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

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BELDEN - FINAL 11/29/2007 4:08 PM 960 WISCONSIN LAW REVIEW protection for all attorney-client communications and certain attorney work product concerning the “same subject matter” as the opinion upon which it relies. 243 The case law is unclear, however, regarding whether the “subject matter” of the opinion includes all possible infringement defenses or only the defenses addressed in the opinion of counsel upon which the alleged infringer relies. 244 Several of the district courts have held that the waiver extends to all possible infringement defenses, not just those that are referenced in the opinion that forms the basis of the advice-of-counsel defense. 245 First, the Federal Circuit wrote in its opinion that work product is discoverable only if it embodies or references communications “concerning the subject matter of the case.” 246 The District Court for the District of Columbia interpreted the Federal Circuit’s use of this phrase, as opposed to “subject matter of the opinion,” as evidence of its intent to include all possible infringement defenses within the scope of waiver. 247 Furthermore, the Federal Circuit wrote that an alleged infringer waives work-product immunity “for any document or opinion that embodies or discusses a communication to or from it concerning whether that patent is valid, enforceable, and infringed by the accused.” 248 The district courts found this phrase further supported their contention that the Federal Circuit intended the subject matter waiver to extend to all three defenses. 249 Several other district courts, however, have held that the scope of waiver is limited to the defenses referenced in the opinion upon which the defendant relies. 250 The District Court for the Eastern District of 243. In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1299 (Fed. Cir. 2006) (quoting Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349 (Fed. Cir. 2005)). 244. This is a critical issue that arises frequently because it is common for the opinion upon which the alleged infringer relies to address only one or two of the defenses. Often, the opinion addresses only the defense of noninfringement (which is why patent attorneys frequently refer to these opinions as “noninfringement” opinions). 245. See, e.g., Kimberly-Clark Corp. v. Tyco Healthcare Retail Group, No. 05-C-985, 2007 U.S. Dist. LEXIS 5974, at *5 (E.D. Wis. Jan. 26, 2007); Affinion Net Patents, Inc. v. Maritz, Inc., 440 F. Supp. 2d 354, 356 (D. Del. 2006); Intex Recreation Corp. v. Team Worldwide Corp., 439 F. Supp. 2d 46, 50 (D. D.C. 2006); Outside The Box Innovations, LLC v. Travel Caddy, Inc., 455 F. Supp. 2d 1374, 1379 (N.D. Ga. 2006). 246. Intex, 439 F. Supp. 2d at 50 (quoting EchoStar, 448 F.3d at 1302). 247. Id. at 50. 248. EchoStar, 448 F.3d at 1304. 249. See, e.g., Intex, 439 F. Supp. 2d at 50; Outside The Box, 455 F. Supp. 2d at 1377. 250. See, e.g., Autobytel, Inc. v. Dealix Corp., 455 F. Supp. 2d 569, 574–75 (E.D. Tex. 2006); Informatica Corp. v. Bus. Objects Data Integration, Inc., No. C 02- 3378 JSW, 2006 U.S. Dist. LEXIS 58976, at *6–8 (N.D. Cal. Aug. 9, 2006); Beck
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 961 Texas 251 best summarized the reasoning behind this limitation on the scope of waiver in its Autobytel, Inc. v. Dealix Corp. decision. 252 The court first noted that the district court opinion underlying EchoStar had limited the scope of waiver to noninfringement because the opinion of in-house counsel upon which EchoStar relied focused on noninfringement. 253 In granting mandamus, the Federal Circuit altered the district court’s holding regarding the scope of waiver in several aspects, but it did not explicitly alter the district court’s limitation of the waiver to noninfringement. 254 Furthermore, the Federal Circuit cited Akeva LLC v. Mizuno Corp. 255 as support for its determination that the waiver extends to all attorney-client communications concerning the same subject matter. 256 In Akeva, the court defined the “same subject matter” as the subject matter of the opinion. 257 The court then proceeded to apply the broader policy justifications described by EchoStar to determine the appropriateness of limiting the waiver to the defenses of the underlying opinion. 258 The court noted that “[t]he purpose of the advice-of-counsel privilege waiver is to allow an inquiry into the infringer’s state of mind regarding the infringer’s reasonable reliance on its advice of counsel.” 259 Since invalidity, unenforceability, and noninfringement are distinct defenses, the court reasoned that information regarding defenses not at issue in the underlying opinion would be of little value in determining Sys., Inc. v. Managesoft Corp., No. 05 C 2036, 2006 U.S. Dist. LEXIS 53963, at *20–21 (N.D. Ill. July 14, 2006); Ind. Mills & Mfg., Inc. v. Dorel Indus., Inc., No. 1:04-cv-01102-LJM-WTL, 2006 U.S. Dist. LEXIS 34023, at *18 (S.D. Ind. May 26, 2006). 251. The court’s treatment in this case is particularly noteworthy because the District Court for the Eastern District of Texas is considered a patent “rocket docket” due to its speedy resolution of patent infringement cases. See Michael C. Smith, Rocket Docket: Marshall Court Leads Nation in Hearing Patent Cases, 69 TEX. B.J. 1044, 1045–46 (2006). As a result, plaintiffs frequently choose to file in this court. Id. 252. 455 F. Supp. 2d 569, 572–77 (E.D. Tex. 2006). 253. Id. at 575. The district court opinion also came from the District Court for the Eastern District of Texas. See TiVo Inc. v. EchoStar Commc’ns Corp., No. 2:04- CV-1 (DF), 2005 U.S. Dist. LEXIS 42481 (E.D. Tex. Sept. 26, 2005). 254. Autobytel, 455 F. Supp. 2d at 575. 255. 243 F. Supp. 2d 418, 423 (M.D. N.C. 2003). 256. Autobytel, 455 F. Supp. 2d at 575; see also Informatica Corp. v. Bus. Objects Data Integration, Inc., No. C 02-3378 JSW, 2006 U.S. Dist. LEXIS 58976, at *6–7 (N.D. Cal. Aug. 9, 2006). 257. Autobytel, 455 F. Supp. 2d at 575 (citing Akeva, 243 F. Supp. 2d at 422). 258. See id. 259. Id.
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