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

More documents

Recommendations

Info

BELDEN - FINAL 11/29/2007 4:08 PM 962 WISCONSIN LAW REVIEW the reasonableness of the alleged infringer’s reliance on the opinion. 260 The court then applied the EchoStar balancing test and found that the policies favoring the attorney-client privilege and work-product doctrine outweighed whatever utility there might be in extending the waiver to include all possible defenses to infringement. 261 Therefore, the court did not read EchoStar to require such a broad subject matter waiver. 262 b. Does the waiver extend to the communications and work product of trial counsel? The second issue that has challenged the district courts is whether the scope of waiver includes attorney-client communications and work product of trial counsel. The Federal Circuit in EchoStar held that by raising the advice-of-counsel defense, an alleged infringer waives privilege regarding “attorney-client communications relating to the same subject matter, including communications with counsel other than in-house counsel.” 263 Yet, the district courts have been unclear as to whether “counsel other than in-house counsel” includes trial counsel. Accordingly, the district courts have taken various approaches when faced with requests for disclosure of attorney-client communications and work product of trial counsel. In fact, the confusion exhibited by these widely varying approaches led the Federal Circuit to intervene again, in In re Seagate Technology, LLC, 264 addressing this issue barely over a year after deciding EchoStar. Section (i) discusses the varying district court treatments of the waiver as it applies to trial counsel. Section (ii) then analyzes Seagate, in which the Federal Circuit held that the waiver of both attorney-client privilege and work-product protection generally does not extend to trial counsel. 265 (i) The various approaches of the district courts Several courts have held that the scope of waiver includes all communications and work product of trial counsel related to the same 260. Id. For example, information about an alleged infringer’s state of mind regarding the validity of the patent would give little insight into the reasonableness of its reliance on counsel’s advice that the patent was not infringed. 261. Id. 262. Id. 263. In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1299 (Fed. Cir. 2006). 264. See In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007). 265. Id. at 18, 21.
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 963 subject matter. 266 Most of these courts have found their primary support for this position in EchoStar’s reliance on Akeva LLC v. Mizinou Corp. 267 In Akeva, the court explicitly held that all opinions relating to the same subject matter were discoverable, including those of trial counsel. 268 Therefore, these courts conclude that the Federal Circuit’s reasoning in EchoStar combined with its reliance on Akeva demonstrates its intent that communications and work product of trial counsel be included within the scope of waiver. 269 Furthermore, the District Court for the Eastern District of New York found the balancing test of EchoStar to support extending the waiver to trial counsel. 270 The court found that excluding trial attorneys from the scope of waiver would allow an alleged infringer to use “sword-and-shield” 271 tactics by selectively choosing which opinions to reveal. 272 Additionally, the court found that extending the waiver to trial counsel would not unduly burden the attorney-client privilege because the decision to raise the advice-of-counsel defense is completely within the control of the alleged infringer. 273 Accordingly, the court found that, on balance, the policy of fairness to the plaintiff outweighed the policies favoring the attorney-client privilege and work-product doctrine, and that the waiver therefore extends to trial counsel. 274 At least one district court has held that the waiver does not extend to trial counsel. In Ampex Corp. v. Eastman Kodak Co., 275 the District Court for the District of Delaware found that the language and context 266. See, e.g., Affinion Net Patents, Inc. v. Maritz, Inc., 440 F. Supp. 2d 354, 356 (D. Del. 2006); Computer Assocs. Int’l, Inc. v. Simple.com, Inc., No. 02 Civ 2748 (DRH) (MLO), 2006 U.S. Dist. LEXIS 77077, at *12–14 (E.D. N.Y. Oct. 20, 2006); 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); Beck Sys., Inc. v. Managesoft Corp., No. 05 C 2036, 2006 U.S. Dist. LEXIS 53963, at *15–18 (N.D. Ill. July 14, 2006). 267. 243 F. Supp. 2d 418 (M.D. N.C. 2003); See, e.g., Computer Assocs., 2006 U.S. Dist. LEXIS 77077, at *13; Informatica, 2006 U.S. Dist. LEXIS 58976, at *6–7; Beck, 2006 U.S. Dist. LEXIS 53963, at *16 n.1. 268. Akeva, 243 F. Supp. 2d at 423. 269. See Computer Assocs., 2006 U.S. Dist. LEXIS 77077, at *13. 270. See id. at *13–14. 271. In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1304 (Fed. Cir. 2006). 272. Computer Assocs., 2006 U.S. Dist. LEXIS 77077, at *13; see also Lifenet, Inc. v. Musculoskeletal Transplant Found., Inc., 490 F. Supp. 2d 681, 688 (E.D. Va. 2007). 273. Computer Assocs., 2006 U.S. Dist. LEXIS 77077, at *14; see also Lifenet, 490 F. Supp. 2d at 689. 274. Computer Assocs., 2006 U.S. Dist. LEXIS 77077, at *7–8, *13–14. 275. No. 04-1373–KAJ, 2006 U.S. Dist. LEXIS 48702 (D. Del. July 17, 2006).
Page 1 and 2: BELDEN - FINAL 11/29/2007 4:08 PM N
Page 3 and 4: BELDEN - FINAL 11/29/2007 4:08 PM 2
Page 29: BELDEN - FINAL 11/29/2007 4:08 PM 2
Page 43: BELDEN - FINAL 11/29/2007 4:08 PM 2

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

You also want an ePaper? Increase the reach of your titles

Delete template?

Save as template?