will hold a hearing titled “Stealth Stealing: China’s Ongoing Theft of U.S. Innovation” on March 17 at 10:15am ET. The hearing will examine potential policy responses to strengthen protection of U.S. intellectual property and maintain U.S. technological leadership. It will be held in Room 216 of the Hart Senate Office Building and streamed on the committee website.
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TODAY ON THE IP CHAT CHANNEL™: RECENT PHARMACEUTICAL, CHEMICAL, AND BIOTECH CASE LAW ON INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS
Join the IP Chat Channel™ today at 2:00pm ET for a webinar that will explore recent case law on the doctrine of equivalents in the pharmaceutical, chemical, and biotech fields. It will include discussions of topics including the continued viability of the Doctrine of Equivalents as a tool for proving patent infringement, judicial guidance on the successful application of the “insubstantial difference” and “function/way/result” tests and how limitations on the Doctrine of Equivalents can influence prosecution and litigation strategies.
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IP Chat Channel™ webinars are free for IPO members. Advance registration is required. CLE offered in most states.
IPOWNERS SPRING SUMMIT™ MEDIA PARTNERS
The Global IP Matrix, Women’s IP World, and The Caribbean IP Annual are media partners at the IPOwners Spring Summit™ held at the Westin Downtown in Washington, DC on March 19. Attendees can grab a copy of the magazines at the IPO registration area. The spring summit is a one-day conference on March 19 for both in-house and outside counsel. Education sessions are mixed with networking opportunities. To view the program, visit www.ipo.org/spring2026. Registrations will be accepted onsite. Breakfast and registration begin at 8:00am.
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