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

More documents

Recommendations

Info

BELDEN - FINAL 11/29/2007 4:08 PM 968 WISCONSIN LAW REVIEW conduct is reckless, a preliminary injunction will typically be an available remedy for a patentee. 312 In light of the above factors, the court held that asserting the advice-of-counsel defense generally does not affect a waiver of attorney-client privilege and work-product protection with respect to trial counsel. 313 However, the court was careful to note that it was not imposing an absolute rule. 314 Rather, the court instructed that the district courts, at their discretion, should feel free to extend waiver to trial counsel in unique circumstances. 315 IV. APPLICATION OF THE ECHOSTAR REASONING TO THE TWO QUESTIONS As previously mentioned, the two issues cited above 316 have caused a great deal of confusion in the district courts. Much of this confusion is attributable to the fact that the issues do not fit neatly into the threecategory framework the Federal Circuit provided in EchoStar. 317 Because the framework does not clearly address the issues, many of the district courts have proceeded to pick individual phrases and cases out of the EchoStar opinion to justify their various holdings on the two issues. 318 This practice of focusing on details spread throughout the opinion is largely responsible for the wide variety of approaches that the district courts have employed subsequent to EchoStar. 312. Id. at 17. It should be noted that “recklessness” now must also be shown in order to establish willfulness under the Federal Circuit’s new standard. See id. 313. Id. at 18, 21. 314. Id. 315. Id. According to the court, an instance where a party or counsel engages in chicanery is an example of a unique circumstance. Id. 316. See supra Parts III.D.2.a (discussing the issue of whether the waiver extends to all possible defenses or only those referenced in the underlying opinion) and III.D.2.b (discussing the issue of whether the waiver extends to trial counsel). 317. See, e.g., 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). 318. See, e.g., Intex, 439 F. Supp. 2d at 50; Outside The Box Innovations, LLC v. Travel Caddy, Inc., 455 F. Supp. 2d 1374, 1377 (N.D. Ga. 2006); Computer Assocs. Int’l, Inc. v. Simple.com, Inc., No. 02 Civ. 2748 (DRH) (MLO), 2006 U.S. Dist. LEXIS 77077, at *13 (E.D. N.Y. Oct. 20, 2006); Informatica Corp. v. Bus. Objects Data Integration, 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 *16 n.1 (N.D. Ill. July 14, 2006).
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 969 However, the Federal Circuit anticipated that issues would arise that would not fit neatly into the EchoStar framework. 319 District courts should not view the framework as an all-encompassing solution to all possible scope-of-waiver issues. Rather, they should see the framework as a tool for simplifying the balancing test described in EchoStar. When an issue does not fit into the framework, district courts should balance the policies favoring protection of the attorney-client relationship with the policies to prevent “sword-and-shield litigation tactics.” 320 Furthermore, district courts should be mindful that the willfulness inquiry focuses on the “infringer’s state of mind” regarding the opinion upon which he relies. 321 By focusing on these conceptual building blocks of EchoStar, district courts can identify appropriate solutions for both of the issues as well as for most other scope-of-waiver issues that the courts will face in the future. Section A analyzes the as-yet-unresolved question of whether the waiver should include all three defenses to infringement or only those referenced in the underlying opinion. Section B examines the Federal Circuit’s resolution of the second question—whether the waiver should extend to trial counsel in Seagate—and evaluates the appropriateness of the Federal Circuit’s approach. A. The Scope of Waiver Should Include Only Those Defenses Referenced in the Opinion on Which the Alleged Infringer Relies By properly applying the reasoning of EchoStar, courts should conclude that the scope of waiver is limited to the defenses referenced in the underlying opinion and does not extend to all possible defenses. The Federal Circuit, particularly as of late, has expressed high regard for the policies favoring the attorney-client privilege and work-product doctrine. 322 Courts should therefore not broaden the scope of waiver lightly, as doing so necessarily infringes upon the sanctity of the attorney-client relationship. Whether or not a broad scope of waiver is justified depends upon its necessity to ensure fairness for the plaintiff— allowing the plaintiff to evaluate all information about the alleged 319. In re EchoStar Commc’ns Corp., 448 F.3d 1294, 1302 n.3 (Fed. Cir. 2006) (“We by no means anticipate that all work product in every case will fit into one of these three categories.”). 320. See id. at 1302. 321. Id. at 1303. 322. See id. at 1300–01; In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007); Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1344–45 (Fed. Cir. 2004).
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 35: 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?