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

More documents

Recommendations

Info

BELDEN - FINAL 11/29/2007 4:08 PM 970 WISCONSIN LAW REVIEW infringer’s state of mind regarding its reliance on the advice of counsel. A broad construction of the waiver as it relates to a particular issue may be justified if it is reasonably necessary to protect against “sword-andshield” 323 tactics by the alleged infringer. In applying the balancing test, courts should determine whether the additional benefit of fairness to the plaintiff resulting from the broader construction of waiver would outweigh the added interference with the attorney-client relationship. Extending the waiver to include all possible defenses to infringement would provide little, if any, additional fairness to the plaintiff. As the court noted in Autobytel, Inc. v. Dealix Corp., the focus of the willfulness inquiry is on the alleged infringer’s state of mind regarding its reasonable reliance on the opinion of counsel. 324 Therefore, information about the alleged infringer’s state of mind regarding defenses not referenced in the underlying opinion would have little, if any, utility in the willfulness inquiry. 325 Allowing discovery of communications and work product relating to all possible infringement defenses would not prevent the alleged infringer from using advice of counsel as “both a sword and a shield.” 326 Rather, such a broad scope of waiver would serve to take away the alleged infringer’s shield for defenses that it does not use as a sword. Whatever limited benefit of fairness the plaintiff receives by broadening the waiver to include all defenses is outweighed by the interests of protecting the alleged infringer’s attorney-client relationship. Therefore, the balancing test favors a scope of waiver limited to those defenses referenced in the underlying opinion. Perhaps an example best illustrates the appropriateness of limiting the waiver to defenses referenced in the underlying opinion: Widget World owns a patent on a particular type of widget. American Widgets develops its own type of widget. After learning of Widget World’s patent, American Widgets obtains advice from its outside patent counsel, who informs American Widgets that it does not believe American Widgets’ widget infringes Widget World’s patent. Widget World sues for willful patent infringement, and American Widgets responds by claiming that it relied on the advice of counsel that its widget did not infringe Widget World’s patent. In this example, any advice American Widgets obtained regarding noninfringement would fall within the scope of waiver because it would be relevant to the reasonableness of American Widgets’ belief that its 323. EchoStar, 448 F.3d at 1302. 324. Autobytel, Inc. v. Dealix Corp., 455 F. Supp. 2d 569, 572 (E.D. Tex. 2006). 325. Id. 326. EchoStar, 448 F.3d at 1301.
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 971 widget did not infringe Widget World’s patent. But what benefit would come from finding the waiver to include advice of counsel regarding the validity or enforceability of Widget World’s patent? American Widgets does not claim that it continued to produce its widgets because it believed Widget World’s patent was invalid or unenforceable. If that were American Widgets’ position, then the waiver would appropriately extend to the defenses of validity and enforceability. Instead, American Widgets claims it continued to produce its widgets only because it believed its widgets did not infringe Widget World’s patent, regardless of its validity or enforceability. Even if American Widgets did receive advice of counsel that Widget World’s patent was both valid and enforceable, this advice would be irrelevant to American Widgets’ belief that its widget did not infringe the patent. Therefore, extending the waiver to include validity and enforceability in this case would unnecessarily interfere with American Widgets’ relationship with its outside patent counsel, and the waiver should be limited to noninfringement. B. The Scope of Waiver Should Not Include Communications and Work Product of Trial Counsel The Federal Circuit in Seagate was correct in holding that the waiver should not extend to communications and work product of trial counsel. As the court noted, the relationship between a trial attorney and client is unique from that of other attorney-client relationships. 327 A trial attorney is charged with the task of coordinating and executing the litigation efforts of the client, and therefore much of the attorney-client communications and work product of a trial attorney reflect complex litigation strategies and theories regarding how best to approach certain aspects of the case. 328 Furthermore, unlike opinion counsel, trial counsel serves the role of a biased advocate in the adversarial judicial process. 329 It is especially crucial for trial counsel to be able to have frank and open communications with the client as well as document thoughts and legal strategies. Therefore, this relationship presents unique challenges to courts attempting to construe properly the scope of waiver. Because of the special nature of this relationship, application of the same broad waiver that is applied to opinion counsel is inappropriate. 327. See In re Seagate Tech., LLC, No. 06-M830, slip op. at 15 (Fed. Cir. Aug. 20, 2007); Genentech, Inc. v. Insmed Inc., 442 F. Supp. 2d 838, 844–45 (N.D. Cal. 2006). 328. See Genentech, 442 F. Supp. 2d at 846. 329. See Seagate, No. 06-M830, slip op. at 15.
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 37: 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?