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

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BELDEN - FINAL 11/29/2007 4:08 PM 974 WISCONSIN LAW REVIEW in the case of opinion counsel. 337 Furthermore, the court appropriately acknowledged that public policy favoring the attorney-client privilege and work-product doctrine is particularly strong with respect to trial counsel because trial counsel’s effectiveness as a zealous advocate is crucial to the operation of the adversarial system of justice. 338 Consequently, the court properly determined that the balance of fairness generally advised against extending the waiver to communications and work product of trial counsel. 339 One concerning aspect of the Seagate opinion, however, is that the court clearly and unambiguously left the door open for district courts to extend the waiver to trial counsel in “unique circumstances.” 340 One of the significant benefits of a bright-line rule that the waiver does not extend to trial counsel is that it is predictable. Under a bright-line rule, alleged infringers know exactly what to expect if they choose to assert the advice-of-counsel defense. The Federal Circuit’s “unique circumstances” instruction to the district courts could potentially lead to more unpredictability if the district courts take it to heart. Despite its two solid attempts at clarifying the scope of waiver in EchoStar and Seagate, the Federal Circuit may very well find itself needing to revisit the waiver issue to define what qualifies as “unique circumstances.” V. CONCLUSION EchoStar is an excellent tool for district courts attempting to construe the scope of waiver properly, as well as for attorneys hoping to predict how broad the scope of waiver will be upon assertion of the advice-of-counsel defense. Its reliance on fundamental policy factors in its balancing test makes it highly adaptable to the many different situations that arise in willful-patent-infringement cases. Furthermore, it provides a three-category framework that greatly simplifies the determination of the appropriate scope of waiver of work-product protection. The EchoStar decision serves to illuminate substantially an area of patent law that previously had been frustratingly unclear. Yet despite EchoStar’s contribution to the scope of work-product waiver, two questions remain unclear in district court decisions subsequent to EchoStar: (1) whether the waiver extends to all possible defenses to patent infringement or only those addressed in the formal opinion on which the alleged infringer relies; and (2) whether the 337. Id. at 15. 338. Id. at 16. 339. Id. at 18, 21. 340. Id. at 18.
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 975 waiver extends to trial counsel. These questions have produced enough significant confusion in the district courts to warrant additional attention from the Federal Circuit. The second question, whether the waiver extends to trial counsel, has already received such attention in the Federal Circuit’s Seagate opinion. In Seagate, the Federal Circuit held that the waiver of attorney-client privilege and work-product protection should not extend to trial counsel. 341 Seagate stands as an excellent example of how a court can utilize the policies and balancing test underlying EchoStar to come to an appropriate solution when a waiver issue does not neatly fit in the EchoStar framework. When the same reasoning applied in EchoStar and Seagate is applied to the first question, courts should conclude that the waiver applies only to the defenses referenced in the underlying opinion and not to all three infringement defenses. If the district courts focus on the policy concerns and balancing test utilized in EchoStar and Seagate, they should be able to successfully navigate practically any waiver issues that may arise in the future. 341. Id. at 18, 21.
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note a guide to waiver after echostar and seagate - UW Law School

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