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

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BELDEN - FINAL 11/29/2007 4:08 PM 972 WISCONSIN LAW REVIEW The need to protect the attorney-client relationship and the policies favoring the attorney-client privilege and work-product doctrine are particularly strong with respect to trial counsel. An unduly broad waiver of attorney-client communications and work product of trial counsel can lead to devastating results for a defendant. While attorneys may redact material, 330 advice regarding defenses and trial strategy may be so intermingled that redaction may fail to save key trial strategy from disclosure. More importantly, for trial counsel to be an effective advocate, trial counsel must be free to discuss the details and likelihood of success regarding infringement defenses without fear of harming the client’s case. Therefore, the marginally increased ability to protect against unfair litigation tactics by the defendant does not balance the encroachment that such a broad waiver would make upon the unique relationship between trial counsel and client. Proponents of a broad extension of the waiver to trial counsel argue that this encroachment is acceptable because the alleged infringer can choose not to raise the defense. 331 However, because the advice-ofcounsel defense is often the most effective defense against a finding of willfulness, this may not be much of a choice. Accordingly, alleged infringers may still routinely choose to assert the advice-of-counsel defense regardless of the broad trial counsel waiver. Instead, the practical effect of a broad waiver would likely be to discourage trial counsel from documenting important thoughts, ideas, and communications with the client because they would all potentially be discoverable. Thus, this approach would severely impede upon defense counsel’s ability to serve his or her client without appreciably increasing the fairness to the plaintiff. The limited waivers applied in Iridex, Genentech, Intex, and Dorel are similarly inappropriate solutions. On their face, these solutions appear to balance the policies favoring the attorney-client privilege and work-product doctrine with fairness to the plaintiff. However, these solutions are largely unworkable. The Iridex court’s limited waiver, excluding opinions given “solely for the purpose of evaluating settlement options,” 332 is inefficient and impractical. There is no feasible way to determine whether a defendant obtained advice solely to evaluate settlement options or for some other purpose. Conceivably, all advice received by the defendant is obtained to evaluate options. This construction of the scope of waiver would require courts to painstakingly evaluate the 330. EchoStar, 448 F.3d. at 1304. 331. See supra note 273 and accompanying text. 332. Iridex Corp. v. Synergetics, Inc., No. 4:05CV1916 CDP, 2007 U.S. Dist. LEXIS 7747, at *4 (E.D. Mo. Feb. 2, 2007).
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 973 defendant’s subjective intent in obtaining advice and thus would be very inefficient. Furthermore, the highly subjective nature of this approach would make it difficult for trial attorneys and clients to predict the communications and work product to which the waiver would extend in any given case. The Genentech solution, limiting waiver to advice “central and highly material” 333 to the subject matter of the underlying opinion, and the Intex and Dorel solutions, limiting waiver to advice which contradicts or casts doubt on the underlying opinion, are also unworkable solutions, albeit somewhat more practical than the Iridex approach. These standards could be more easily applied than the Iridex standard because they are not based on the defendant’s intent. These solutions are also highly subjective, however, and therefore would spark a great deal of contention between the parties regarding whether advice is “central and highly material” 334 to the subject matter of the underlying opinion or contradicts or casts doubt on the opinion. It would be very difficult, if not impossible, for a trial attorney to simultaneously fulfill his or her duty as a zealous advocate for the client and accurately and objectively classify work product into one of these categories. As a result, the court would be forced to review many communications and work product of trial counsel in camera to determine if they are highly material, somewhat material, or truly contradict or cast doubt on the underlying opinion. Furthermore, because it is unclear what the threshold would be to consider communications or work product “highly” material, or to contradict or cast doubt, these solutions would again be highly unpredictable for trial attorneys and clients. Accordingly, these solutions would be very costly and inefficient for both alleged infringers and to the system as a whole. Additionally, and perhaps more importantly, these solutions still fail to account properly for the necessity for trial counsel to freely discuss potential defenses with his or her client. By focusing on the reasoning that guided its holding in EchoStar, the Federal Circuit properly concluded that the scope of waiver should not extend to trial counsel. 335 The court immediately focused its discussion on the fact that the waiver is intended to promote fairness and protect against sword-and-shield tactics by the alleged infringer. 336 The court recognized that because of the special nature of trial counsel, the danger of such sword-and-shield tactics was significantly lower than 333. 442 F. Supp. 2d at 847. 334. Id. 335. In re Seagate Tech., LLC, No. 06-M830, slip op. (Fed. Cir. Aug. 20, 2007). 336. Id. at 14.
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