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

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BELDEN - FINAL 11/29/2007 4:08 PM 952 WISCONSIN LAW REVIEW 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.
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 953 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.
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