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

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BELDEN - FINAL 11/29/2007 4:08 PM 950 WISCONSIN LAW REVIEW 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.
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 951 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.
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