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

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BELDEN - FINAL 11/29/2007 4:08 PM 966 WISCONSIN LAW REVIEW counsel defense based on the opinions it obtained from its outside counsel. 295 Convolve responded by moving for the district court to compel discovery of all communications and work product of Seagate’s other counsel, including its trial counsel. 296 The district court granted the motion, holding that Seagate waived attorney-client privilege and work-product protection for any counsel, including trial counsel, concerning the subject matter of the outside counsel opinions. 297 The court held that the temporal scope of the waiver extended from when Seagate first obtained knowledge of the patents in question to whenever the alleged infringement ceased. 298 The court allowed for in camera review of documents reflecting trial strategy but noted that it would order disclosure of any trial counsel advice that affected the reasonableness of relying on the outside counsel opinions. 299 After the district court refused to certify an interlocutory appeal, Seagate petitioned the Federal Circuit for a writ of mandamus to stop disclosure of communications and work product of its trial counsel. 300 The Federal Circuit asked the parties to argue whether or not the waiver of both attorney-client privilege and work-product protection should extend to trial counsel. 301 Several third-party organizations, perhaps most notably the American Bar Association and the American Intellectual Property Law Association, submitted amicus briefs in support of Seagate’s petition arguing that trial counsel should be immune from waiver of attorney-client privilege and work-product protection. 302 295. Id. at 3. 296. Id. 297. Id. at 3–4. 298. Id. 299. Id. at 4. 300. Id. 301. Id. at 1. The Federal Circuit also asked the parties to address whether it should revise or eliminate the duty-of-due-care standard under which an alleged infringer with notice of another’s patent rights has an affirmative duty to investigate whether it infringes those rights altogether. Id. While this could potentially have a significant impact on the waiver issues presented in this Note, this duty-of-due-care question is not discussed. 302. Brief for Am. Bar Assoc. as Amicus Curiae in Support of Petitioner, In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007), available at http://www.abanet.org/intelprop/Seagate-brief.pdf; Brief for Amicus Curiae Am. Intellectual Prop. Law Assoc. in Support of Petitioner, In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007), available at http://www.aipla.org/ Content/ContentGroups/Issues_and_Advocacy/Amicus_Briefs1/20079/AIPLASeagatebr f.pdf; see also Brief of Amicus Curiae, Biotechnology Indus. Org., in Support of Petitioner, In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20,
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 967 The Federal Circuit agreed, holding that the waiver generally does not extend to trial counsel for either attorney-client privilege or workproduct protection. 303 The court began by noting that the purpose of the waiver is fairness; that is, the waiver is intended to prevent an alleged infringer from using the privilege as both a “sword and a shield.” 304 According to the court, the function of trial counsel in the legal system has a significantly different nature than that of opinion counsel. 305 Opinion counsel serves an objective role, providing opinions upon which the client bases its business decisions. 306 Trial counsel, on the other hand, serves a decidedly subjective role, coordinating litigation strategy and advocating for the client in the adversarial judicial process. 307 The court stated that because of the fundamental difference between the two roles and the type of advice each imparts to the client, the client’s relationship with trial counsel does not present the same “sword and shield” concerns as its relationship with opinion counsel. 308 Therefore, the balance of fairness does not favor extending the waiver to communications and work product of trial counsel. 309 Furthermore, the court noted that under ordinary circumstances, willfulness will depend largely on an alleged infringer’s prelitigation conduct. 310 Accordingly, the court found that communications and work product of trial counsel have little, if any, relevance to the willfulness inquiry. 311 The court also advised that if an alleged infringer’s postfiling 2007), available at http://bio.org/ip/amicus/Seagate.pdf; Brief of Intellectual Prop. Owners Assoc. as Amicus Curiae in Support of Petitioner, In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007), available at http://www.ipo.org/ AM/Template.cfm?Section=Home&TEMPLATE=/CM/ContentDisplay.cfm&CONTE NTID=14227. 303. In re Seagate Tech., LLC, No. 06-M830, slip op. at 18, 21 (Fed. Cir. Aug. 20, 2007). The court addressed the waiver of attorney-client privilege and workproduct protection separately but noted that the rationale for limiting the waiver of both is the same. Id. at 15–21. 304. Id. at 14. 305. Id. at 15. 306. Id. 307. Id. 308. Id. 309. Id. 310. Id. at 16. The court reasoned that, at the time of filing a complaint, a plaintiff must have a good faith basis for alleging willfulness; therefore, a willfulness claim included in the original complaint must be based upon the defendant’s prefiling conduct. Id. 311. Id. at 18.
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