The Unpredictible Scope of the Waiver Resulting from the Advice-of-Councel Defense to Willful Patent Infringement

By Goff, Jared S. | Brigham Young University Law Review, January 1, 1998 | Go to article overview

The Unpredictible Scope of the Waiver Resulting from the Advice-of-Councel Defense to Willful Patent Infringement


Goff, Jared S., Brigham Young University Law Review


I. INTRODUCTION

In patent litigation, defendants typically face a dilemma when the complaint contains a claim of willful patent infringement. Often the best response a defendant has to this claim is that counsel advised the defendant that she was not infringing the plaintiff's patent. Raising the advice-of-counsel defense, though, makes certain information available to the plaintiff, which might otherwise be privileged.l The anticipation of this difficult position presents several choices beginning well before the plaintiff files the complaint and continuing through the discovery proceedings.2

Making the defendant's position even more difficult is the fact that in recent years, confusion has existed on the scope of the waiver of privileges resulting from the defendant asserting the advice-of-counsel defense to willful infringement. Some courts have limited the waiver to communications between the attorney and client,3 while other courts have extended the waiver to include material relied on by the attorney, such as the attorney's selection of prior-art patents, even if the attorney never communicated that material to the client.4 The disparate decisions add confusion to the defendant's already difficult decision of whether to assert the advice-of-counsel defense.5

This Comment analyzes the scope of the waiver of the attorney-client privilege and the work product protection resulting from the advice-of-counsel defense to willful infringement. Part II explains the willful infringement standard, details the difficult choices presented to the defendant, and discusses the district court cases dealing with the scope of the waiver. Part III.A details the policies underlying the work product doctrine, the attorney-client privilege, and the competing policies supporting the waiver of those privileges by asserting the advice-ofcounsel defense. Part III.B then balances the competing policies in light of the contradictory Federal Circuit standards for willful infringement. Part III.C discusses the need for certainty in this area of law. Part IV recommends that the Federal Circuit clarify the willful infringement standard, and that meanwhile the district courts base their opinions on certain existing Federal Circuit standards. Part V concludes that if the Federal Circuit and the district courts follow these recommendations, they will instill more certainty in the scope of the waiver and return meaning to the attorney-client privilege and the work product doctrine in this context.

II. BACKGROUND

A. Willful Infringement

The patent laws have the constitutionally mandated goal of "promot[ing] the Progress of Science and useful Arts."6 In doing so, the patent laws attempt to balance two conflicting means toward achieving that goal: (1) providing a reward for inventive activity and (2) allowing public access to ideas.7 The patent laws execute this balance by imposing a quid pro quo arrangement between the patentee and the public. The patentee receives the legal right to exclude others from making, using, selling, offering for sale, or importing the patented invention for twenty years from the patent filing date;8 the public receives an adequate disclosure of the invention,9 and at the end of the twenty years the invention enters the public domain.10

The law surrounding this arrangement between the patentee and the public has provided a means by which the patentee may gain the full effect of the bargain, by excluding others from exploiting the invention. If a patentee discovers someone making, using, selling, offering for sale, or importing the patented invention without authority to do so, she may exercise her right of exclusion by suing for patent infringement in a federal district court.ll The Court of Appeals for the Federal Circuit hears all patent appeals.12 If necessary, a litigant may then apply for a writ of certiorari in the United States Supreme Court-but because the Supreme Court rarely grants certiorari in patent cases, the Federal Circuit is essentially the court of last resort. …

The rest of this article is only available to active members of Questia

Sign up now for a free, 1-day trial and receive full access to:

  • Questia's entire collection
  • Automatic bibliography creation
  • More helpful research tools like notes, citations, and highlights
  • Ad-free environment

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Default project is now your active project.
Project items

Items saved from this article

This article has been saved
Highlights (0)
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

Citations (0)
Some of your citations are legacy items.

Any citation created before July 30, 2012 will labeled as a “Cited page.” New citations will be saved as cited passages, pages or articles.

We also added the ability to view new citations from your projects or the book or article where you created them.

Notes (0)
Bookmarks (0)

You have no saved items from this article

Project items include:
  • Saved book/article
  • Highlights
  • Quotes/citations
  • Notes
  • Bookmarks
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

1

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited article

The Unpredictible Scope of the Waiver Resulting from the Advice-of-Councel Defense to Willful Patent Infringement
Settings

Settings

Typeface
Text size Smaller Larger Reset View mode
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Full screen

matching results for page

Cited passage

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

"Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

"Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

"Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited passage

Welcome to the new Questia Reader

The Questia Reader has been updated to provide you with an even better online reading experience.  It is now 100% Responsive, which means you can read our books and articles on any sized device you wish.  All of your favorite tools like notes, highlights, and citations are still here, but the way you select text has been updated to be easier to use, especially on touchscreen devices.  Here's how:

1. Click or tap the first word you want to select.
2. Click or tap the last word you want to select.

OK, got it!

Thanks for trying Questia!

Please continue trying out our research tools, but please note, full functionality is available only to our active members.

Your work will be lost once you leave this Web page.

For full access in an ad-free environment, sign up now for a FREE, 1-day trial.

Already a member? Log in now.