Kilpatrick Townsend’s Privilege Waiver Adventure

Dennis has written up a nice post about Wi-Lan, Inc. v. LG Elec., Inc. (Fed. CIr. 2012), available here.  Boiled down, in an effort to negotiate a settlement, Wi-Lan forwarded a letter to the accused infringer that had originally been sent to the patentee by its lawyers, laying out why there was infringement.  Once litigaition ensued, the accused infringer argued that privilege had been waived. 

My question is:  why on earth did the letter get forwarded?  Why didn't they just copy the text into a "here's why you infringe" letter, and avoid the whole thing?


About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

7 thoughts on “Kilpatrick Townsend’s Privilege Waiver Adventure

  1. 7

    Context matters, doesn’t it?

    I remember going through a similar scenario years ago, and the lawyer wanting to forward the privileged letter, and I just said to cut and paste it into a letter to them, and avoid the problem. It sounds like the firm did the right thing with the client — warning not to forward — but the client forwarded anyway, then the firm got cross-wise with the contempt order.

    Dickens was right.

  2. 6

    As in-house patent counsel for a state entity, I don’t have much in the way of privilege due to my state’s liberal FOIA. Forwarding my outside counsel’s advice on issues such as sovereign immunity and state-entity licensing practices to third parties can be an efficient way of establishing that my position is indeed credible and I’m not making it up. (My nearly 20 years of experience sometimes doesn’t count for much since I’m now a government hack.) Heck, I’ve actually drafted letters for my outside counsel to send to me in support of my position so I can send them to others. (That said, I haven’t shared an opinion on something substantive like infringement.)

  3. 5

    Thanks for that! I’ve also had similar issues occur over the years. I guess if you don’t grasp the notion of subject matter waiver, etc., it may not be apparent.

  4. 4

    @EasyJ – Agreed. After 30+ years working in-house, I wish that I had a dollar for every time one of my clients had forwarded a memo of mine to the other side or the other side had forwarded their attorney’s memo to my client. It doesn’t matter how many training presentations I make or how big and boldface I make the “Attorney-Client Privileged Communication Do Not Forward” legend. They do it anyway. Once someone does and I find out, however, he or she never does it again after hearing from management and me. I must admit, however, that I have never had this happen in the context of whether there is infringement because I don’t let my clients even discuss that topic with the other side and the same has been true for other companies with whom I have negotiated.

  5. 1

    ‘Cause an overpaid first-year associate drafted the letter to the infringer and the partner who was supposed to be supervising had less than an hour before tee time?

Comments are closed.