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

More documents

Recommendations

Info

BELDEN - FINAL 11/29/2007 4:08 PM 940 WISCONSIN LAW REVIEW 2. THE WORK-PRODUCT DOCTRINE Like the attorney-client privilege, the work-product doctrine has become one of the fundamental doctrines of the current American legal system, despite its relatively short history in American law. 60 The Supreme Court first recognized work-product protection in 1947 in Hickman v. Taylor, 61 and the Federal Rules of Civil Procedure have since codified it. 62 The work-product doctrine protects the “mental impressions, conclusions, opinions, or legal theories” of an attorney from unnecessary discovery by another party. 63 Such work may be reflected “in interviews, statements, memoranda, correspondence, briefs, mental impressions, personal beliefs, and countless other tangible and intangible ways.” 64 However, work-product protection is not absolute; there are exceptions under which opposing parties can gain access to work product despite the work-product doctrine. 65 Even when discovery is ordered under such exceptions, courts are careful to protect the attorney’s thoughts from discovery. 66 Like the attorney-client privilege, the work-product doctrine is supported by strong policy justifications that are central to the operation of the judicial system. 67 In order for an attorney to work effectively and properly represent a client, it is necessary for the attorney to “work with a certain degree of privacy, free from unnecessary intrusion by opposing parties and their counsel.” 68 Without work-product protection, 60. See EPSTEIN, supra note 10, at 480–81. 61. 329 U.S. 495 (1947). 62. See FED. R. CIV. P. 26(b)(3). It is important to note that the codified rule protects from discovery only documents and tangible things. See EPSTEIN, supra note 10, at 481. Therefore, courts still consider Hickman the standard for evaluating types of intangible work product not covered by the codified rule. See id. Furthermore, courts frequently utilize the principles outlined in Hickman to interpret the codified rule. Id. 63. FED. R. CIV. P. 26(b)(3). 64. Hickman, 329 U.S. at 511. 65. See id. (“Where relevant and non-privileged facts remain hidden in an attorney’s file and where production of those facts is essential to the preparation of one’s case, discovery may properly be had.”); FED. R. CIV. P. 26(b)(3) (specifying that the court can order discovery of an attorney’s work product “only upon a showing that the party seeking discovery has substantial need of the materials in the preparation of the party’s case and that the party is unable without undue hardship to obtain the substantial equivalent of the materials by other means”). 66. See FED. R. CIV. P. 26(b)(3) (“In ordering discovery of such materials when the required showing has been made, the court shall protect against disclosure of the mental impressions, conclusions, opinions, or legal theories of an attorney or other representative of a party concerning the litigation.”). 67. See EPSTEIN, supra note 10, at 481. 68. Hickman, 329 U.S. at 510–11.
BELDEN - FINAL 11/29/2007 4:08 PM 2007:933 A Guide to Waiver After EchoStar and Seagate 941 an attorney’s written thoughts and strategies would become an open book for opponents to read freely upon mere demand. 69 Therefore, most attorneys would opt not to organize their thoughts into a written form at all to protect themselves and their clients. 70 Such a situation would be detrimental to attorneys’ performance, to their clients’ interests, and to the effectiveness of the judicial system as a whole. 71 3. WILLFUL PATENT INFRINGEMENT AND THE ADVICE-OF-COUNSEL DEFENSE A party is guilty of patent infringement when that party infringes upon another’s valid, enforceable patent rights. 72 The Patent Act defines infringement according to the rights conferred upon a patent holder. 73 Accordingly, section 271(a) provides that “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent.” 74 In addition to injunctive relief, patent holders can receive compensatory damages for infringement of the right to exclude the patent granted them, and the courts have frequently upheld significant compensatory damage awards. 75 If courts find willful infringement, they can choose at their discretion to award enhanced damages of up to three times the already substantial compensatory damages, as well as attorney’s fees. 76 In 69. Id. at 511. 70. Id. 71. Id. (“The effect on the legal profession would be demoralizing. And the interests of the clients and the cause of justice would be poorly served.”). 72. See 5 CHISUM, supra note 1, § 16.01. 73. Id. § 16.02. Section 154 of the Patent Act provides that a patent confers upon the holder the “right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” during the term of the patent. 35 U.S.C. § 154 (2000). 74. 35 U.S.C. § 271(a) (2000). Section 271(a) defines direct infringement. A party may also indirectly infringe patent rights by inducing or contributing to direct infringement by others. See 5 CHISUM, supra note 1, § 17.01 (citing 35 U.S.C. §§ 271(b), 271(c)). 75. See Dragseth, supra note 4, at 167 n.2 (citing a study of patent cases from 1982–94 which found that of cases in which damages were awarded, the award was at least $1 million in nearly half of the cases); PRICEWATERHOUSECOOPERS LLP, supra note 4, at 13, 15. 76. See Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992) (holding a finding of willfulness is sufficient to justify enhanced damages); Rohm & Haas Co. v. Crystal Chem. Co., 736 F.2d 688, 691 (Fed. Cir. 1984) (holding a finding of willfulness to justify granting attorney’s fees to the plaintiff); 35 U.S.C. § 284 (authorizing courts to award enhanced damages of up to three times the actual
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 7: 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?