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

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BELDEN - FINAL 11/29/2007 4:08 PM 954 WISCONSIN LAW REVIEW 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
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 955 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.
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