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

More documents

Recommendations

Info

BELDEN - FINAL 11/29/2007 4:08 PM 946 WISCONSIN LAW REVIEW 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
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 947 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.
Page 1 and 2: BELDEN - FINAL 11/29/2007 4:08 PM N
Page 3 and 4: BELDEN - FINAL 11/29/2007 4:08 PM 2
Page 13: BELDEN - FINAL 11/29/2007 4:08 PM 2
Page 43: BELDEN - FINAL 11/29/2007 4:08 PM 2

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

You also want an ePaper? Increase the reach of your titles

Delete template?

Save as template?