In re Seagate questions the scope of privilege and work-product waiver associated with an opinion-of-counsel defense to willfulness. In a new article, Joseph Casino and Michael Kasdan attempt to re-focus the debate by arguing for a "temporal limitation on the scope of waiver which is not hinged on retaining separate [opinion and litigation] counsel." In addition, the article delves further into the CAFC’s Quantum dicta, which encourages bifurcation of trials for liability and willfulness issues.
In In re Seagate Technology, L.L.C., the en banc Federal Circuit has the opportunity (and, it seems, the desire) to squarely address the troubling issues that have arisen in connection with the doctrine of willfulness. The manner in which the Court resolves these issues could have far-reaching impact on accused infringers’ practice of obtaining opinions of counsel and on their practical ability to rely on these opinions to defend against a charge of willful infringement without exposing their ongoing communications with and the work-product of their trial counsel.
The Federal Circuit should adopt a waiver doctrine that encourages the procurement and reliance upon opinions of counsel when one becomes aware of a pre-suit infringement assertion. In such cases, the solution of adopting a temporal cut-off to the waiver of attorney work-product and communications that occur after the litigation has been initiated strikes the proper balance for both patentees and accused infringers. However, it would be a mistake to seek a similar result by creating a bright-line rule that depends on the use of separate trial and opinion counsel to insulate post-litigation communications with counsel from discovery. Further, mandating bifurcation of willfulness issues until after a determination of liability would ease waiver concerns no matter what waiver framework is adopted by the Federal Circuit.
Read the article: [HTML] [PDF]. Preferred Citation: Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1, https://patentlyo.com/lawjournal/2007/05/in_re_seagate_t.html.
The temporal scope of limitation to pre-filing is an enticing one, but not a useful one. First, if trial counsel changes the advice/opinion that the client receives, then this is significant for a willfulness analysis. Indeed, it can be devestating evidence if the infringement continues. Second, if the accused infringer is only made aware of the patent with the filing of the complaint, then post-filing opinions are the only ones available. Attempting to limit the scope of waiver based upon one factor, such as temporal scope, unbalances the waiver equation. So many other factors complete the analysis that putting one’s finger on the scale at a singular point disrupts the analysis.
As for Mark Lemley’s question about written opinions saying the client infringes, the answer is yes. They are out there. Written by attorneys who know no better. The oral ones are discoverable as well, assuming privilege is waived.
The various factors include trial versus opinion counsel, work product versus attorney client privilege, all versus some advice, competent versus incompetent advice, in-house versus outside counsel, reliance versus non-reliance, waiver versus non-waiver, who at the client recieved it, and when the advice is given – to name just a few.
This is not a new idea. With the exception of a discussion of EchoStar and Seagate, this article has basically been preempted for over 10 years. 19 Hastings Comm/Ent L.J. 949.
Well, that is true for large entities, but sometimes you get smaller players that can’t afford a design around to get an opinion of counsel and then just infringe like crazy in hopes they won’t get on the radar and get sued, or the hope that the patent holder won’t “risk” the patent against a small player.
Lionel is correct. It is good business to design around a competitor’s claim. It is far too expensive to invest in tooling and production infrastructure to manufacture and sell a product that has a reasonable chance of infringing the rights of others. In that sense, the patent system works as intended, i.e. it fosters innovation, albeit it grudgingly. Often the “forced” alternative solution is better and patentable itself. And so the cycle continues….
Mark,
Of course they don’t. An opinion such as that would ususally be given orally. And it’s been my experience that corporate entities change their design if they have been told that a third party might have a colorable claim against them.
I agree that bifurcation and a cutoff on the waiver of privilege will ameliorate some of the problems with the current Echostar framework. But they don’t eliminate all the problems with the opinion of counsel approach, which still looks to me like a game, rather than real legal advice. [Has anyone ever received a written opinion of counsel telling them they infringe a valid patent, so they’d better stop?]
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