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

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BELDEN - FINAL 11/29/2007 4:08 PM 956 WISCONSIN LAW REVIEW 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.
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 957 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.
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