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

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BELDEN - FINAL 11/29/2007 4:08 PM 958 WISCONSIN LAW REVIEW Affinion Net Patents, Inc. v. Maritz, Inc. 225 In Affinion, the defendant’s counsel mistakenly produced two charts comparing patent claims 226 to a piece of prior art 227 during a deposition. 228 The following day, the defendant’s counsel asked the plaintiff’s counsel to return the charts, but the plaintiff argued that the defendant waived protection of the charts because the defendant had asserted the advice-of-counsel defense to the plaintiff’s allegation of willful patent infringement. 229 The court concluded that the defendant did not waive work-product protection to the charts under the EchoStar framework because the defendant’s attorney did not give the charts to the defendant. 230 Furthermore, the charts did not reference a communication with the defendant. 231 Therefore, the court denied the plaintiff’s motion to compel discovery of the charts. 232 While the straightforward and predictable nature of each of these decisions is noteworthy, the Affinion decision is particularly remarkable because of the District Court for the District of Delaware’s previous tendency to produce widely varying scopes of waiver in different willful-patent-infringement cases. 233 The court had previously run the gamut of waivers, producing opinions where the court construed the scope of waiver very narrowly, 234 very broadly, 235 and somewhere in between. 236 Accordingly, practitioners were relatively powerless to predict how broad a waiver would be imposed in a case before the court. 237 Therefore, Affinion demonstrates that the EchoStar 225. 440 F. Supp. 2d 354, 356–57 (D. Del. 2006). 226. For information regarding claims, see supra note 111. 227. “Prior art,” for the purposes of this Note, is a reference (e.g., a prior patent or published patent application or a technical document) that describes all or part of the claimed invention. See BLACK’S LAW DICTIONARY 119 (8th ed. 2004). 228. Affinion, 440 F. Supp. 2d at 356. 229. Id. 230. Id. at 356–57. 231. Id. at 357. 232. Id. 233. See DeBari, supra note 89, at 10. 234. See Thorn EMI N. Am., Inc. v. Micron Tech., Inc., 837 F. Supp. 616, 623 (D. Del. 1993). 235. See Novartis Pharm. Corp. v. Eon Labs Mfg., Inc., 206 F.R.D. 396, 399 (D. Del. 2002). It is notable that Judge Farnan, the author of this opinion, authored the Affinion opinion as well. Affinion, 440 F. Supp. 2d at 355. 236. See Mosel Vitelic Corp. v. Micron Tech., Inc., 162 F. Supp. 2d 307, 316 (D. Del. 2000); DeBari, supra note 89, at 10. 237. See Kiklis & Koski, supra note 193, at 3 (“Pity the poor patent litigator with a case before a new judge in Delaware. If asked by the client what to expect when the privilege is waived, he might as well consult the Magic 8 Ball.”).
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 959 framework has the potential to bring uniformity to even the most unpredictable of district courts. 2. CONFUSION IN THE DISTRICT COURTS FOLLOWING ECHOSTAR Despite its substantial contribution towards clarifying the scope of waiver upon assertion of the advice-of-counsel defense, EchoStar did leave ambiguity in regard to some important scope of waiver issues. 238 Two of these issues have arisen repeatedly in district court opinions since EchoStar: (1) whether the scope of waiver extends to all potential defenses to infringement (invalidity, unenforceability, and noninfringement) or just to those defenses addressed in the opinion upon which the alleged infringer relies; and (2) whether the scope of waiver extends to advice given by trial counsel. Like the general scope of work-product waiver before EchoStar, both issues have caused significant confusion in the district courts, and the courts have accordingly split on how to address the issues. This Section addresses each of these issues in turn. In addition, this Section discusses In re Seagate Technology, LLC, 239 the Federal Circuit’s answer to the second question in which it held that the waiver generally does not extend to trial counsel. a. Does the waiver extend to all possible defenses to patent infringement or only those defenses addressed in the underlying opinion of counsel? The first of these two issues is determining the patent infringement defenses to which the waiver extends. An alleged infringer can defend against an accusation of patent infringement by arguing that the patent is invalid, 240 unenforceable, 241 or not infringed. 242 When an alleged infringer raises the advice-of-counsel defense, it clearly waives 238. To be fair, the issues that have arisen in subsequent district court decisions generally were not at issue in the EchoStar case. 239. No. 06-M830 (Fed. Cir. Aug. 20, 2007). 240. By asserting that the patent is invalid, the alleged infringer argues that the patent does not meet the requirements for patentability, and therefore the United States Patent and Trademark Office should never have issued the patent. See 6 CHISUM, supra note 1, § 19.01. If a patent is invalid, then the patent holder has no rights of exclusion, so infringement is impossible. 241. A valid patent may still be found unenforceable for certain public policy reasons. See id. (noting that, among other reasons, a patent may be found unenforceable due to fraudulent procurement or inequitable conduct, patent misuse or violation of antitrust laws, unreasonable delay in filing an infringement suit). 242. One defense to patent infringement is that the alleged infringer’s conduct simply does not constitute infringement. See supra notes 72–75 and accompanying text.
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note a guide to waiver after echostar and seagate - UW Law School

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