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

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BELDEN - FINAL 11/29/2007 4:08 PM 938 WISCONSIN LAW REVIEW reveals, however, that some important questions remain unanswered in the wake of the decision. 44 Part II of this Note provides background helpful for the analysis of EchoStar, including a summary of precedent regarding the scope of waiver prior to EchoStar. Part III analyzes the EchoStar opinion as well as several recent district court opinions relying on EchoStar and identifies two primary questions that were not conclusively addressed in the decision: (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; 45 and (2) whether the waiver extends to trial counsel. 46 Part III also discusses In re Seagate Technology, LLC, 47 the Federal Circuit’s answer to the second question in which it held that the waiver generally does not extend to trial counsel. 48 Part IV attempts to properly resolve the unanswered first question and analyze the appropriateness of the Federal Circuit’s solution to the second question in Seagate by focusing on the reasoning of EchoStar. This Note concludes by suggesting that the district courts can properly solve the vast majority of future waiver issues by focusing on the policy concerns and balancing test of EchoStar. By focusing on these building blocks of EchoStar, the Federal Circuit appropriately held in Seagate that the waiver should not extend to trial counsel. 49 With respect to the unresolved first question, the district courts should follow the example set in Seagate and apply the EchoStar reasoning to conclude that the waiver should extend only to the defenses referenced in the underlying opinion rather than to all possible defenses. 44. See discussion infra Part III.D.2. 45. For example, if an alleged infringer relies upon counsel’s advice that the alleged infringer’s conduct does not infringe (i.e., a noninfringement opinion), it is unclear whether the waiver extends to all three possible defenses (invalidity, unenforceability, and noninfringement) or only to noninfringement. See infra Part III.D.2.a. 46. Trial counsel is involved in preparation for actual or potential litigation, as opposed to opinion counsel, who gives advice regarding potential infringement but is not involved in preparation for litigation. See In re Seagate Tech., LLC, No. 06-M830, slip op. at 15 (Fed. Cir. Aug. 20, 2007). 47. Id. 48. Id. at 18, 21. 49. Id.
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 939 II. BACKGROUND TO ECHOSTAR A. Legal Concepts Central to EchoStar 1. THE ATTORNEY-CLIENT PRIVILEGE The attorney-client privilege is one of the oldest and most important common-law doctrines recognized by the courts. 50 It protects confidential communications between attorneys and their clients by generally prohibiting discovery of such communications. 51 The privilege belongs to the client, not the attorney, and only the client has the authority to waive it. 52 The attorney, therefore, must assert the privilege in regard to confidential communications with the client unless the client permits disclosure. 53 Courts have long recognized the strong policy justifications behind the attorney-client privilege. 54 The attorney-client privilege is intended to “encourage full and frank communication between attorneys and their clients.” 55 Without the privilege, people might choose not to seek the advice of an attorney at all out of fear that their communications could be subject to discovery. 56 At best, clients would selectively withhold information from their attorneys in an effort to avoid disclosing information that could harm them in future litigation. 57 Without complete and honest disclosure on the part of clients, it is exceedingly difficult for attorneys to offer useful legal advice. 58 Such competent legal advice is considered essential to “promote broader public interests in the observance of law and administration of justice.” 59 50. See EPSTEIN, supra note 10, at 2. (“[The attorney-client privilege] was accepted as early as the reign of Elizabeth I.”). 51. See id. There are several exceptions to this rule (such as when the attorney is being sued by the client for malpractice) under which disclosure of confidential communications is allowed, see id., but for the purposes of this Note, this description will suffice. 52. Id. 53. Id. 54. See, e.g., Upjohn Co. v. United States, 449 U.S. 383 (1981); Fisher v. United States, 425 U.S. 391 (1976); Hunt v. Blackburn, 128 U.S. 464 (1888); United States v. United Shoe Mach. Corp., 89 F. Supp. 357 (D. Mass. 1950). 55. Upjohn, 449 U.S. at 389. 56. See United Shoe, 89 F. Supp. at 358 (“In a society as complicated in structure as ours and governed by laws as complex and detailed as those imposed upon us, expert legal advice is essential.”). 57. EPSTEIN, supra note 10, at 3. 58. See Hunt, 128 U.S. at 470. 59. Upjohn, 449 U.S. at 389.
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