note a guide to waiver after echostar and seagate - UW Law School

BELDEN - FINAL 11/29/2007 4:08 PM 

NOTE 

A GUIDE TO WAIVER AFTER ECHOSTAR AND SEAGATE: 

WHEN YOU RAISE THE ADVICE-OF-COUNSEL DEFENSE 

TO WILLFUL PATENT INFRINGEMENT, 

WHAT ARE YOU GIVING UP? 

BRETT P. BELDEN* 

I. INTRODUCTION 

Patent litigation is an extremely high-risk, high-potential-reward 

type of litigation. Patent infringement 1 suits are very expensive to 

litigate, costing anywhere from $500,000 to nearly $4 million 

depending on the amount of damages at issue. 2 Furthermore, the 

plaintiff places the validity of its patent rights at issue and risks the 

possibility that a court will find those rights invalid. 3 

However, the potential rewards for the plaintiff (and dangers for 

infringers) are significant as well. Actual damages regularly are in the 

millions, 4 and in some cases juries have awarded damages in the 

* J.D. expected, University of Wisconsin Law School, 2008; B.S.E.E., 

B.S., University of Wisconsin–Milwaukee, 2005. I would like to thank my editors, 

Kerry Burchill and Melissa Caulum, as well as Brian Bean, for their careful and 

insightful edits and suggestions throughout the several drafts of this Note. I would also 

like to thank Professor Pilar Ossorio for her generous substantive guidance on this 

topic. 

1. Patent infringement generally consists of (1) making, using, selling, 

offering to sell, or importing an invention covered by a patent’s claims without the 

patent owner’s permission or (2) inducing or contributing to such acts. See 5 DONALD 

S. CHISUM, CHISUM ON PATENTS §§ 16.01, 17.01 (2006). 

2. AM. INTELLECTUAL PROP. LAW ASS’N, REPORT OF THE ECONOMIC SURVEY 

22 (2003). Costs rose significantly in the two years between 2001 and 2003, increasing 

approximately $500,000 for suits where between $1 million and $25 million was at risk 

and approximately $1 million for suits where over $25 million was at risk. Id. 

3. ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS 32 

(2004). 

4. See PRICEWATERHOUSECOOPERS LLP, 2007 PATENT AND TRADEMARK 

DAMAGES STUDY 13 (2007); John Dragseth, Note, Coerced Waiver of the Attorney- 

Client Privilege for Opinions of Counsel in Patent Litigation, 80 MINN. L. REV. 167, 

167 n.2 (1995) (citing a study of patent cases from 1982–94 which found that of cases 

in which damages were awarded, half awarded at least $1 million).


934 WISCONSIN LAW REVIEW 

billions. 5 Furthermore, plaintiffs can often receive an injunction 

ordering a defendant to cease the infringing activities. 6 Finally, if the 

court finds the infringement willful, 7 it has the discretion to award 

enhanced damages as well as attorneys’ fees. 8 Due to the significant 

potential monetary gains, plaintiffs allege willfulness in nearly every 

suit for patent infringement. 9 

The attorney-client privilege and attorney-work-product doctrine 

have become essential tools of the American legal system, particularly 

in regard to willful-patent-infringement cases. 10 Together, they allow 

attorneys to obtain frank and complete disclosure from their clients 11 

and to document their thoughts and legal strategies 12 without the fear 

that client communications and work product will be discoverable in 

future litigation. These tools are necessary because attorneys cannot 

adequately represent their clients if certain communications and 

thoughts are exposed to the knowledge of opposing counsel. 13 In actions 

for willful patent infringement the issues are complex, and welldeveloped 

pretrial advice and trial strategy are critical for success. 

Therefore, attorney-client privilege and work-product protection play a 

particularly important role in patent litigation. 

Attorney-client privilege and work-product protection can, 

however, be waived by clients. 14 In willful patent infringement actions, 

5. See, e.g., Evan Hansen & Eliot Van Buskirk, MP3’s Loss, Open Source’s 

Gain, WIRED, Feb. 23, 2007, available at http://wired.com/entertainment/music/ 

news/2007/02/72785. 

6. See JAFFE & LERNER, supra note 3, at 31. 

7. Whether an act of infringement is willful depends on the alleged 

infringer’s intent and reasonable beliefs. See Ortho Pharm. Corp. v. Smith, 959 F.2d 

936, 944 (Fed. Cir. 1992). Willfulness is determined in consideration of the totality of 

the circumstances. See id. For further discussion of willful patent infringement, see 

infra Part II.A.3. 

8. See 35 U.S.C. §§ 284–85 (2000). The court has the authority to award up 

to three times the amount of actual damages. Id. § 284. 

9. See Kimberly A. Moore, Empirical Statistics on Willful Patent 

Infringement, 14 FED. CIR. B.J. 227, 232 (2004). 

10. See In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1298 (Fed. Cir. 

2006); EDNA SELAN EPSTEIN, THE ATTORNEY-CLIENT PRIVILEGE AND THE WORK- 

PRODUCT DOCTRINE 2–3, 480–81 (4th ed. 2001). 

11. EPSTEIN, supra note 10, at 3. The attorney-client privilege forbids an 

attorney from disclosing certain confidential client communications either voluntarily or 

by compulsion absent a waiver of privilege by the client. Id. at 2–3; see also discussion 

infra Part II.A.1. 

12. EPSTEIN, supra note 10, at 480–81. The work-product doctrine protects an 

attorney’s mental impressions and analysis from discovery by opposing counsel. Id.; 

see also discussion infra Part II.A.2. 

13. EPSTEIN, supra note 10, at 477. 

14. See id. at 363–91, 607–15, 618–41.


2007:933 A Guide to Waiver After EchoStar and Seagate 935 

defendants often assert the defense of reliance on advice of counsel. 15 

By asserting this defense, a defendant claims that it reasonably believed 

it did not infringe any valid patent right held by the plaintiff due to 

advice it received from counsel. 16 The defendant automatically waives 

attorney-client privilege and work-product protection by raising the 

advice-of-counsel defense. 17 In determining the scope of the waiver, 

courts must balance the policies favoring the attorney-client privilege 

and work-product protection with the need for plaintiffs to have access 

to certain communications and work product in order to attack the 

defense. 18 

After attempting to define the scope of waiver several times in the 

past, the United States Court of Appeals for the Federal Circuit set out 

once again in 2006 to clarify the scope of waiver in In re EchoStar 

Communications Corp. 19 TiVo, Inc., filed suit against EchoStar 

Communications Corporation, EchoStar DBS Corporation, EchoStar 

Technologies Corporation, and Echosphere Limited Liability Company 

(collectively “EchoStar”) for willfully infringing one of its patents. 20 In 

response, EchoStar asserted reliance on the advice of its in-house 

counsel that it did not infringe TiVo’s patent. 21 EchoStar also obtained 

legal advice from attorneys at Merchant & Gould, P.C. (“Merchant & 

Gould”) 22 subsequent to the filing of the action. 23 EchoStar chose, 

however, not to rely on this advice. 24 TiVo sought production of 

documents from EchoStar and Merchant & Gould. 25 

15. See id. at 347–48, 351, 625; discussion infra Part II.A.3. 

16. See Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 944 (Fed. Cir. 1992); 

see also EPSTEIN, supra note 10, at 347–48; discussion infra Part II.A.3. 

17. See EPSTEIN, supra note 10, at 347. 

18. See In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1302 (Fed. Cir. 

2006). 

19. Id. at 1298, 1300–02. 

20. Id. at 1296–97. TiVo’s patent covered time-warping technology frequently 

used in digital video recorders (DVRs). EchoStar Loses Bid for New Trial, N.Y. 

TIMES, Nov. 28, 2006, at C4. EchoStar manufactures and sells DVRs under its Dish 

Network brand. See Dish Network, http://www.dishnetwork.com (last visited Sept. 26, 

2007); EchoStar, http://echostarfixedsatellite.com (last visited Sept. 26, 2007). 

21. EchoStar, 448 F.3d at 1297; TiVo Inc. v. EchoStar Commc’ns Corp., 

No. 2:04-CV-1 (DF), 2005 U.S. Dist. LEXIS 42481, at *3, *21–23 (E.D. Tex. Sept. 

26, 2005). 

22. Merchant & Gould is an intellectual property law firm. See Merchant & 

Gould, http://www.merchantgould.com/index.html (last visited Sept. 26, 2007). 

23. EchoStar, 448 F.3d at 1297. Neither this opinion nor the district court 

opinion revealed the nature of Merchant & Gould’s advice to EchoStar. Id.; TiVo, 

2005 U.S. Dist. LEXIS 42481. 

24. EchoStar, 448 F.3d at 1297. 

25. Id.



The District Court for the Eastern District of Texas held that 

because EchoStar asserted the advice-of-counsel defense, it waived 

immunity for all communications with and any work product of 

Merchant & Gould. 26 The court found that EchoStar waived workproduct 

protection regardless of whether Merchant & Gould 

communicated the work product to EchoStar. 27 Both EchoStar and 

Merchant & Gould filed petitions for a writ of mandamus with the 

Federal Circuit. 28 

On review, the court first addressed EchoStar’s waiver of attorneyclient 

privilege, holding that the waiver “applies to all other 

communications relating to the same subject matter.” 29 The court found 

the waiver applied to both EchoStar’s in-house counsel and Merchant & 

Gould, despite the fact that EchoStar chose not to rely on Merchant & 

Gould’s advice. 30 

The court of appeals then addressed the waiver of work-product 

protection, noting that district courts, to construe the waiver properly, 

should balance the policy favoring the work-product doctrine with 

fairness to the plaintiff. 31 The goal of waiver is to prevent a party from 

using advice as both a “sword and a shield”; 32 that is, an alleged 

infringer should not be permitted to waive privilege for favorable 

advice and assert privilege for unfavorable advice. 33 

Recognizing that district courts might experience difficulty in 

balancing these policies, the court identified three categories of work 

product that it considered potentially relevant to the advice-of-counsel 

defense: (1) documents embodying a communication between the 

attorney and client concerning the subject matter of the case; 34 (2) 

documents reflecting the attorney’s mental impressions that were not 

26. Id. 

27. Id. 

28. Id. at 1296–97, 1305. Judges Gajarsa, Schall, and Prost heard EchoStar’s 

petition, and Gajarsa drafted the opinion of the court. Id. at 1296. 

29. Id. at 1298–99 (quoting Fort James Corp. v. Solo Cup Co., 412 F.3d 

1340, 1349 (Fed. Cir. 2005)). 

30. Id. at 1299. 

31. See id. at 1299–1305. 

32. Id. at 1301. 

33. Id. 

34. This first category includes traditional opinion letters. Id. at 1302. 

Opinion letters are the letters containing the opinion upon which the defendant relies in 

reasonably believing the plaintiff’s patent is invalid, unenforceable, or not infringed. 

See Sean C. Cunningham, The When, Who, What and Why of Patent Opinion Letters, 

DLA PIPER PUBLICATIONS, 2002, http://www.dlapiper.com/global/publications/ 

detail.aspx?ref=snapshot&pub=485. Accordingly, opinion letters form the basis of the 

advice-of-counsel defense. See id.



communicated to the client; 35 and (3) documents referencing a 

communication between the attorney and client concerning the case’s 

subject matter that were not actually communicated to the client. 36 The 

court noted that the first category fell under the scope of the waiver of 

attorney-client privilege and, thus, was discoverable. 37 

The court of appeals found that work product in the second 

category (which the attorney never communicates to the client) was not 

discoverable. 38 Because such work product embodies only the thoughts 

of the attorney, it has little bearing on the alleged infringer’s state of 

mind. 39 Therefore, the court found the policies supporting the workproduct 

doctrine outweighed any value that this type of work product 

might provide to the willfulness inquiry. 40 

In contrast, the court of appeals cautiously found work product to 

be discoverable in the third category (referencing a communication 

between the attorney and client but not communicated to the client). 41 

Unlike work product that falls within the second category, the court 

found work product that references or describes a communication 

between the attorney and client to have substantial value in determining 

what communications the attorney actually made to the client. 42 The 

court noted the danger of such documents possibly containing work 

product that falls within the second category, suggesting that the parties 

should carefully redact such work product before production. 43 

On its face, EchoStar appears to be a step-by-step guide to the 

scope of waiver of attorney-client privilege and work-product immunity 

when an alleged infringer relies on the advice-of-counsel defense in an 

action for willful patent infringement. To be sure, the opinion 

substantially clarifies a previously murky, complicated area of patent 

law, particularly with respect to the law governing work-product 

immunity. Inspection of district court cases subsequent to EchoStar 

35. EchoStar, 448 F.3d at 1302. 

36. Id. (citing Thorn EMI N. Am., Inc. v. Micron Tech., 837 F. Supp. 616, 

622–23 (D. Del. 1993)). The Federal Circuit acknowledged that these three categories 

were not necessarily exhaustive. Id. at 1302 n.3. 

37. Id. at 1302. 

38. Id. at 1303. 

39. Id. at 1304. 

40. Id. 

41. Id. As an example of such work product, the court wrote that “if an 

attorney writes a memorandum or an e-mail to his associate referencing a phone call 

with the client, in which he indicates that he discussed the client’s potential 

infringement, then such a memorandum is discoverable.” Id. 

42. Id. 

43. Id.



reveals, however, that some important questions remain unanswered in 

the wake of the decision. 44 

Part II of this Note provides background helpful for the analysis of 

EchoStar, including a summary of precedent regarding the scope of 

waiver prior to EchoStar. Part III analyzes the EchoStar opinion as well 

as several recent district court opinions relying on EchoStar and 

identifies two primary questions that were not conclusively addressed in 

the decision: (1) whether the waiver extends to all possible defenses to 

patent infringement or only those addressed in the formal opinion on 

which the alleged infringer relies; 45 and (2) whether the waiver extends 

to trial counsel. 46 Part III also discusses In re Seagate Technology, 

LLC, 47 the Federal Circuit’s answer to the second question in which it 

held that the waiver generally does not extend to trial counsel. 48 Part IV 

attempts to properly resolve the unanswered first question and analyze 

the appropriateness of the Federal Circuit’s solution to the second 

question in Seagate by focusing on the reasoning of EchoStar. 

This Note concludes by suggesting that the district courts can 

properly solve the vast majority of future waiver issues by focusing on 

the policy concerns and balancing test of EchoStar. By focusing on 

these building blocks of EchoStar, the Federal Circuit appropriately 

held in Seagate that the waiver should not extend to trial counsel. 49 

With respect to the unresolved first question, the district courts should 

follow the example set in Seagate and apply the EchoStar reasoning to 

conclude that the waiver should extend only to the defenses referenced 

in the underlying opinion rather than to all possible defenses. 

44. See discussion infra Part III.D.2. 

45. For example, if an alleged infringer relies upon counsel’s advice that the 

alleged infringer’s conduct does not infringe (i.e., a noninfringement opinion), it is 

unclear whether the waiver extends to all three possible defenses (invalidity, 

unenforceability, and noninfringement) or only to noninfringement. See infra Part 

III.D.2.a. 

46. Trial counsel is involved in preparation for actual or potential litigation, as 

opposed to opinion counsel, who gives advice regarding potential infringement but is 

not involved in preparation for litigation. See In re Seagate Tech., LLC, No. 06-M830, 

slip op. at 15 (Fed. Cir. Aug. 20, 2007). 

47. Id. 

48. Id. at 18, 21. 

49. Id.



II. BACKGROUND TO ECHOSTAR 

A. Legal Concepts Central to EchoStar 

1. THE ATTORNEY-CLIENT PRIVILEGE 

The attorney-client privilege is one of the oldest and most 

important common-law doctrines recognized by the courts. 50 It protects 

confidential communications between attorneys and their clients by 

generally prohibiting discovery of such communications. 51 The 

privilege belongs to the client, not the attorney, and only the client has 

the authority to waive it. 52 The attorney, therefore, must assert the 

privilege in regard to confidential communications with the client unless 

the client permits disclosure. 53 

Courts have long recognized the strong policy justifications behind 

the attorney-client privilege. 54 The attorney-client privilege is intended 

to “encourage full and frank communication between attorneys and 

their clients.” 55 Without the privilege, people might choose not to seek 

the advice of an attorney at all out of fear that their communications 

could be subject to discovery. 56 At best, clients would selectively 

withhold information from their attorneys in an effort to avoid 

disclosing information that could harm them in future litigation. 57 

Without complete and honest disclosure on the part of clients, it is 

exceedingly difficult for attorneys to offer useful legal advice. 58 Such 

competent legal advice is considered essential to “promote broader 

public interests in the observance of law and administration of 

justice.” 59 

50. See EPSTEIN, supra note 10, at 2. (“[The attorney-client privilege] was 

accepted as early as the reign of Elizabeth I.”). 

51. See id. There are several exceptions to this rule (such as when the 

attorney is being sued by the client for malpractice) under which disclosure of 

confidential communications is allowed, see id., but for the purposes of this Note, this 

description will suffice. 

52. Id. 

53. Id. 

54. See, e.g., Upjohn Co. v. United States, 449 U.S. 383 (1981); Fisher v. 

United States, 425 U.S. 391 (1976); Hunt v. Blackburn, 128 U.S. 464 (1888); United 

States v. United Shoe Mach. Corp., 89 F. Supp. 357 (D. Mass. 1950). 

55. Upjohn, 449 U.S. at 389. 

56. See United Shoe, 89 F. Supp. at 358 (“In a society as complicated in 

structure as ours and governed by laws as complex and detailed as those imposed upon 

us, expert legal advice is essential.”). 

57. EPSTEIN, supra note 10, at 3. 

58. See Hunt, 128 U.S. at 470. 

59. Upjohn, 449 U.S. at 389.



2. THE WORK-PRODUCT DOCTRINE 

Like the attorney-client privilege, the work-product doctrine has 

become one of the fundamental doctrines of the current American legal 

system, despite its relatively short history in American law. 60 The 

Supreme Court first recognized work-product protection in 1947 in 

Hickman v. Taylor, 61 and the Federal Rules of Civil Procedure have 

since codified it. 62 The work-product doctrine protects the “mental 

impressions, conclusions, opinions, or legal theories” of an attorney 

from unnecessary discovery by another party. 63 Such work may be 

reflected “in interviews, statements, memoranda, correspondence, 

briefs, mental impressions, personal beliefs, and countless other 

tangible and intangible ways.” 64 However, work-product protection is 

not absolute; there are exceptions under which opposing parties can 

gain access to work product despite the work-product doctrine. 65 Even 

when discovery is ordered under such exceptions, courts are careful to 

protect the attorney’s thoughts from discovery. 66 

Like the attorney-client privilege, the work-product doctrine is 

supported by strong policy justifications that are central to the operation 

of the judicial system. 67 In order for an attorney to work effectively and 

properly represent a client, it is necessary for the attorney to “work 

with a certain degree of privacy, free from unnecessary intrusion by 

opposing parties and their counsel.” 68 Without work-product protection, 

60. See EPSTEIN, supra note 10, at 480–81. 

61. 329 U.S. 495 (1947). 

62. See FED. R. CIV. P. 26(b)(3). It is important to note that the codified rule 

protects from discovery only documents and tangible things. See EPSTEIN, supra note 

10, at 481. Therefore, courts still consider Hickman the standard for evaluating types 

of intangible work product not covered by the codified rule. See id. Furthermore, 

courts frequently utilize the principles outlined in Hickman to interpret the codified 

rule. Id. 

63. FED. R. CIV. P. 26(b)(3). 

64. Hickman, 329 U.S. at 511. 

65. See id. (“Where relevant and non-privileged facts remain hidden in an 

attorney’s file and where production of those facts is essential to the preparation of 

one’s case, discovery may properly be had.”); FED. R. CIV. P. 26(b)(3) (specifying that 

the court can order discovery of an attorney’s work product “only upon a showing that 

the party seeking discovery has substantial need of the materials in the preparation of 

the party’s case and that the party is unable without undue hardship to obtain the 

substantial equivalent of the materials by other means”). 

66. See FED. R. CIV. P. 26(b)(3) (“In ordering discovery of such materials 

when the required showing has been made, the court shall protect against disclosure of 

the mental impressions, conclusions, opinions, or legal theories of an attorney or other 

representative of a party concerning the litigation.”). 

67. See EPSTEIN, supra note 10, at 481. 

68. Hickman, 329 U.S. at 510–11.



an attorney’s written thoughts and strategies would become an open 

book for opponents to read freely upon mere demand. 69 Therefore, 

most attorneys would opt not to organize their thoughts into a written 

form at all to protect themselves and their clients. 70 Such a situation 

would be detrimental to attorneys’ performance, to their clients’ 

interests, and to the effectiveness of the judicial system as a whole. 71 

3. WILLFUL PATENT INFRINGEMENT AND THE 

ADVICE-OF-COUNSEL DEFENSE 

A party is guilty of patent infringement when that party infringes 

upon another’s valid, enforceable patent rights. 72 The Patent Act defines 

infringement according to the rights conferred upon a patent holder. 73 

Accordingly, section 271(a) provides that “whoever without authority 

makes, uses, offers to sell, or sells any patented invention, within the 

United States or imports into the United States any patented invention 

during the term of the patent therefore, infringes the patent.” 74 In 

addition to injunctive relief, patent holders can receive compensatory 

damages for infringement of the right to exclude the patent granted 

them, and the courts have frequently upheld significant compensatory 

damage awards. 75 

If courts find willful infringement, they can choose at their 

discretion to award enhanced damages of up to three times the already 

substantial compensatory damages, as well as attorney’s fees. 76 In 

69. Id. at 511. 

70. Id. 

71. Id. (“The effect on the legal profession would be demoralizing. And the 

interests of the clients and the cause of justice would be poorly served.”). 

72. See 5 CHISUM, supra note 1, § 16.01. 

73. Id. § 16.02. Section 154 of the Patent Act provides that a patent confers 

upon the holder the “right to exclude others from making, using, offering for sale, or 

selling the invention throughout the United States or importing the invention into the 

United States” during the term of the patent. 35 U.S.C. § 154 (2000). 

74. 35 U.S.C. § 271(a) (2000). Section 271(a) defines direct infringement. A 

party may also indirectly infringe patent rights by inducing or contributing to direct 

infringement by others. See 5 CHISUM, supra note 1, § 17.01 (citing 35 U.S.C. §§ 

271(b), 271(c)). 

75. See Dragseth, supra note 4, at 167 n.2 (citing a study of patent cases from 

1982–94 which found that of cases in which damages were awarded, the award was at 

least $1 million in nearly half of the cases); PRICEWATERHOUSECOOPERS LLP, supra 

note 4, at 13, 15. 

76. See Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992) 

(holding a finding of willfulness is sufficient to justify enhanced damages); Rohm & 

Haas Co. v. Crystal Chem. Co., 736 F.2d 688, 691 (Fed. Cir. 1984) (holding a finding 

of willfulness to justify granting attorney’s fees to the plaintiff); 35 U.S.C. § 284 

(authorizing courts to award enhanced damages of up to three times the actual



evaluating willfulness, courts consider the totality of the circumstances 77 

reflecting the alleged infringer’s intent and reasonable beliefs. 78 The 

Federal Circuit has outlined several factors that are germane to the 

determination of willfulness. 79 The Federal Circuit has consistently 

emphasized that an alleged infringer who has notice of another’s patent 

rights has an “affirmative duty to exercise due care to determine 

whether or not he is infringing.” 80 Due to the significant potential 

monetary benefit, plaintiffs in actions for patent infringement almost 

always include an allegation of willfulness in their complaints. 81 

One defense alleged infringers commonly use to rebut an allegation 

of willfulness is reliance on the advice of counsel. 82 An alleged 

infringer raising this defense claims that it sought out the advice of 

counsel and, due to the advice received, it reasonably believed either 

damages); 35 U.S.C. § 285 (authorizing courts to award attorneys’ fees in exceptional 

cases). 

77. See, e.g., Gustafson, Inc. v. Intersystems Indus. Prods., Inc., 897 F.2d 

508, 510 (Fed. Cir. 1990). 

78. See, e.g., Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 944 (Fed. Cir. 

1992). 

79. See, e.g., Rolls-Royce Ltd. v. GTE Valeron Corp., 800 F.2d 1101, 1110 

(Fed. Cir. 1986); Read Corp., 970 F.2d at 826–27. The following factors cited in Read 

Corp. are frequently utilized by courts to evaluate allegations of willfulness: 

(1) whether the infringer deliberately copied the ideas or design of another; 

(2) whether the infringer, when he knew of the other’s patent protection, 

investigated the scope of the patent and formed a good-faith belief that it 

was invalid or that it was not infringed; . . . 

(3) the infringer’s behavior as a party to the litigation. . . . 

(4) Defendant’s size and financial condition. . . . 

(5) Closeness of the case. . . . 

(6) Duration of defendant’s misconduct. . . . 

(7) Remedial action by the defendant. . . . 

(8) Defendant’s motivation for harm. . . . 

(9) Whether defendant attempted to conceal its misconduct. 

Id. 

80. Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 

1389 (Fed. Cir. 1983), quoted in Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. 

Dana Corp., 383 F.3d 1337, 1343 (Fed. Cir. 2004). It should be noted that the Federal 

Circuit has overruled the duty-of-due-care standard of Underwater Devices in favor of a 

“recklessness” standard. In re Seagate Tech., LLC, No. 06-M830, slip op. at 11–12 

(Fed. Cir. Aug. 20, 2007). While this change has the potential to significantly impact 

willfulness, this standard is outside the focus of this Note. 

81. One recent empirical study found that willfulness was alleged in 92.3% of 

the patent infringement cases studied. See Moore, supra note 9, at 232. 

82. See EPSTEIN, supra note 10, at 347–48, 351, 625.



that the plaintiff’s patent was invalid or unenforceable or that the 

alleged infringer’s conduct did not infringe the plaintiff’s patent 

rights. 83 Therefore, whether the defense is effective depends not on the 

legal correctness of the opinion, but rather on whether the opinion is 

complete enough, under the totality of the circumstances, to instill in 

the alleged infringer a reasonable belief that the patent is invalid, 

unenforceable, or not infringed. 84 This is consistent with the courts’ 

focus on the alleged infringer’s state of mind in determining the 

presence or absence of willfulness. 

While the advice-of-counsel defense can be an effective tool for an 

alleged infringer in rebutting an allegation of willfulness, the alleged 

infringer also subjects itself to certain risks. By raising the defense, the 

alleged infringer necessarily puts at issue not only its own beliefs 

regarding the invalidity, unenforceability, and/or noninfringement of 

the patent but also any communications it had with counsel that might 

have influenced its beliefs. 85 Therefore, the alleged infringer asserting 

the defense waives the attorney-client privilege with respect to certain 

communications with counsel regarding infringement and possibly 

waives protection of certain attorney work product as well. 86 

As a result, the alleged infringer faces a difficult decision. On one 

hand, it can forego the advice-of-counsel defense and maintain attorneyclient 

privilege and work-product protection. By doing so, however, it 

will risk a potentially disastrous finding of willfulness. On the other 

hand, it can assert the advice-of-counsel defense and possibly shield 

itself from a finding of willfulness. By choosing this option, however, it 

will waive attorney-client privilege and work-product protection and 

reveal to the opposition many documents and communications that 

would otherwise be protected. 87 The fact that the scope of the waiver of 

83. See Ortho Pharm. Corp., 959 F.2d at 944. 

84. Id. 

85. See discussion infra Part II.B. 

86. See discussion infra Part II.B. 

87. The decision to assert or forgo the defense used to be even more 

complicated. In Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1580 (Fed. 

Cir. 1986), the alleged infringer did not assert the advice-of-counsel defense but rather 

was silent as to whether or not it had ever sought out advice of counsel regarding its 

potential infringement. The court held that the alleged infringer’s “silence on the 

subject, in alleged reliance on the attorney-client privilege, would warrant the 

conclusion that it either obtained no advice of counsel or did so and was advised that its 

[conduct] would be an infringement of valid U.S. patents.” Id. This “adverse 

inference” continued to be recognized by the Federal Circuit until 2004, when the court 

finally decided to eliminate the adverse inference, citing its detrimental effect on the 

attorney-client relationship. Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana 

Corp., 383 F.3d 1337, 1343–44 (Fed. Cir. 2004). Yet even though the adverse 

inference has been eliminated, the advice-of-counsel defense still plays a large role in



attorney-client privilege and work-product protection was unclear prior 

to EchoStar further complicated the alleged infringer’s dilemma. 88 

Because the scope of the waiver was unclear, the alleged infringer did 

not know exactly what information it would be sacrificing if it chose to 

assert the advice-of-counsel defense. 89 

B. Precedent Regarding the Scope of Waiver 

Prior to EchoStar, the Federal Circuit provided remarkably little 

guidance on the scope of waiver of attorney-client privilege and workproduct 

protection upon assertion of the advice-of-counsel defense. This 

lack of guidance likely reflects, at least in part, the difficulty defendants 

experience in attempting to obtain appellate review of district court 

rulings regarding the scope of waiver. 90 Furthermore, the Federal 

Circuit is the only source of appellate guidance regarding the scope of 

waiver because it has exclusive jurisdiction over substantive issues of 

patent law, 91 and the scope of waiver is one such issue. 92 Therefore, the 

district courts have largely been on their own in determining the 

appropriate scope of waiver when the defendant invokes the advice-ofcounsel 

defense to willful patent infringement. As a result, the district 

courts have varied widely in their approaches to the scope of waiver, 

and attorneys and their clients have been uncertain about how broad the 

scope of waiver will be in any given case. 93 

the totality-of-the-circumstances test for willful infringement, and therefore the choice 

the alleged infringer faces is still a very difficult one. 

88. See Jared Goff, Comment, The Unpredictable Scope of the Waiver 

Resulting from the Advice-of-Counsel Defense to Willful Patent Infringement, 1998 

BYU L. REV. 213, 213–14 (1998). 

89. See Vito J. DeBari, Federal Circuit Clarifies Scope of Advice-Of-Counsel 

Waiver, THE METROPOLITAN CORP. COUNS., June 2006, at 10, available at http:// 

www.metrocorpcounsel.com/pdf/2006/June/10.pdf. 

90. See Goff supra note 88, at 222–23. Rulings regarding the scope of waiver 

are discovery rulings and are interlocutory in nature. Id. at 222. Interlocutory appeals 

are extremely difficult to obtain; ordinarily, a final ruling must be issued before the 

case is ripe for appeal. Id. At that point, the appeal is largely moot because the 

privileged information has already been released. Id. Furthermore, the only other 

method of relief is to petition for a writ of mandamus, and, like interlocutory appeals, 

writs of mandamus are rarely granted. Id. 

91. In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1298 (Fed. Cir. 2006) 

(citing Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1303 

(Fed. Cir. 2001)). 

92. EchoStar, 448 F.3d at 1298 (citing In re Spalding Sports Worldwide, Inc., 

203 F.3d 800, 803–04 (Fed. Cir. 2000)). 

93. See, e.g., Aspex Eyewear, Inc. v. E’Lite Optik, Inc., 276 F. Supp. 2d 

1084, 1091–96 (D. Nev. 2003); Thorn EMI N. Am., Inc. v. Micron Tech., Inc., 837 

F. Supp. 616, 622–23 (D. Del. 1993).



The Federal Circuit did provide some guidance regarding the 

scope of waiver of the attorney-client privilege in Fort James Corp. v. 

Solo Cup Co. 94 In Fort James, the court held that the scope of the 

waiver extends “to all other communications relating to the same 

subject matter.” 95 The court noted that to hold otherwise would be 

unfair to the plaintiff since the defendant could disclose favorable 

communications while hiding unfavorable communications behind 

privilege. 96 The court gave no concrete guidance as to what constitutes 

the “same subject matter” 97 but rather held that courts should “weigh 

the circumstances of the disclosure, the nature of the legal advice 

sought, and the prejudice to the parties of permitting or prohibiting 

further disclosures.” 98 While Fort James provided some guidance 

regarding waiver of attorney-client privilege, the Federal Circuit 

provided no such guidance regarding work-product protection prior to 

EchoStar. 99 

As a result of the Federal Circuit’s general lack of guiding 

authority, the district courts had taken widely varying approaches when 

determining the scope of waiver. Some district courts favored a narrow 

scope of waiver, holding that work product the attorney never 

communicated to the client is not discoverable. 100 These courts reasoned 

that work product never communicated to the client is not relevant to 

the client’s state of mind. And since the willfulness inquiry focuses 

solely on the client’s state of mind and not that of the client’s attorney, 

such work product should not be discoverable. 101 

94. 412 F.3d 1340 (Fed. Cir. 2005). 

95. Id. at 1349. This standard is consistent with the court’s previous decisions 

relating to waiver of the attorney-client privilege. See Genentech, Inc. v. U.S. Int’l 

Trade Comm’n, 122 F.3d 1409, 1416 (Fed. Cir. 1997). 

96. Fort James, 412 F.3d at 1349. Courts sometimes refer to this concept as 

using the attorney-client privilege as both “a sword and a shield.” E.g., EchoStar, 448 

F.3d at 1301. 

97. Fort James, 412 F.3d at 1349. The court said that there is no “bright line 

test” for determining what constitutes the same subject matter due to the factual nature 

of the determination. Id. 

98. Id. at 1349–50. 

99. The Federal Circuit’s most relevant authority, Genentech, suggested only 

that work-product protection could be waived but did not hint at how broad or narrow 

the scope of waiver should be. See Genentech, 122 F.3d at 1415. More importantly, 

Genentech specified that work-product protection could be waived because the 

defendant disclosed the work product to a third party, not because the defendant raised 

the advice-of-counsel defense to willful patent infringement. Id. Therefore, Genentech 

was not particularly useful guidance for the district courts. 

100. See, e.g., Nitinol Med. Techs., Inc. v. AGA Med. Corp., 135 F. Supp. 

2d 212, 218–19 (D. Mass. 2000); Thorn EMI N. Am., Inc. v. Micron Tech., Inc., 837 

F. Supp. 616, 622–23 (D. Del. 1993). 

101. See Thorn, 837 F. Supp. at 622–23.



Other district courts found the waiver to be broad, ordering 

production of all work product related to the same subject matter 

regardless of whether it was communicated to the client. 102 These courts 

emphasized that fairness necessitates that the plaintiff have access to all 

work product to uncover what advice counsel actually gave the client. 103 

Otherwise, counsel could simply deliberately omit unfavorable 

information from the opinion communicated to the client. 104 Still other 

district courts had taken this broad waiver a step further, reasoning that 

because the client relies on the thoughts and advice of the attorney, both 

the attorney’s and the client’s states of mind are at issue. 105 Due to the 

wide variety of approaches taken by the district courts, it has been 

difficult for attorneys and their clients to predict how broad the scope of 

the waiver—particularly of work-product protection—will be in any 

given case. 

III. ANALYSIS OF ECHOSTAR AND SUBSEQUENT WAIVER DECISIONS 

A. TiVo, Inc. v. EchoStar Communications Corp.: The Decision of 

the United States District Court for the Eastern District of Texas 106 

The EchoStar decision arose out of a dispute between TiVo and 

EchoStar regarding a patent owned by TiVo. 107 TiVo alleged that 

EchoStar willfully infringed TiVo’s patent 108 (“the ‘389 patent”) on a 

technology commonly utilized in digital video recorders. 109 After 

learning about the issuance of the ‘389 patent, but prior to the filing of 

TiVo’s complaint, EchoStar had its in-house counsel assess EchoStar’s 

exposure for infringement liability. 110 EchoStar’s in-house counsel 

advised that EchoStar did not infringe the claims 111 of the ‘389 patent, 

102. See, e.g., Aspex Eyewear, Inc. v. E’Lite Optik, Inc., 276 F. Supp. 2d 

1084, 1092–93 (D. Nev. 2003). 

103. Id. 

104. Id. 

105. See, e.g., Novartis Pharms. Corp. v. EON Labs Mfg., Inc., 206 F.R.D. 

396, 399 (D. Del. 2002). 

106. No. 2:04-CV-1 (DF), 2005 U.S. Dist. LEXIS 42481 (E.D. Tex. Sept. 26, 

2005). 

107. Id. at *3–4. 

108. U.S. Patent No. 6,233,389 (filed July 30, 1998). 

109. See id. Digital video recorders are also commonly referred to as DVRs. 

110. TiVo, 2005 U.S. Dist. LEXIS 42481, at *4. 

111. “Claims” are the part of the patent which describe the “subject matter 

which the applicant regards as his invention.” 3 CHISUM, supra note 1, § 8.01. Claims 

“define the invention for the purpose of determining infringement, that is, what



and EchoStar relied on this advice and continued to manufacture its 

digital video recorders. 112 After TiVo filed its complaint, EchoStar 

sought additional advice from attorneys at Merchant & Gould, who 

subsequently prepared two opinion letters 113 for EchoStar. 114 

In response to TiVo’s allegation of willful infringement, EchoStar 

asserted reliance on the advice of its in-house counsel but not on that of 

Merchant & Gould. 115 TiVo filed a motion to compel discovery of the 

opinions and communications both prior to and after the filing of its 

complaint. 116 Magistrate Judge Harry McKee held that EchoStar waived 

attorney-client privilege and work-product protection for any documents 

and communications made prior to the filing of the complaint. 117 

McKee further held, however, that EchoStar had only waived privilege 

for advice concerning infringement, and thus TiVo could not discover 

privileged information relating to validity or enforceability. 118 EchoStar 

filed a motion for reconsideration of McKee’s orders. 119 

On review, Judge David Folsom found that McKee had erred in 

his construction of the temporal scope of waiver as well as his 

distinction between communicated and uncommunicated work 

product. 120 Folsom upheld McKee’s finding that the waiver extended 

only to subject matter relating to infringement and not invalidity or 

enforceability. 121 However, Folsom found McKee’s holding that the 

waiver extended only to prefiling communications and work product to 

be erroneous. 122 Instead, he held that the scope of waiver included all 

communications and work product pertaining to advice of counsel 

concerning infringement regardless of when EchoStar obtained the 

advice. 123 

constitutes the ‘patented invention’ that persons cannot make, use or sell without the 

authority of the patent owner.” Id. 

112. TiVo, 2005 U.S. Dist. LEXIS 42481, at *4, *21–22. EchoStar 

manufactures digital video recorders under its Dish Network brand, and its current 

digital video recorders are called DishDVRs. See Dish Network, http:// 

www.dishnetwork.com (last visited Sept. 26, 2007). 

113. See supra note 34 (explaining the significance of opinion letters in willful 

patent infringement suits). 

114. TiVo, 2005 U.S. Dist. LEXIS 42481, at *4–6. 

115. Id. at *4–5. 

116. Id. at *6. 

117. Id. at *7–8. 

118. Id. 

119. Id. at *9. 

120. Id. at *25–26. 

121. Id. at *23. 

122. Id. at *24. 

123. Id.



Furthermore, Folsom held that the scope of waiver did not depend 

on whether the opinions or materials were communicated to 

EchoStar. 124 So long as they pertained to the issue of infringement, they 

were discoverable. 125 Folsom therefore ordered EchoStar to produce the 

two opinions drafted by Merchant & Gould as well as any other 

documents or communications related to the infringement analysis 

performed by Merchant & Gould for EchoStar. 126 EchoStar responded 

by filing a petition for a writ of mandamus with the Federal Circuit 

requesting that the court vacate Folsom’s order to compel discovery. 127 

B. EchoStar’s Petition for a Writ of Mandamus 

In its petition for a writ of mandamus, 128 EchoStar argued that the 

district court made several errors in its construction of the scope of 

waiver of attorney-client privilege and work-product protection. 129 

First, EchoStar argued that the court erred in holding that EchoStar’s 

reliance on the opinion of its in-house counsel caused a waiver of the 

attorney-client privilege protecting communications with outside 

counsel at Merchant & Gould. 130 EchoStar argued that an alleged 

infringer must rely on the advice of outside counsel in order to raise the 

traditional advice-of-counsel defense. 131 Accordingly, EchoStar 

maintained it had not raised the advice-of-counsel defense because it 

merely relied on an internal investigation by its in-house counsel. 132 The 

district court’s holding undermined an earlier Federal Circuit decision 

in Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 133 

124. Id. at *23–24. 

125. Id. 

126. Id. at *25–26. 

127. In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1296 (Fed. Cir. 2006). 

After the Federal Circuit granted Merchant & Gould leave to intervene, Merchant & 

Gould also filed a petition for a writ of mandamus. Id. 

128. Petition for Writ of Mandamus, EchoStar, 448 F.3d 1294, Misc. No. 803 

(Fed. Cir. Oct. 11, 2005). 

129. Id. at 1–3. 

130. Id. at 13–15. 

131. Id. 

132. Id. 

133. 383 F.3d 1337 (Fed. Cir. 2004). Knorr-Bremse is well known in the 

patent realm because it eliminated the “adverse inference,” which had been long upheld 

by the Federal Circuit. Id. at 1344. Prior to Knorr-Bremse, the court held that an 

adverse inference could be drawn when a defendant failed to produce an opinion of 

counsel or invoked attorney-client privilege and work-product protection in response to 

an allegation of willful infringement. Id. at 1343–44. In other words, if a defendant 

failed to produce an opinion of counsel or invoked privilege, the finder of fact was free 

to infer that the defendant either chose not to obtain an opinion of counsel regarding its



which stated that an alleged infringer has no duty to consult outside 

counsel. 134 

Second, EchoStar argued that the district court misconstrued the 

scope of waiver of work-product protection. 135 The court erred by 

holding that the waiver extended to documents of Merchant & Gould 

that it never actually communicated to EchoStar. 136 Noting the absence 

of any governing Federal Circuit precedent on the issue, 137 EchoStar 

contended that the appropriate scope of waiver should not include 

documents never conveyed to the client because such documents are not 

relevant to the client’s state of mind. 138 Therefore, they shed no light on 

the issue of willfulness. 139 Furthermore, EchoStar maintained that the 

district court misconstrued the temporal scope of waiver of workproduct 

protection as well. 140 If the waiver extends to uncommunicated 

work product at all, it should only extend to uncommunicated work 

product created prior to the beginning of the case; it should never 

extend to uncommunicated work product created after the case was 

filed. 141 

C. In re EchoStar Communications Corp.: 

The Federal Circuit Opinion 

The Federal Circuit granted EchoStar and Merchant & Gould’s 

petitions for a writ of mandamus, 142 and for the first time the court 

directly addressed the scope of waiver of work-product protection when 

an alleged infringer raises the advice-of-counsel defense. 143 In its 

opinion, the court drew a sharp distinction between the attorney-client 

privilege and the work-product doctrine, addressing the waiver of each 

potential infringement or the defendant obtained unfavorable advice. Id. at 1343. An 

alleged infringer has an affirmative duty to avoid infringing others’ known patent 

rights. Id. at 1345–46. Therefore, the adverse inference was strong evidence that the 

alleged infringer failed to meet this affirmative duty and therefore its infringement was 

willful. Id. The court found that this adverse inference impeded too harshly on the 

attorney-client relationship, and, thus, it was no longer appropriate. Id. 

134. Petition for Writ of Mandamus, EchoStar, 448 F.3d 1294, Misc. No. 803 

(Fed. Cir. Oct. 11, 2005). 

135. Id. at 16–26. 

136. Id. at 16. 

137. Id. at 18. 

138. Id. at 18–21. 

139. Id. 

140. Id. at 24–26. 

141. Id. 

142. 448 F.3d 1294 (Fed. Cir. 2006). The opinion of the court was written by 

Gajarsa for a panel that also included Schall and Prost. Id. at 1296. 

143. See id. at 1296–1305.



separately. 144 The court noted that while the two concepts are related, 

they are distinct from one another and find support in different policy 

rationales. 145 Thus, it is possible for an alleged infringer to waive one 

without necessarily waiving the other. 146 The court’s emphasis of this 

distinction is noteworthy since prior district court decisions routinely 

addressed the scope of waiver without clearly distinguishing between 

the two concepts. 147 

The Federal Circuit agreed with the district court regarding the 

scope of waiver of attorney-client privilege and found EchoStar had 

waived privilege by relying on the advice of its in-house counsel. 148 

EchoStar’s in-house counsel rendered an opinion upon which EchoStar 

relied in forming its belief that it did not infringe the ‘389 patent. 149 

Despite the fact that the opinion came from an in-house employee, it 

was still the legal advice of an attorney. Thus EchoStar’s reliance on 

the advice constituted an assertion of the advice-of-counsel defense. 150 

The court stayed true to its decision in Fort James 151 in its 

construction of the scope of waiver of the attorney-client privilege. 152 

The court held that once an alleged infringer raises the advice-ofcounsel 

defense, it automatically waives the attorney-client privilege. 153 

The scope of the waiver includes “all other communications relating to 

144. See id. 

145. Id. at 1300–01. 

146. Id. at 1300. 

147. The district court’s decision is an excellent example of how district courts 

tended to group waiver of the two protections together. Throughout the opinion, the 

court discussed the scope of waiver of attorney-client privilege and work-product 

protection together. See TiVo Inc. v. EchoStar Commc’ns Corp., No. 2:04-CV-1 (DF), 

2005 U.S. Dist. LEXIS 42481, at *15, *23–25 (E.D. Tex. Sept. 26, 2005) (“The scope 

of privilege/work product waiver, once an advice of counsel defense is asserted, should 

be guided by fairness. . . . Regardless of when the opinions or materials were 

transcribed or communicated to EchoStar, such information . . . goes to show 

EchoStar’s state of mind with respect to willful infringement. . . . EchoStar [is] to 

produce the two Merchant & Gould opinions and all notes, communications, or other 

documentation related to any infringement analysis of the ‘389 patent undertaken by 

Merchant & Gould.”). 

148. EchoStar, 448 F.3d at 1299. 

149. Id. 

150. Id. The court noted that while use of in-house counsel did not affect the 

“legal nature of the advice,” it may affect the strength of the advice-of-counsel defense. 

Id. (citing Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1390 

(Fed. Cir. 1983)). 

151. 412 F.3d 1340 (Fed. Cir. 2005). 

152. EchoStar, 448 F.3d at 1299. 

153. Id.



the same subject matter.” 154 Furthermore, the court commented in a 

footnote that there is no temporal limitation to the scope of waiver of 

attorney-client privilege (or work-product protection as well) as long as 

the advice is relevant to ongoing infringement. 155 Therefore, the court 

held that EchoStar waived privilege for communications with Merchant 

& Gould concerning the same subject matter as the in-house opinion 

upon which it relied. 156 

The bulk of the court’s opinion addressed the scope of waiver of 

work-product protection, and the court held that despite strong policy 

justifications an alleged infringer can still waive work-product 

protection by raising the advice-of-counsel defense. 157 The court began 

by addressing the policy justifications behind the work-product 

doctrine. 158 It focused on the need for attorneys to be free to document 

their thoughts and strategies without fear of having an opposing party 

pilfer these thoughts and strategies through discovery. 159 The court 

viewed the work-product doctrine as necessary to promote “a fair and 

efficient adversarial system.” 160 

In light of these strong policy justifications, the court held that 

waiver of work-product protection is not as broad in scope as waiver of 

attorney-client privilege. 161 Instead, the court found that the scope of 

waiver of work-product protection is limited to “factual” or “nonopinion” 

work product regarding the same subject matter as the opinion 

upon which the alleged infringer relies. 162 

The court acknowledged that the distinction between “factual” and 

“opinion” work product might not always be clear. 163 In such cases, 

district courts should determine the nature of the work product by 

balancing the policy preventing the use of protection as a “sword and a 

shield” 164 with the policy favoring the work-product doctrine. 165 District 

154. Id. (quoting Fort James, 412 F.3d at 1349). While the EchoStar court’s 

construction of attorney-client privilege waiver was consistent with the construction in 

Fort James, neither opinion clarified exactly what the “same subject matter” means. 

See infra Part III.D.2.a. 

155. EchoStar, 448 F.3d at 1302 n.4. 

156. Id. at 1299. 

157. Id. at 1302. 

158. Id. at 1301. 

159. Id. 

160. Id. 

161. See id. 

162. Id. at 1302 (quoting In re Martin Marietta Corp., 856 F.2d 619, 625 (4th 

Cir. 1988)). 

163. Id. 

164. See, e.g., id. at 1301; supra notes 94–99 and accompanying text. 

165. Id. at 1302.



courts should remain mindful that the focus of the willfulness inquiry is 

on the state of mind of the alleged infringer, not the attorney. 166 

Therefore, according to the court, if work product does not 

provide any information regarding communications made to the alleged 

infringer, it necessarily has no impact on his state of mind and is 

irrelevant to the willfulness inquiry. 167 If the work product does contain 

information relevant to the alleged infringer’s state of mind, however, 

the work product should generally be discoverable. 168 The primary goal 

of waiver is to ensure that the alleged infringer cannot “shield” such 

work product behind the work-product doctrine while simultaneously 

using the advice of counsel as a “sword” to attack the plaintiff’s 

willfulness assertion. 169 

To help avoid further confusion in the district courts regarding 

how to employ the balancing test, the court also provided a framework 

for categorizing work product. 170 The court identified “three categories 

of work product” 171 as potentially relevant to analyzing the waiver: 

(1) documents that embody a communication between the 

attorney and client concerning the subject matter of the case, 

such as a traditional opinion letter; (2) documents analyzing 

the law, facts, trial strategy, and so forth that reflect the 

attorney’s mental impressions but were not given to the client; 

and (3) documents that discuss a communication between 

attorney and client concerning the subject matter of the case 

but are not themselves communications to or from the 

client. 172 

The court noted that work product in the first category was 

covered by the attorney-client privilege because it embodies a 

communication between the attorney and client. 173 Therefore, work 

166. Id. at 1303. 

167. Id. 

168. Id. 

169. Id. 

170. See id. at 1302–04. 

171. Id. at 1302. The court acknowledged that not all work product will fit 

neatly into the three categories. Id. at n.3. The categories are broad and general 

enough, however, that a district court should be able to fit most work product into one 

of the categories. 

172. Id. at 1302. 

173. Id. A “communication” need not be oral to fall under the attorney-client 

privilege; a document can be a “communication” as well. Id.



product in the first category is discoverable under the waiver of 

attorney-client privilege. 174 

The court found work product in the second category to fall 

outside the scope of waiver. 175 Work product in this category is 

“opinion” work product, which reflects the mental impressions of the 

attorney. 176 When never communicated to the client, this work product 

provides very little information regarding the alleged infringer’s state of 

mind. For this reason, it is not much help to the willfulness inquiry. 177 

Therefore, the court found the policy favoring the work-product 

doctrine to outweigh the limited value of this type of work product to 

the willfulness inquiry and declared such work product to be 

undiscoverable. 178 

Finally, the court found work product in the third category, which 

refers to documents discussing a communication between the attorney 

and client that were not actually communicated to the client, to fall 

within the scope of waiver. 179 While such work product does not bear 

as directly on the client’s state of mind as the communicative work 

product of the first category, it can provide information regarding what 

communications the attorney actually made to the client. 180 Thus, such 

work product can reveal communications that may have affected the 

state of mind of the client regarding infringement, and it is relevant to 

the willfulness inquiry. 181 The court found this relevancy to outweigh 

the justifications for protecting the work product and held that such 

work product is discoverable. 182 

The court did note, however, that work product that falls in the 

third category might contain work product from the second category 

(thoughts and analysis of the attorney never communicated to the 

client). 183 The court advised that the parties should carefully redact such 

information. 184 Furthermore, the court suggested that in camera 

174. EchoStar, 448 F.3d at 1302. 

175. Id. at 1303–04. 

176. Id. 

177. Id. at 1304. 

178. Id. 

179. Id. at 1302–03. For an example given by the court of such work product, 

see supra note 41. 

180. EchoStar, 448 F.3d at 1304. 

181. Id. 

182. Id. 

183. Id. 

184. EchoStar, 448 F.3d at 1304.



inspection 185 by the district court might be appropriate in some 

instances. 186 

In sum, the EchoStar court attempted to clearly state the principles 

that should guide district courts in construing the scope of waiver. The 

court held that the waiver of attorney-client privilege extends to all 

communications relating to the same subject matter as the opinion upon 

which the alleged infringer relies. 187 In regard to work-product waiver, 

the court held that only nonopinion work product is waived and that the 

district courts should balance the policy favoring work-product 

protection with the policy preventing sword-and-shield use of 

protection. 188 Recognizing that the application of this balancing test is 

not a trivial task for district courts, the court provided additional 

assistance by describing the three-prong test that district courts can use 

to classify most kinds of work product. 189 

D. Waiver Cases Subsequent to EchoStar 

The EchoStar opinion appears to resolve successfully the prior 

confusion that plagued district courts, attorneys, and clients alike 

regarding the scope of waiver of work-product protection. The court 

properly focused on balancing the policy justifications underlying the 

work-product doctrine with the policy of promoting fairness to the 

plaintiff. 190 Furthermore, the court recognized that the balancing test 

may prove difficult for district courts to apply uniformly, so it went a 

step further and provided a framework that the district courts could use 

to easily categorize most work product. 191 While this framework is 

helpful for the district courts in applying the balancing test, it is also an 

invaluable and sorely needed 192 predictive tool for attorneys. 193 

Accordingly, practitioners have generally expressed widespread praise 

for EchoStar. 194 

185. In camera inspection refers to “a trial judge’s private consideration of 

evidence.” BLACK’S LAW DICTIONARY 775 (8th ed. 2004). 

186. EchoStar, 448 F.3d at 1304. 

187. Id. at 1299. 

188. Id. at 1302. 

189. Id. at 1302–04. 

190. Id. at 1302. 

191. Id. at 1302–04. 

192. See generally Goff, supra note 88, at 235–36. 

193. See Michael L. Kiklis & John C. Koski, Waive Farewell to Uncertainty: 

EchoStar Clarifies Scope of Waiver in Advice-of-Counsel Defense, THE COMPUTER & 

INTERNET LAWYER, Sept. 2006, at 1. 

194. See, e.g., id. at 7 (“In this environment, EchoStar is a welcome 

development. It clarifies the law and practice with respect to the advice-of-counsel



Section 1 examines several district court cases that have utilized 

the EchoStar framework to construe the scope of waiver appropriately. 

Section 2 addresses two issues that, despite the court’s clarity in 

EchoStar, have continued to cause confusion in the district courts. 

Specifically, Section 2.a examines whether the scope of waiver extends 

to all three potential defenses to infringement (invalidity, 

unenforceability, and noninfringement) or only to the defense(s) 

addressed in the opinion upon which the alleged infringer relies. 

Section 2.b discusses whether the scope of waiver extends to trial 

counsel. 

1. DISTRICT COURT CASES IN WHICH THE COURT SUCCESSFULLY 

APPLIED THE ECHOSTAR FRAMEWORK 

The district courts seem to have little difficulty applying the 

framework to determine the appropriate scope of work-product waiver 

in willful-infringement cases subsequent to EchoStar. Where previously 

the district courts had exhibited a great deal of confusion, 195 the 

decisions since EchoStar have applied the new framework and 

confidently separated most work product neatly into one of the three 

categories. 196 The district courts in several of these decisions provide 

textbook examples of how to apply the EchoStar framework. 

The District Court for the Southern District of Indiana handed 

down the first such decision a mere twenty-five days after the Federal 

Circuit released its EchoStar opinion. 197 In Indiana Mills & 

Manufacturing, Inc. v. Dorel Industries, Inc., 198 the plaintiff filed suit 

for willful patent infringement, and the defendants responded by 

defense.”); DeBari, supra note 89, at 10 (“The In re EchoStar decision should help to 

provide guidance and more certainty to the determination of the proper scope of the 

waiver associated with the advice-of-counsel defense to willful infringement.”). 

195. See supra Part II.B. 

196. See, e.g., Affinion Net Patents, Inc. v. Maritz, Inc., 440 F. Supp. 2d 

354, 356–57 (D. Del. 2006); Autobytel, Inc. v. Dealix Corp., 455 F. Supp. 2d 569, 

572–77 (E.D. Tex. 2006); Beck Sys., Inc. v. Managesoft Corp., No. 05 C 2036, 2006 

U.S. Dist. LEXIS 53963, at *20–23 (N.D. Ill. July 14, 2006); see also Ind. Mills & 

Mfg., Inc. v. Dorel Indus., Inc., No. 1:04-cv-01102-LJM-WTL, 2006 U.S. Dist. 

LEXIS 34023, at *10, *18–21 (S.D. Ind. May 26, 2006). Indiana Mills & 

Manufacturing, Inc. v. Dorel Industries, Inc. has since been withdrawn. Ind. Mills & 

Mfg., Inc. v. Dorel Indus., Inc., No. 1:04-cv-01102-LJM-WTL, 2006 U.S. Dist. 

LEXIS 47852, at *1–2 (S.D. Ind. July 14, 2006). However, the court withdrew its 

opinion based on misapprehension of facts, so it appears that the court’s reasoning 

based on the original (albeit inaccurate) facts would still be valid. See id. 

197. Dorel, 2006 U.S. Dist. LEXIS 34023, at *1. 

198. Id.



asserting the advice-of-counsel defense. 199 In a ruling prior to the 

Federal Circuit’s release of EchoStar, the district court ruled that the 

plaintiff was only entitled to discovery of work product that was 

actually communicated to the client. 200 After the court released the 

EchoStar opinion, the plaintiff filed a motion for reconsideration. 201 

Upon reconsideration, the court concluded that it must adjust its 

construction of the scope of waiver for work product never 

communicated to the client. 202 In its previous order, the court had ruled 

that all such work product was beyond the scope of waiver, regardless 

of the information reflected therein. 203 After applying the EchoStar 

framework, the court found that its prior ruling had failed to account 

for work product in the third category, which reflects documents 

discussing communications with the client that are never disclosed to 

the client. 204 Therefore, the court properly adjusted its prior ruling to 

find work product of this nature to fall within the scope of waiver and 

be discoverable. 205 

The District Court for the Northern District of Illinois similarly 

reconsidered its previous construction of the scope of waiver in light of 

EchoStar in Beck Systems, Inc. v. Managesoft Corp. 206 In Beck, the 

defendant again asserted the advice-of-counsel defense to an allegation 

of willful patent infringement. 207 Prior to the defendant’s decision to 

raise the advice-of-counsel defense (and prior to the EchoStar decision), 

the court announced that its previous Beneficial Franchise Co. v. Bank 

One N.A. 208 decision would govern the scope of waiver. 209 In 

Beneficial, the court held that the waiver of attorney-client privilege 

extended to all advice of counsel concerning the same subject, including 

advice from attorneys other than the attorney upon whose opinion the 

defendant relies. 210 Furthermore, under Beneficial, work product the 

attorney communicated to the client was also discoverable. 211 Work 

product not communicated to the client, however, was only 

199. Id. at *2–3. 

200. Id. at *6–7. 

201. Id. at *7–8. 

202. Id. at *21. 

203. Id. at *6–7. 

204. Id. at *21. 

205. Id. 

206. No. 05 C 2036, 2006 U.S. Dist. LEXIS 53963, at *20–23 (N.D. Ill. July 

14, 2006). 

207. Id. at *2–3. 

208. 205 F.R.D. 212 (N.D. Ill. 2001). 

209. Beck, 2006 U.S. Dist. LEXIS 53963, at *3. 

210. Id. at *17 (citing Beneficial, 205 F.R.D. at 217). 

211. Id. at *18.



discoverable if it contradicted or cast doubt on the disclosed opinions. 212 

After the release of the EchoStar decision, both parties argued that the 

court’s construction of the scope of waiver required revision to conform 

to the Federal Circuit’s new decision. 213 

The Beck court agreed. 214 The district court applied the Federal 

Circuit’s EchoStar framework to its prior construction of the scope of 

waiver. 215 The court concluded that its construction of the waiver of 

attorney-client privilege was consistent with EchoStar and, therefore, 

required no revision. 216 The Beneficial construction of the scope of 

waiver of communicated work product was also consistent with 

EchoStar. 217 

However, as in Indiana Mills, 218 the Beck court concluded that it 

needed to adjust its prior construction of the scope of waiver as it 

applied to uncommunicated work product. 219 In regard to the second 

category, uncommunicated work product that reflects only the mental 

impressions of the attorney, EchoStar imposed a waiver narrower than 

that of Beneficial because such work product is never discoverable 

under EchoStar, regardless of whether it contradicts the disclosed 

opinions. 220 The court found the waiver of work product in the third 

category, however, to be broader in EchoStar than Beneficial. 221 In 

Beneficial, the court treated work product in the third category, which 

references a communication with the client, no differently than work 

product in the second category. In either case, the work product was 

only discoverable if it contradicted or cast doubt on the disclosed 

opinions. 222 Under the EchoStar framework, all work product in the 

third category falls within the scope of waiver. 223 The court, therefore, 

altered its instructions in accordance with the changes to its 

construction of the scope of waiver. 224 

Finally, the District Court for the District of Delaware applied the 

EchoStar framework to properly classify a piece of work product in 

212. Id. at *18–19 (citing Beneficial, 205 F.R.D. at 218). 

213. Id. at *3–4. 

214. See id. at *18–20. 

215. See id. at *13–20. 

216. Id. at *17–18. 

217. Id. at *18. 

218. No. 1:04-cv-01102-LJM-WTL, 2006 U.S. Dist. LEXIS 34023 (S.D. Ind. 

May 26, 2006). 

219. Beck, 2006 U.S. Dist. LEXIS 53963, at *18–20. 

220. Id. at *18–19. 

221. Id. at *19–20. 

222. Id. at *18–20. 

223. Id. at *19–20. 

224. Id. at *20–23.



Affinion Net Patents, Inc. v. Maritz, Inc. 225 In Affinion, the 

defendant’s counsel mistakenly produced two charts comparing patent 

claims 226 to a piece of prior art 227 during a deposition. 228 The following 

day, the defendant’s counsel asked the plaintiff’s counsel to return the 

charts, but the plaintiff argued that the defendant waived protection of 

the charts because the defendant had asserted the advice-of-counsel 

defense to the plaintiff’s allegation of willful patent infringement. 229 The 

court concluded that the defendant did not waive work-product 

protection to the charts under the EchoStar framework because the 

defendant’s attorney did not give the charts to the defendant. 230 

Furthermore, the charts did not reference a communication with the 

defendant. 231 Therefore, the court denied the plaintiff’s motion to 

compel discovery of the charts. 232 

While the straightforward and predictable nature of each of these 

decisions is noteworthy, the Affinion decision is particularly 

remarkable because of the District Court for the District of Delaware’s 

previous tendency to produce widely varying scopes of waiver in 

different willful-patent-infringement cases. 233 The court had previously 

run the gamut of waivers, producing opinions where the court 

construed the scope of waiver very narrowly, 234 very broadly, 235 and 

somewhere in between. 236 Accordingly, practitioners were relatively 

powerless to predict how broad a waiver would be imposed in a case 

before the court. 237 Therefore, Affinion demonstrates that the EchoStar 

225. 440 F. Supp. 2d 354, 356–57 (D. Del. 2006). 

226. For information regarding claims, see supra note 111. 

227. “Prior art,” for the purposes of this Note, is a reference (e.g., a prior 

patent or published patent application or a technical document) that describes all or part 

of the claimed invention. See BLACK’S LAW DICTIONARY 119 (8th ed. 2004). 

228. Affinion, 440 F. Supp. 2d at 356. 

229. Id. 

230. Id. at 356–57. 

231. Id. at 357. 

232. Id. 

233. See DeBari, supra note 89, at 10. 

234. See Thorn EMI N. Am., Inc. v. Micron Tech., Inc., 837 F. Supp. 616, 

623 (D. Del. 1993). 

235. See Novartis Pharm. Corp. v. Eon Labs Mfg., Inc., 206 F.R.D. 396, 399 

(D. Del. 2002). It is notable that Judge Farnan, the author of this opinion, authored the 

Affinion opinion as well. Affinion, 440 F. Supp. 2d at 355. 

236. See Mosel Vitelic Corp. v. Micron Tech., Inc., 162 F. Supp. 2d 307, 316 

(D. Del. 2000); DeBari, supra note 89, at 10. 

237. See Kiklis & Koski, supra note 193, at 3 (“Pity the poor patent litigator 

with a case before a new judge in Delaware. If asked by the client what to expect when 

the privilege is waived, he might as well consult the Magic 8 Ball.”).



framework has the potential to bring uniformity to even the most 

unpredictable of district courts. 

2. CONFUSION IN THE DISTRICT COURTS FOLLOWING ECHOSTAR 

Despite its substantial contribution towards clarifying the scope of 

waiver upon assertion of the advice-of-counsel defense, EchoStar did 

leave ambiguity in regard to some important scope of waiver issues. 238 

Two of these issues have arisen repeatedly in district court opinions 

since EchoStar: (1) whether the scope of waiver extends to all potential 

defenses to infringement (invalidity, unenforceability, and 

noninfringement) or just to those defenses addressed in the opinion 

upon which the alleged infringer relies; and (2) whether the scope of 

waiver extends to advice given by trial counsel. Like the general scope 

of work-product waiver before EchoStar, both issues have caused 

significant confusion in the district courts, and the courts have 

accordingly split on how to address the issues. This Section addresses 

each of these issues in turn. In addition, this Section discusses In re 

Seagate Technology, LLC, 239 the Federal Circuit’s answer to the second 

question in which it held that the waiver generally does not extend to 

trial counsel. 

a. Does the waiver extend to all possible defenses to patent 

infringement or only those defenses addressed in the underlying opinion 

of counsel? 

The first of these two issues is determining the patent infringement 

defenses to which the waiver extends. An alleged infringer can defend 

against an accusation of patent infringement by arguing that the patent 

is invalid, 240 unenforceable, 241 or not infringed. 242 When an alleged 

infringer raises the advice-of-counsel defense, it clearly waives 

238. To be fair, the issues that have arisen in subsequent district court decisions 

generally were not at issue in the EchoStar case. 

239. No. 06-M830 (Fed. Cir. Aug. 20, 2007). 

240. By asserting that the patent is invalid, the alleged infringer argues that the 

patent does not meet the requirements for patentability, and therefore the United States 

Patent and Trademark Office should never have issued the patent. See 6 CHISUM, supra 

note 1, § 19.01. If a patent is invalid, then the patent holder has no rights of exclusion, 

so infringement is impossible. 

241. A valid patent may still be found unenforceable for certain public policy 

reasons. See id. (noting that, among other reasons, a patent may be found 

unenforceable due to fraudulent procurement or inequitable conduct, patent misuse or 

violation of antitrust laws, unreasonable delay in filing an infringement suit). 

242. One defense to patent infringement is that the alleged infringer’s conduct 

simply does not constitute infringement. See supra notes 72–75 and accompanying text.



protection for all attorney-client communications and certain attorney 

work product concerning the “same subject matter” as the opinion upon 

which it relies. 243 The case law is unclear, however, regarding whether 

the “subject matter” of the opinion includes all possible infringement 

defenses or only the defenses addressed in the opinion of counsel upon 

which the alleged infringer relies. 244 

Several of the district courts have held that the waiver extends to 

all possible infringement defenses, not just those that are referenced in 

the opinion that forms the basis of the advice-of-counsel defense. 245 

First, the Federal Circuit wrote in its opinion that work product is 

discoverable only if it embodies or references communications 

“concerning the subject matter of the case.” 246 The District Court for 

the District of Columbia interpreted the Federal Circuit’s use of this 

phrase, as opposed to “subject matter of the opinion,” as evidence of its 

intent to include all possible infringement defenses within the scope of 

waiver. 247 Furthermore, the Federal Circuit wrote that an alleged 

infringer waives work-product immunity “for any document or opinion 

that embodies or discusses a communication to or from it concerning 

whether that patent is valid, enforceable, and infringed by the 

accused.” 248 The district courts found this phrase further supported their 

contention that the Federal Circuit intended the subject matter waiver to 

extend to all three defenses. 249 

Several other district courts, however, have held that the scope of 

waiver is limited to the defenses referenced in the opinion upon which 

the defendant relies. 250 The District Court for the Eastern District of 

243. In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1299 (Fed. Cir. 2006) 

(quoting Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349 (Fed. Cir. 2005)). 

244. This is a critical issue that arises frequently because it is common for the 

opinion upon which the alleged infringer relies to address only one or two of the 

defenses. Often, the opinion addresses only the defense of noninfringement (which is 

why patent attorneys frequently refer to these opinions as “noninfringement” opinions). 

245. See, e.g., Kimberly-Clark Corp. v. Tyco Healthcare Retail Group, No. 

05-C-985, 2007 U.S. Dist. LEXIS 5974, at *5 (E.D. Wis. Jan. 26, 2007); Affinion Net 

Patents, Inc. v. Maritz, Inc., 440 F. Supp. 2d 354, 356 (D. Del. 2006); Intex 

Recreation Corp. v. Team Worldwide Corp., 439 F. Supp. 2d 46, 50 (D. D.C. 2006); 

Outside The Box Innovations, LLC v. Travel Caddy, Inc., 455 F. Supp. 2d 1374, 1379 

(N.D. Ga. 2006). 

246. Intex, 439 F. Supp. 2d at 50 (quoting EchoStar, 448 F.3d at 1302). 

247. Id. at 50. 

248. EchoStar, 448 F.3d at 1304. 

249. See, e.g., Intex, 439 F. Supp. 2d at 50; Outside The Box, 455 F. Supp. 

2d at 1377. 

250. See, e.g., Autobytel, Inc. v. Dealix Corp., 455 F. Supp. 2d 569, 574–75 

(E.D. Tex. 2006); Informatica Corp. v. Bus. Objects Data Integration, Inc., No. C 02- 

3378 JSW, 2006 U.S. Dist. LEXIS 58976, at *6–8 (N.D. Cal. Aug. 9, 2006); Beck



Texas 251 best summarized the reasoning behind this limitation on the 

scope of waiver in its Autobytel, Inc. v. Dealix Corp. decision. 252 The 

court first noted that the district court opinion underlying EchoStar had 

limited the scope of waiver to noninfringement because the opinion of 

in-house counsel upon which EchoStar relied focused on 

noninfringement. 253 In granting mandamus, the Federal Circuit altered 

the district court’s holding regarding the scope of waiver in several 

aspects, but it did not explicitly alter the district court’s limitation of the 

waiver to noninfringement. 254 Furthermore, the Federal Circuit cited 

Akeva LLC v. Mizuno Corp. 255 as support for its determination that the 

waiver extends to all attorney-client communications concerning the 

same subject matter. 256 In Akeva, the court defined the “same subject 

matter” as the subject matter of the opinion. 257 

The court then proceeded to apply the broader policy justifications 

described by EchoStar to determine the appropriateness of limiting the 

waiver to the defenses of the underlying opinion. 258 The court noted that 

“[t]he purpose of the advice-of-counsel privilege waiver is to allow an 

inquiry into the infringer’s state of mind regarding the infringer’s 

reasonable reliance on its advice of counsel.” 259 

Since invalidity, unenforceability, and noninfringement are distinct 

defenses, the court reasoned that information regarding defenses not at 

issue in the underlying opinion would be of little value in determining 

Sys., Inc. v. Managesoft Corp., No. 05 C 2036, 2006 U.S. Dist. LEXIS 53963, at 

*20–21 (N.D. Ill. July 14, 2006); Ind. Mills & Mfg., Inc. v. Dorel Indus., Inc., No. 

1:04-cv-01102-LJM-WTL, 2006 U.S. Dist. LEXIS 34023, at *18 (S.D. Ind. May 26, 

2006). 

251. The court’s treatment in this case is particularly noteworthy because the 

District Court for the Eastern District of Texas is considered a patent “rocket docket” 

due to its speedy resolution of patent infringement cases. See Michael C. Smith, Rocket 

Docket: Marshall Court Leads Nation in Hearing Patent Cases, 69 TEX. B.J. 1044, 

1045–46 (2006). As a result, plaintiffs frequently choose to file in this court. Id. 

252. 455 F. Supp. 2d 569, 572–77 (E.D. Tex. 2006). 

253. Id. at 575. The district court opinion also came from the District Court for 

the Eastern District of Texas. See TiVo Inc. v. EchoStar Commc’ns Corp., No. 2:04- 

CV-1 (DF), 2005 U.S. Dist. LEXIS 42481 (E.D. Tex. Sept. 26, 2005). 

254. Autobytel, 455 F. Supp. 2d at 575. 

255. 243 F. Supp. 2d 418, 423 (M.D. N.C. 2003). 

256. Autobytel, 455 F. Supp. 2d at 575; see also Informatica Corp. v. Bus. 

Objects Data Integration, Inc., No. C 02-3378 JSW, 2006 U.S. Dist. LEXIS 58976, at 

*6–7 (N.D. Cal. Aug. 9, 2006). 

257. Autobytel, 455 F. Supp. 2d at 575 (citing Akeva, 243 F. Supp. 2d at 

422). 

258. See id. 

259. Id.



the reasonableness of the alleged infringer’s reliance on the opinion. 260 

The court then applied the EchoStar balancing test and found that the 

policies favoring the attorney-client privilege and work-product doctrine 

outweighed whatever utility there might be in extending the waiver to 

include all possible defenses to infringement. 261 Therefore, the court did 

not read EchoStar to require such a broad subject matter waiver. 262 

b. Does the waiver extend to the communications and work product 

of trial counsel? 

The second issue that has challenged the district courts is 

whether the scope of waiver includes attorney-client communications 

and work product of trial counsel. The Federal Circuit in EchoStar held 

that by raising the advice-of-counsel defense, an alleged infringer 

waives privilege regarding “attorney-client communications relating to 

the same subject matter, including communications with counsel other 

than in-house counsel.” 263 Yet, the district courts have been unclear as 

to whether “counsel other than in-house counsel” includes trial counsel. 

Accordingly, the district courts have taken various approaches when 

faced with requests for disclosure of attorney-client communications 

and work product of trial counsel. In fact, the confusion exhibited by 

these widely varying approaches led the Federal Circuit to intervene 

again, in In re Seagate Technology, LLC, 264 addressing this issue barely 

over a year after deciding EchoStar. 

Section (i) discusses the varying district court treatments of the 

waiver as it applies to trial counsel. Section (ii) then analyzes Seagate, 

in which the Federal Circuit held that the waiver of both attorney-client 

privilege and work-product protection generally does not extend to trial 

counsel. 265 

(i) The various approaches of the district courts 

Several courts have held that the scope of waiver includes all 

communications and work product of trial counsel related to the same 

260. Id. For example, information about an alleged infringer’s state of mind 

regarding the validity of the patent would give little insight into the reasonableness of 

its reliance on counsel’s advice that the patent was not infringed. 

261. Id. 

262. Id. 


264. See In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20, 

2007). 

265. Id. at 18, 21.



subject matter. 266 Most of these courts have found their primary support 

for this position in EchoStar’s reliance on Akeva LLC v. Mizinou 

Corp. 267 In Akeva, the court explicitly held that all opinions relating to 

the same subject matter were discoverable, including those of trial 

counsel. 268 Therefore, these courts conclude that the Federal Circuit’s 

reasoning in EchoStar combined with its reliance on Akeva 

demonstrates its intent that communications and work product of trial 

counsel be included within the scope of waiver. 269 

Furthermore, the District Court for the Eastern District of New 

York found the balancing test of EchoStar to support extending the 

waiver to trial counsel. 270 The court found that excluding trial attorneys 

from the scope of waiver would allow an alleged infringer to use 

“sword-and-shield” 271 tactics by selectively choosing which opinions to 

reveal. 272 Additionally, the court found that extending the waiver to trial 

counsel would not unduly burden the attorney-client privilege because 

the decision to raise the advice-of-counsel defense is completely within 

the control of the alleged infringer. 273 Accordingly, the court found 

that, on balance, the policy of fairness to the plaintiff outweighed the 

policies favoring the attorney-client privilege and work-product 

doctrine, and that the waiver therefore extends to trial counsel. 274 

At least one district court has held that the waiver does not extend 

to trial counsel. In Ampex Corp. v. Eastman Kodak Co., 275 the District 

Court for the District of Delaware found that the language and context 

266. See, e.g., Affinion Net Patents, Inc. v. Maritz, Inc., 440 F. Supp. 2d 

354, 356 (D. Del. 2006); Computer Assocs. Int’l, Inc. v. Simple.com, Inc., No. 02 

Civ 2748 (DRH) (MLO), 2006 U.S. Dist. LEXIS 77077, at *12–14 (E.D. N.Y. Oct. 

20, 2006); Informatica Corp. v. Bus. Objects Data Integration, Inc. No. C 02-3378 

JSW, 2006 U.S. Dist. LEXIS 58976, at *6–7 (N.D. Cal. Aug. 9, 2006); Beck Sys., 

Inc. v. Managesoft Corp., No. 05 C 2036, 2006 U.S. Dist. LEXIS 53963, at *15–18 

(N.D. Ill. July 14, 2006). 

267. 243 F. Supp. 2d 418 (M.D. N.C. 2003); See, e.g., Computer Assocs., 

2006 U.S. Dist. LEXIS 77077, at *13; Informatica, 2006 U.S. Dist. LEXIS 58976, at 

*6–7; Beck, 2006 U.S. Dist. LEXIS 53963, at *16 n.1. 

268. Akeva, 243 F. Supp. 2d at 423. 

269. See Computer Assocs., 2006 U.S. Dist. LEXIS 77077, at *13. 

270. See id. at *13–14. 


272. Computer Assocs., 2006 U.S. Dist. LEXIS 77077, at *13; see also 

Lifenet, Inc. v. Musculoskeletal Transplant Found., Inc., 490 F. Supp. 2d 681, 688 

(E.D. Va. 2007). 

273. Computer Assocs., 2006 U.S. Dist. LEXIS 77077, at *14; see also 

Lifenet, 490 F. Supp. 2d at 689. 

274. Computer Assocs., 2006 U.S. Dist. LEXIS 77077, at *7–8, *13–14. 

275. No. 04-1373–KAJ, 2006 U.S. Dist. LEXIS 48702 (D. Del. July 17, 

2006).



of the EchoStar opinion indicated that the Federal Circuit intended the 

scope of waiver of attorney-client privilege to include only 

communications expressed in a manner similar to that of the underlying 

opinion. 276 Advice of trial counsel exhibits a character different from 

the advice of opinion counsel upon which an alleged infringer relies. 277 

Furthermore, the court stressed that if all attorney-client 

communications on the same subject were viewed as “advice” or 

“opinions” the practical significance of the attorney-client privilege 

would be destroyed. 278 Such a weakening of the attorney-client privilege 

is at odds with comments of the Federal Circuit in recent decisions. 279 

Still other district courts have attempted to craft an intermediate 

approach, finding that the waiver extends to communications and work 

product of trial counsel, but limiting the scope of the waiver. These 

courts have found that EchoStar is factually incompatible with the issue 

of extension of the waiver to trial counsel, and therefore by itself is 

inconclusive on the issue. 280 Without clearly controlling law, these 

courts have crafted their own intermediate test, finding the waiver 

extends only to communications and communicated work product of 

trial counsel that contain “conclusions or advice that contradict or cast 

doubt on the earlier opinions.” 281 This intermediate approach considers 

both the need for discovery to avoid “sword-and-shield” tactics and the 

policies favoring both the attorney-client privilege and work-product 

doctrine. 282 Thus, it is consistent with EchoStar. 283 

The District Court for the Northern District of California crafted a 

different intermediate approach in Genentech, Inc. v. Insmed Inc. 284 

The court found the intermediate approach taken by other courts, 

extending waiver only to contradictory or doubt-casting 

communications and work product of trial counsel, to have significant 

276. Id. at *8–9. 

277. See id. at *9–10. 

278. Id. at *10. 

279. Id. (citing In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1300–01 

(Fed. Cir. 2006)); Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 

383 F.3d 1337, 1343–44 (Fed. Cir. 2004)). 

280. See Intex Recreation Corp. v. Team Worldwide Corp., 439 F. Supp. 2d 

46, 52 (D. D.C. 2006); Ind. Mills & Mfg., Inc. v. Dorel Indus., Inc., No. 1:04-cv- 

01102-LJM-WTL, 2006 U.S. Dist. LEXIS 34023, at *19–20 (S.D. Ind. May 26, 

2006). 

281. Intex, 439 F. Supp. 2d at 52. 

282. Dorel, 2006 U.S. Dist. LEXIS 34023, at *14–15. 

283. Id. at *20. 

284. 442 F. Supp. 2d 838 (N.D. Cal. 2006).



practical problems. 285 Instead, the court held the scope of waiver to 

include “documents and communications that contain opinions (formal 

or informal) and advice central and highly material” to the subject 

matter of the opinion of counsel upon which the alleged infringer 

relies. 286 The court reasoned that this approach would exclude most 

low-level documents and communications regarding trial strategy from 

the waiver while still allowing the plaintiff discovery of opinions and 

advice of trial counsel relevant to the willfulness inquiry. 287 

The District Court for the Eastern District of Missouri created yet 

another intermediate approach in Iridex Corp. v. Synergetics, Inc., 288 

holding that the waiver extends to trial counsel except for opinions 

given solely to evaluate settlement options. 289 The court noted that 

although its approach may be inconsistent with other district court 

decisions, nothing in EchoStar expressly prohibited such an 

approach. 290 Furthermore, the court found its approach appropriate in 

light of the public policy favoring the compromise and settlement of 

disputes. 291 

(ii) In re Seagate Technology, LLC: The Federal Circuit Weighs In 

Again 

In light of the widespread confusion in the district courts exhibited 

by these many differing approaches, the Federal Circuit chose to 

address en banc whether the waiver extends to trial counsel in In re 

Seagate Technology, LLC. 292 In Seagate, Convolve, Inc., and the 

Massachusetts Institute of Technology sued Seagate Technology, LLC, 

for willful patent infringement. 293 Seagate retained outside counsel to 

provide opinions concerning the patents in question prior to the lawsuit 

but did not receive any opinions until after Convolve and MIT filed the 

complaint. 294 Seagate announced that it intended to raise the advice-of- 

285. The court expressed skepticism regarding a trial attorney’s ability to 

accurately judge what contradicts or casts doubt on the underlying opinion while 

simultaneously advocating for the client. Id. at 846. Furthermore, the court questioned 

what would constitute doubt sufficient to make disclosure necessary. Id. 

286. Id. at 847. 

287. Id. 

288. No. 4:05CV1916 CDP, 2007 U.S. Dist. LEXIS 7747 (E.D. Mo. Feb. 2, 

2007). 

289. Id. at *3–4. 

290. Id. at *4. 

291. Id. 

292. No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007). 

293. Id. at 2. 

294. Id.



counsel defense based on the opinions it obtained from its outside 

counsel. 295 Convolve responded by moving for the district court to 

compel discovery of all communications and work product of Seagate’s 

other counsel, including its trial counsel. 296 

The district court granted the motion, holding that Seagate waived 

attorney-client privilege and work-product protection for any counsel, 

including trial counsel, concerning the subject matter of the outside 

counsel opinions. 297 The court held that the temporal scope of the 

waiver extended from when Seagate first obtained knowledge of the 

patents in question to whenever the alleged infringement ceased. 298 The 

court allowed for in camera review of documents reflecting trial 

strategy but noted that it would order disclosure of any trial counsel 

advice that affected the reasonableness of relying on the outside counsel 

opinions. 299 After the district court refused to certify an interlocutory 

appeal, Seagate petitioned the Federal Circuit for a writ of mandamus 

to stop disclosure of communications and work product of its trial 

counsel. 300 

The Federal Circuit asked the parties to argue whether or not the 

waiver of both attorney-client privilege and work-product protection 

should extend to trial counsel. 301 Several third-party organizations, 

perhaps most notably the American Bar Association and the American 

Intellectual Property Law Association, submitted amicus briefs in 

support of Seagate’s petition arguing that trial counsel should be 

immune from waiver of attorney-client privilege and work-product 

protection. 302 

295. Id. at 3. 

296. Id. 

297. Id. at 3–4. 

298. Id. 

299. Id. at 4. 

300. Id. 

301. Id. at 1. The Federal Circuit also asked the parties to address whether it 

should revise or eliminate the duty-of-due-care standard under which an alleged 

infringer with notice of another’s patent rights has an affirmative duty to investigate 

whether it infringes those rights altogether. Id. While this could potentially have a 

significant impact on the waiver issues presented in this Note, this duty-of-due-care 

question is not discussed. 

302. Brief for Am. Bar Assoc. as Amicus Curiae in Support of Petitioner, In re 

Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007), available at 

http://www.abanet.org/intelprop/Seagate-brief.pdf; Brief for Amicus Curiae Am. 

Intellectual Prop. Law Assoc. in Support of Petitioner, In re Seagate Tech., LLC, No. 

06-M830, slip op. (Fed. Cir. Aug. 20, 2007), available at http://www.aipla.org/ 

Content/ContentGroups/Issues_and_Advocacy/Amicus_Briefs1/20079/AIPLASeagatebr 

f.pdf; see also Brief of Amicus Curiae, Biotechnology Indus. Org., in Support of 

Petitioner, In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20,



The Federal Circuit agreed, holding that the waiver generally does 

not extend to trial counsel for either attorney-client privilege or workproduct 

protection. 303 The court began by noting that the purpose of the 

waiver is fairness; that is, the waiver is intended to prevent an alleged 

infringer from using the privilege as both a “sword and a shield.” 304 

According to the court, the function of trial counsel in the legal system 

has a significantly different nature than that of opinion counsel. 305 

Opinion counsel serves an objective role, providing opinions upon 

which the client bases its business decisions. 306 Trial counsel, on the 

other hand, serves a decidedly subjective role, coordinating litigation 

strategy and advocating for the client in the adversarial judicial 

process. 307 The court stated that because of the fundamental difference 

between the two roles and the type of advice each imparts to the client, 

the client’s relationship with trial counsel does not present the same 

“sword and shield” concerns as its relationship with opinion counsel. 308 

Therefore, the balance of fairness does not favor extending the waiver 

to communications and work product of trial counsel. 309 

Furthermore, the court noted that under ordinary circumstances, 

willfulness will depend largely on an alleged infringer’s prelitigation 

conduct. 310 Accordingly, the court found that communications and work 

product of trial counsel have little, if any, relevance to the willfulness 

inquiry. 311 The court also advised that if an alleged infringer’s postfiling 

2007), available at http://bio.org/ip/amicus/Seagate.pdf; Brief of Intellectual Prop. 

Owners Assoc. as Amicus Curiae in Support of Petitioner, In re Seagate Tech., LLC, 

No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007), available at http://www.ipo.org/ 

AM/Template.cfm?Section=Home&TEMPLATE=/CM/ContentDisplay.cfm&CONTE 

NTID=14227. 

303. In re Seagate Tech., LLC, No. 06-M830, slip op. at 18, 21 (Fed. Cir. 

Aug. 20, 2007). The court addressed the waiver of attorney-client privilege and workproduct 

protection separately but noted that the rationale for limiting the waiver of both 

is the same. Id. at 15–21. 

304. Id. at 14. 

305. Id. at 15. 

306. Id. 

307. Id. 

308. Id. 

309. Id. 

310. Id. at 16. The court reasoned that, at the time of filing a complaint, a 

plaintiff must have a good faith basis for alleging willfulness; therefore, a willfulness 

claim included in the original complaint must be based upon the defendant’s prefiling 

conduct. Id. 

311. Id. at 18.



conduct is reckless, a preliminary injunction will typically be an 

available remedy for a patentee. 312 

In light of the above factors, the court held that asserting the 

advice-of-counsel defense generally does not affect a waiver of 

attorney-client privilege and work-product protection with respect to 

trial counsel. 313 However, the court was careful to note that it was not 

imposing an absolute rule. 314 Rather, the court instructed that the 

district courts, at their discretion, should feel free to extend waiver to 

trial counsel in unique circumstances. 315 

IV. APPLICATION OF THE ECHOSTAR REASONING TO THE 

TWO QUESTIONS 

As previously mentioned, the two issues cited above 316 have caused 

a great deal of confusion in the district courts. Much of this confusion 

is attributable to the fact that the issues do not fit neatly into the threecategory 

framework the Federal Circuit provided in EchoStar. 317 

Because the framework does not clearly address the issues, many of the 

district courts have proceeded to pick individual phrases and cases out 

of the EchoStar opinion to justify their various holdings on the two 

issues. 318 This practice of focusing on details spread throughout the 

opinion is largely responsible for the wide variety of approaches that 

the district courts have employed subsequent to EchoStar. 

312. Id. at 17. It should be noted that “recklessness” now must also be shown 

in order to establish willfulness under the Federal Circuit’s new standard. See id. 

313. Id. at 18, 21. 

314. Id. 

315. Id. According to the court, an instance where a party or counsel engages 

in chicanery is an example of a unique circumstance. Id. 

316. See supra Parts III.D.2.a (discussing the issue of whether the waiver 

extends to all possible defenses or only those referenced in the underlying opinion) and 

III.D.2.b (discussing the issue of whether the waiver extends to trial counsel). 

317. See, e.g., Intex Recreation Corp. v. Team Worldwide Corp., 439 F. 

Supp. 2d 46, 52 (D. D.C. 2006); Ind. Mills & Mfg., Inc. v. Dorel Indus., Inc., No. 

1:04-cv-01102-LJM-WTL, 2006 U.S. Dist. LEXIS 34023, at *19–20 (S.D. Ind. May 

26, 2006). 

318. See, e.g., Intex, 439 F. Supp. 2d at 50; Outside The Box Innovations, 

LLC v. Travel Caddy, Inc., 455 F. Supp. 2d 1374, 1377 (N.D. Ga. 2006); Computer 

Assocs. Int’l, Inc. v. Simple.com, Inc., No. 02 Civ. 2748 (DRH) (MLO), 2006 U.S. 

Dist. LEXIS 77077, at *13 (E.D. N.Y. Oct. 20, 2006); Informatica Corp. v. Bus. 

Objects Data Integration, No. C 02-3378 JSW, 2006 U.S. Dist. LEXIS 58976, at *6–7 

(N.D. Cal. Aug. 9, 2006); Beck Sys., Inc. v. Managesoft Corp., No. 05 C 2036, 2006 

U.S. Dist. LEXIS 53963, at *16 n.1 (N.D. Ill. July 14, 2006).



However, the Federal Circuit anticipated that issues would arise 

that would not fit neatly into the EchoStar framework. 319 District courts 

should not view the framework as an all-encompassing solution to all 

possible scope-of-waiver issues. Rather, they should see the framework 

as a tool for simplifying the balancing test described in EchoStar. When 

an issue does not fit into the framework, district courts should balance 

the policies favoring protection of the attorney-client relationship with 

the policies to prevent “sword-and-shield litigation tactics.” 320 

Furthermore, district courts should be mindful that the willfulness 

inquiry focuses on the “infringer’s state of mind” regarding the opinion 

upon which he relies. 321 By focusing on these conceptual building 

blocks of EchoStar, district courts can identify appropriate solutions for 

both of the issues as well as for most other scope-of-waiver issues that 

the courts will face in the future. 

Section A analyzes the as-yet-unresolved question of whether the 

waiver should include all three defenses to infringement or only those 

referenced in the underlying opinion. Section B examines the Federal 

Circuit’s resolution of the second question—whether the waiver should 

extend to trial counsel in Seagate—and evaluates the appropriateness of 

the Federal Circuit’s approach. 

A. The Scope of Waiver Should Include Only Those 

Defenses Referenced in the Opinion on 

Which the Alleged Infringer Relies 

By properly applying the reasoning of EchoStar, courts should 

conclude that the scope of waiver is limited to the defenses referenced 

in the underlying opinion and does not extend to all possible defenses. 

The Federal Circuit, particularly as of late, has expressed high regard 

for the policies favoring the attorney-client privilege and work-product 

doctrine. 322 Courts should therefore not broaden the scope of waiver 

lightly, as doing so necessarily infringes upon the sanctity of the 

attorney-client relationship. Whether or not a broad scope of waiver is 

justified depends upon its necessity to ensure fairness for the plaintiff— 

allowing the plaintiff to evaluate all information about the alleged 

319. In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1302 n.3 (Fed. Cir. 

2006) (“We by no means anticipate that all work product in every case will fit into one 

of these three categories.”). 

320. See id. at 1302. 

321. Id. at 1303. 

322. See id. at 1300–01; In re Seagate Tech., LLC, No. 06-M830, slip op. 

(Fed. Cir. Aug. 20, 2007); Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana 

Corp., 383 F.3d 1337, 1344–45 (Fed. Cir. 2004).



infringer’s state of mind regarding its reliance on the advice of counsel. 

A broad construction of the waiver as it relates to a particular issue may 

be justified if it is reasonably necessary to protect against “sword-andshield” 

323 tactics by the alleged infringer. In applying the balancing test, 

courts should determine whether the additional benefit of fairness to the 

plaintiff resulting from the broader construction of waiver would 

outweigh the added interference with the attorney-client relationship. 

Extending the waiver to include all possible defenses to 

infringement would provide little, if any, additional fairness to the 

plaintiff. As the court noted in Autobytel, Inc. v. Dealix Corp., the 

focus of the willfulness inquiry is on the alleged infringer’s state of 

mind regarding its reasonable reliance on the opinion of counsel. 324 

Therefore, information about the alleged infringer’s state of mind 

regarding defenses not referenced in the underlying opinion would have 

little, if any, utility in the willfulness inquiry. 325 Allowing discovery of 

communications and work product relating to all possible infringement 

defenses would not prevent the alleged infringer from using advice of 

counsel as “both a sword and a shield.” 326 Rather, such a broad scope 

of waiver would serve to take away the alleged infringer’s shield for 

defenses that it does not use as a sword. Whatever limited benefit of 

fairness the plaintiff receives by broadening the waiver to include all 

defenses is outweighed by the interests of protecting the alleged 

infringer’s attorney-client relationship. Therefore, the balancing test 

favors a scope of waiver limited to those defenses referenced in the 

underlying opinion. 

Perhaps an example best illustrates the appropriateness of limiting 

the waiver to defenses referenced in the underlying opinion: Widget 

World owns a patent on a particular type of widget. American Widgets 

develops its own type of widget. After learning of Widget World’s 

patent, American Widgets obtains advice from its outside patent 

counsel, who informs American Widgets that it does not believe 

American Widgets’ widget infringes Widget World’s patent. Widget 

World sues for willful patent infringement, and American Widgets 

responds by claiming that it relied on the advice of counsel that its 

widget did not infringe Widget World’s patent. 

In this example, any advice American Widgets obtained regarding 

noninfringement would fall within the scope of waiver because it would 

be relevant to the reasonableness of American Widgets’ belief that its 

323. EchoStar, 448 F.3d at 1302. 

324. Autobytel, Inc. v. Dealix Corp., 455 F. Supp. 2d 569, 572 (E.D. Tex. 

2006). 

325. Id. 

326. EchoStar, 448 F.3d at 1301.



widget did not infringe Widget World’s patent. But what benefit would 

come from finding the waiver to include advice of counsel regarding 

the validity or enforceability of Widget World’s patent? American 

Widgets does not claim that it continued to produce its widgets because 

it believed Widget World’s patent was invalid or unenforceable. If that 

were American Widgets’ position, then the waiver would appropriately 

extend to the defenses of validity and enforceability. 

Instead, American Widgets claims it continued to produce its 

widgets only because it believed its widgets did not infringe Widget 

World’s patent, regardless of its validity or enforceability. Even if 

American Widgets did receive advice of counsel that Widget World’s 

patent was both valid and enforceable, this advice would be irrelevant 

to American Widgets’ belief that its widget did not infringe the patent. 

Therefore, extending the waiver to include validity and enforceability in 

this case would unnecessarily interfere with American Widgets’ 

relationship with its outside patent counsel, and the waiver should be 

limited to noninfringement. 

B. The Scope of Waiver Should Not Include Communications and 

Work Product of Trial Counsel 

The Federal Circuit in Seagate was correct in holding that the 

waiver should not extend to communications and work product of trial 

counsel. As the court noted, the relationship between a trial attorney 

and client is unique from that of other attorney-client relationships. 327 A 

trial attorney is charged with the task of coordinating and executing the 

litigation efforts of the client, and therefore much of the attorney-client 

communications and work product of a trial attorney reflect complex 

litigation strategies and theories regarding how best to approach certain 

aspects of the case. 328 Furthermore, unlike opinion counsel, trial 

counsel serves the role of a biased advocate in the adversarial judicial 

process. 329 It is especially crucial for trial counsel to be able to have 

frank and open communications with the client as well as document 

thoughts and legal strategies. Therefore, this relationship presents 

unique challenges to courts attempting to construe properly the scope of 

waiver. 

Because of the special nature of this relationship, application of the 

same broad waiver that is applied to opinion counsel is inappropriate. 

327. See In re Seagate Tech., LLC, No. 06-M830, slip op. at 15 (Fed. Cir. 

Aug. 20, 2007); Genentech, Inc. v. Insmed Inc., 442 F. Supp. 2d 838, 844–45 (N.D. 

Cal. 2006). 

328. See Genentech, 442 F. Supp. 2d at 846. 

329. See Seagate, No. 06-M830, slip op. at 15.



The need to protect the attorney-client relationship and the policies 

favoring the attorney-client privilege and work-product doctrine are 

particularly strong with respect to trial counsel. An unduly broad 

waiver of attorney-client communications and work product of trial 

counsel can lead to devastating results for a defendant. While attorneys 

may redact material, 330 advice regarding defenses and trial strategy may 

be so intermingled that redaction may fail to save key trial strategy 

from disclosure. More importantly, for trial counsel to be an effective 

advocate, trial counsel must be free to discuss the details and likelihood 

of success regarding infringement defenses without fear of harming the 

client’s case. Therefore, the marginally increased ability to protect 

against unfair litigation tactics by the defendant does not balance the 

encroachment that such a broad waiver would make upon the unique 

relationship between trial counsel and client. 

Proponents of a broad extension of the waiver to trial counsel 

argue that this encroachment is acceptable because the alleged infringer 

can choose not to raise the defense. 331 However, because the advice-ofcounsel 

defense is often the most effective defense against a finding of 

willfulness, this may not be much of a choice. Accordingly, alleged 

infringers may still routinely choose to assert the advice-of-counsel 

defense regardless of the broad trial counsel waiver. Instead, the 

practical effect of a broad waiver would likely be to discourage trial 

counsel from documenting important thoughts, ideas, and 

communications with the client because they would all potentially be 

discoverable. Thus, this approach would severely impede upon defense 

counsel’s ability to serve his or her client without appreciably 

increasing the fairness to the plaintiff. 

The limited waivers applied in Iridex, Genentech, Intex, and Dorel 

are similarly inappropriate solutions. On their face, these solutions 

appear to balance the policies favoring the attorney-client privilege and 

work-product doctrine with fairness to the plaintiff. However, these 

solutions are largely unworkable. 

The Iridex court’s limited waiver, excluding opinions given 

“solely for the purpose of evaluating settlement options,” 332 is 

inefficient and impractical. There is no feasible way to determine 

whether a defendant obtained advice solely to evaluate settlement 

options or for some other purpose. Conceivably, all advice received by 

the defendant is obtained to evaluate options. This construction of the 

scope of waiver would require courts to painstakingly evaluate the 

330. EchoStar, 448 F.3d. at 1304. 

331. See supra note 273 and accompanying text. 

332. Iridex Corp. v. Synergetics, Inc., No. 4:05CV1916 CDP, 2007 U.S. Dist. 

LEXIS 7747, at *4 (E.D. Mo. Feb. 2, 2007).



defendant’s subjective intent in obtaining advice and thus would be very 

inefficient. Furthermore, the highly subjective nature of this approach 

would make it difficult for trial attorneys and clients to predict the 

communications and work product to which the waiver would extend in 

any given case. 

The Genentech solution, limiting waiver to advice “central and 

highly material” 333 to the subject matter of the underlying opinion, and 

the Intex and Dorel solutions, limiting waiver to advice which 

contradicts or casts doubt on the underlying opinion, are also 

unworkable solutions, albeit somewhat more practical than the Iridex 

approach. These standards could be more easily applied than the Iridex 

standard because they are not based on the defendant’s intent. These 

solutions are also highly subjective, however, and therefore would 

spark a great deal of contention between the parties regarding whether 

advice is “central and highly material” 334 to the subject matter of the 

underlying opinion or contradicts or casts doubt on the opinion. It 

would be very difficult, if not impossible, for a trial attorney to 

simultaneously fulfill his or her duty as a zealous advocate for the client 

and accurately and objectively classify work product into one of these 

categories. As a result, the court would be forced to review many 

communications and work product of trial counsel in camera to 

determine if they are highly material, somewhat material, or truly 

contradict or cast doubt on the underlying opinion. Furthermore, 

because it is unclear what the threshold would be to consider 

communications or work product “highly” material, or to contradict or 

cast doubt, these solutions would again be highly unpredictable for trial 

attorneys and clients. Accordingly, these solutions would be very costly 

and inefficient for both alleged infringers and to the system as a whole. 

Additionally, and perhaps more importantly, these solutions still fail to 

account properly for the necessity for trial counsel to freely discuss 

potential defenses with his or her client. 

By focusing on the reasoning that guided its holding in EchoStar, 

the Federal Circuit properly concluded that the scope of waiver should 

not extend to trial counsel. 335 The court immediately focused its 

discussion on the fact that the waiver is intended to promote fairness 

and protect against sword-and-shield tactics by the alleged infringer. 336 

The court recognized that because of the special nature of trial counsel, 

the danger of such sword-and-shield tactics was significantly lower than 

333. 442 F. Supp. 2d at 847. 

334. Id. 

335. In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20, 

2007). 

336. Id. at 14.



in the case of opinion counsel. 337 Furthermore, the court appropriately 

acknowledged that public policy favoring the attorney-client privilege 

and work-product doctrine is particularly strong with respect to trial 

counsel because trial counsel’s effectiveness as a zealous advocate is 

crucial to the operation of the adversarial system of justice. 338 

Consequently, the court properly determined that the balance of 

fairness generally advised against extending the waiver to 

communications and work product of trial counsel. 339 

One concerning aspect of the Seagate opinion, however, is that the 

court clearly and unambiguously left the door open for district courts to 

extend the waiver to trial counsel in “unique circumstances.” 340 One of 

the significant benefits of a bright-line rule that the waiver does not 

extend to trial counsel is that it is predictable. Under a bright-line rule, 

alleged infringers know exactly what to expect if they choose to assert 

the advice-of-counsel defense. The Federal Circuit’s “unique 

circumstances” instruction to the district courts could potentially lead to 

more unpredictability if the district courts take it to heart. Despite its 

two solid attempts at clarifying the scope of waiver in EchoStar and 

Seagate, the Federal Circuit may very well find itself needing to revisit 

the waiver issue to define what qualifies as “unique circumstances.” 

V. CONCLUSION 

EchoStar is an excellent tool for district courts attempting to 

construe the scope of waiver properly, as well as for attorneys hoping 

to predict how broad the scope of waiver will be upon assertion of the 

advice-of-counsel defense. Its reliance on fundamental policy factors in 

its balancing test makes it highly adaptable to the many different 

situations that arise in willful-patent-infringement cases. Furthermore, it 

provides a three-category framework that greatly simplifies the 

determination of the appropriate scope of waiver of work-product 

protection. The EchoStar decision serves to illuminate substantially an 

area of patent law that previously had been frustratingly unclear. 

Yet despite EchoStar’s contribution to the scope of work-product 

waiver, two questions remain unclear in district court decisions 

subsequent to EchoStar: (1) whether the waiver extends to all possible 

defenses to patent infringement or only those addressed in the formal 

opinion on which the alleged infringer relies; and (2) whether the 

337. Id. at 15. 

338. Id. at 16. 

339. Id. at 18, 21. 

340. Id. at 18.



waiver extends to trial counsel. These questions have produced enough 

significant confusion in the district courts to warrant additional attention 

from the Federal Circuit. 

The second question, whether the waiver extends to trial counsel, 

has already received such attention in the Federal Circuit’s Seagate 

opinion. In Seagate, the Federal Circuit held that the waiver of 

attorney-client privilege and work-product protection should not extend 

to trial counsel. 341 Seagate stands as an excellent example of how a 

court can utilize the policies and balancing test underlying EchoStar to 

come to an appropriate solution when a waiver issue does not neatly fit 

in the EchoStar framework. When the same reasoning applied in 

EchoStar and Seagate is applied to the first question, courts should 

conclude that the waiver applies only to the defenses referenced in the 

underlying opinion and not to all three infringement defenses. If the 

district courts focus on the policy concerns and balancing test utilized in 

EchoStar and Seagate, they should be able to successfully navigate 

practically any waiver issues that may arise in the future. 

341. Id. at 18, 21.

note a guide to waiver after echostar and seagate - UW Law School

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