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

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BELDEN - FINAL 11/29/2007 4:08 PM 964 WISCONSIN LAW REVIEW of the EchoStar opinion indicated that the Federal Circuit intended the scope of waiver of attorney-client privilege to include only communications expressed in a manner similar to that of the underlying opinion. 276 Advice of trial counsel exhibits a character different from the advice of opinion counsel upon which an alleged infringer relies. 277 Furthermore, the court stressed that if all attorney-client communications on the same subject were viewed as “advice” or “opinions” the practical significance of the attorney-client privilege would be destroyed. 278 Such a weakening of the attorney-client privilege is at odds with comments of the Federal Circuit in recent decisions. 279 Still other district courts have attempted to craft an intermediate approach, finding that the waiver extends to communications and work product of trial counsel, but limiting the scope of the waiver. These courts have found that EchoStar is factually incompatible with the issue of extension of the waiver to trial counsel, and therefore by itself is inconclusive on the issue. 280 Without clearly controlling law, these courts have crafted their own intermediate test, finding the waiver extends only to communications and communicated work product of trial counsel that contain “conclusions or advice that contradict or cast doubt on the earlier opinions.” 281 This intermediate approach considers both the need for discovery to avoid “sword-and-shield” tactics and the policies favoring both the attorney-client privilege and work-product doctrine. 282 Thus, it is consistent with EchoStar. 283 The District Court for the Northern District of California crafted a different intermediate approach in Genentech, Inc. v. Insmed Inc. 284 The court found the intermediate approach taken by other courts, extending waiver only to contradictory or doubt-casting communications and work product of trial counsel, to have significant 276. Id. at *8–9. 277. See id. at *9–10. 278. Id. at *10. 279. Id. (citing In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1300–01 (Fed. Cir. 2006)); Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1343–44 (Fed. Cir. 2004)). 280. See Intex Recreation Corp. v. Team Worldwide Corp., 439 F. Supp. 2d 46, 52 (D. D.C. 2006); Ind. Mills & Mfg., Inc. v. Dorel Indus., Inc., No. 1:04-cv- 01102-LJM-WTL, 2006 U.S. Dist. LEXIS 34023, at *19–20 (S.D. Ind. May 26, 2006). 281. Intex, 439 F. Supp. 2d at 52. 282. Dorel, 2006 U.S. Dist. LEXIS 34023, at *14–15. 283. Id. at *20. 284. 442 F. Supp. 2d 838 (N.D. Cal. 2006).
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 965 practical problems. 285 Instead, the court held the scope of waiver to include “documents and communications that contain opinions (formal or informal) and advice central and highly material” to the subject matter of the opinion of counsel upon which the alleged infringer relies. 286 The court reasoned that this approach would exclude most low-level documents and communications regarding trial strategy from the waiver while still allowing the plaintiff discovery of opinions and advice of trial counsel relevant to the willfulness inquiry. 287 The District Court for the Eastern District of Missouri created yet another intermediate approach in Iridex Corp. v. Synergetics, Inc., 288 holding that the waiver extends to trial counsel except for opinions given solely to evaluate settlement options. 289 The court noted that although its approach may be inconsistent with other district court decisions, nothing in EchoStar expressly prohibited such an approach. 290 Furthermore, the court found its approach appropriate in light of the public policy favoring the compromise and settlement of disputes. 291 (ii) In re Seagate Technology, LLC: The Federal Circuit Weighs In Again In light of the widespread confusion in the district courts exhibited by these many differing approaches, the Federal Circuit chose to address en banc whether the waiver extends to trial counsel in In re Seagate Technology, LLC. 292 In Seagate, Convolve, Inc., and the Massachusetts Institute of Technology sued Seagate Technology, LLC, for willful patent infringement. 293 Seagate retained outside counsel to provide opinions concerning the patents in question prior to the lawsuit but did not receive any opinions until after Convolve and MIT filed the complaint. 294 Seagate announced that it intended to raise the advice-of- 285. The court expressed skepticism regarding a trial attorney’s ability to accurately judge what contradicts or casts doubt on the underlying opinion while simultaneously advocating for the client. Id. at 846. Furthermore, the court questioned what would constitute doubt sufficient to make disclosure necessary. Id. 286. Id. at 847. 287. Id. 288. No. 4:05CV1916 CDP, 2007 U.S. Dist. LEXIS 7747 (E.D. Mo. Feb. 2, 2007). 289. Id. at *3–4. 290. Id. at *4. 291. Id. 292. No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007). 293. Id. at 2. 294. Id.
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