This past summer the Federal Circuit, responding to a writ of mandamus, attempted to fix the quagmire nearly a quarter century in the making that started with Underwater Devices (1) and culminated most recently in In re Echostar. (2) In particular, the court sought to definitively determine the various consequences of an assertion of willful infringement by a patentee. Principally, should a party's assertion of an advice-of-counsel defense in response to a patentees contention of willful infringement extend waiver of the attorney-client privilege and work product immunity to communications with the defense's litigation counsel? (3)
Ironically, Echostar--which instigated the writ of mandamus--itself was an attempt by the Federal Circuit to resolve uncertainty surrounding the extent of a waiver of attorney-client privilege--subsequent to the disclosure of an attorney opinion letter as a defense to a willful infringement of a patent. Instead, Echostar led to greater confusion, particularly among the district courts.
A global analysis of waiver of privilege and immunity is beyond the scope of this Paper. What is of most concern to this author is only one of the questions addressed by the court: whether the production of an opinion letter not only waives privilege with regard to opinion counsel, but even encroaches on the work product immunity of an unaffiliated trial counsel. (4)
Those courts that allow for the aforementioned waiver to extend to trial counsel base their rulings on the concern that a determination of willfulness requires an understanding of the complete environment of the putative infringer, including the information that he or she is getting from his or her counsel. If an infringer uses counsel's advice implying that he or she was not infringing as a defense to willfulness, it stands to reason that the court should examine all of the potential opinions that he or she received relating to willfulness to ascertain the true mindset of the infringer, including those opinions of trial counsel. (5)
This expansive notion of waiver, adopted by numerous courts leading up to the Seagate decision is somewhat problematic. Not only does it chill frank discussion between a defendant and her lawyer, but it perversely incentivizes potential infringers to limit the scope and breadth of their understanding vis a vis the infringement at hand. The fewer attorneys involved in determining infringement, the better. The putative infringer is better off getting an opinion letter and never discussing the issue ever again even with other counsel for fear that their conversation and work product will become available to the patent holder. It also incentivizes patentees to claim willfulness on any occasion given the huge payoff it can provide: either the defendant provides a an opinion letter, opening up a treasure trove of formerly privileged documents, or the defendant chooses to retain her privilege and take her chances with the willfulness claim. If she loses she may be liable for treble damages.
This Comment outlines the basic issues of privilege and immunity, presents the history of uncertainty regarding waiver leading up to the recent Seagate decision, examines the potential outcome of the decision, and presents possible resolutions to further resolve the issue and more fully repair attorney-client privilege and immunity. One caveat, the ubiquitously inaccurate and inconsistent usage of the terminology related to privilege and immunity serves only to confuse the issue and the courts, and potentially this author. Establishing a consistent usage of the terms used in court cases and in the literature may be a start to reaching a clear, consistent, and fair rule.
I. ATTORNEY-CLIENT PRIVILEGE
Attorney-client privilege is an integral component of our adversarial legal system; despite its importance the bounds of the right continue to remain unclear. …