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When the U.S. Court of Appeals for the Federal Circuit decided the case of In re EchoStar Communications Corp., 448 F.3d 1294 (Fed. Cir. 2006), last May, it provided clarification in an area of uncertainty concerning the proper scope of the waiver of the attorney-client privilege and work-product immunity in cases in which parties accused of patent infringement rely on opinions of counsel to defend against claims of willful infringement. Specifically, the EchoStar decision excluded certain categories of work product from the waiver-namely documents that reflect the opinion attorney’s mental impressions but were not provided or communicated to the client. In the months since EchoStar was decided, however, district courts applying the EchoStar decision have arrived at inconsistent rulings regarding two other aspects of the scope of the waiver. The first is whether the waiver extends to litigation counsel communications and work product. The second is whether the scope of the subject-matter waiver extends to all willfulness defenses-i.e., validity, enforceability and infringement-even when the subject matter of the underlying opinion relied upon by the accused infringer is limited only to a subset of those defenses (e.g., infringement only). In the EchoStar case, the defendant had obtained a noninfringement opinion from its in-house counsel before the case was filed. The defendant obtained additional legal advice from outside opinion counsel after the case was filed, but elected to rely solely on the in-house opinion to rebut the plaintiff’s willfulness claim. The district court held that, as a result of the defendant’s reliance on the in-house opinion, the defendant had waived the attorney-client privilege and work-product immunity as to the advice of any counsel regarding infringement, including the outside opinion counsel’s advice. The district court further ruled that the waiver extended to all work product, including the outside opinion counsel’s work product, regardless of whether such work product was provided or communicated to the defendant. In granting the outside counsel’s petition for a writ of mandamus to challenge the district court’s order, the Federal Circuit agreed with the district court that the waiver also applied to communications with outside opinion counsel relating to the same subject matter of the in-house counsel’s opinion that the defendant chose to rely upon. Regarding the work-product immunity, however, the Federal Circuit ruled that such immunity is waived only as to documents that inform the court of the infringer’s state of mind. Thus, the Federal Circuit held that documents that reflect the attorney’s mental impressions but were not provided or communicated to the client, or do not describe communications with the client, are not within the scope of the waiver. While the extent of the waiver as applied to work-product materials was clarified by the EchoStar decision, however, certain statements in the decision have led to inconsistent district court rulings regarding two other aspects of the waiver: whether the waiver extends to litigation counsel, and the scope of the subject-matter waiver. Litigation counsel Since EchoStar was decided, several district courts have extended the waiver to include litigation counsel communications and work product, relying primarily on two statements in the EchoStar opinion to support their rulings. The first statement addresses the issue of whether the waiver extended to legal advice provided by the defendant’s outside opinion counsel when the defendant chose to rely solely on the advice provided by its in-house counsel: “[W]hen EchoStar chose to rely on the advice of in-house counsel, it waived the attorney-client privilege with regard to any attorney-client communications relating to the same subject matter, including communications with counsel other than in-house counsel.” 448 F.3d at 1299 (citation omitted). The second statement is in footnote 4 of the EchoStar opinion, where the Federal Circuit addressed the defendant’s contention that the waiver did not extend to advice and work product given after the litigation began: “While this may be true when the work product is never communicated to the client, it is not the case when the advice is relevant to ongoing willful infringement so long as that ongoing infringement is at issue in the litigation.” Id. at 1302 n.4 (citations omitted). Most courts that have addressed the issue of whether the waiver extends to litigation counsel since EchoStar was decided have concluded that, at least to some extent, EchoStar extends the waiver to litigation counsel communications and work product. Indeed, it appears that only two district court decisions addressing this issue post- EchoStar have refused to read the case as extending the waiver to litigation counsel. In Indiana Mills & Mfg. Inc. v. Dorel Indus. Inc., No. 1:04-CV-1102, 2006 WL 1749413 (S.D. Ind. May 26, 2006), the court found that there is no indication that the EchoStar court intended to extend the waiver to trial counsel communications or work product, because that issue was not before the Federal Circuit. Although the district court recognized that such an argument could have merit, it read EchoStar as narrowly applying to its particular facts-namely, the situation where an accused infringer obtains additional advice of counsel after the lawsuit is commenced, other than advice from litigation counsel in the course of the litigation. Since there was no allegation that the defendant had received additional advice of counsel after the lawsuit was filed, the district court refused to broaden the temporal scope of the waiver post-filing. The district court in Indiana Mills later withdrew its opinion on the basis that the court “became aware that it [was] under a misapprehension of the facts” because it was “under the impression that [the defendant] had never sought additional opinions of counsel post-filing,” which apparently was not the case. Indiana Mills & Mfg. Inc. v. Dorel Indus. Inc., No. 1:04-CV-1102, 2006 WL 1993420 (S.D. Ind. July 14, 2006). Similarly, the court in Ampex Corp. v. Eastman Kodak Co., No. CIV A. 04-1373, 2006 WL 1995140 (D. Del. July 17, 2006), read the EchoStar decision as narrowly applying to its particular facts and did not agree that EchoStar mandated that the waiver extend to trial counsel communications and work product. Rather, the court read EchoStar as being aimed primarily at clarifying the scope of waiver of work-product protection. As to the attorney-client privilege, the court said that reading EchoStar as extending the waiver to every communication a client has with its trial counsel on the subject of the opinion relied upon would “[demolish] the practical significance of the attorney-client privilege” and require a “wholesale revision” of the historical understanding of the attorney-client privilege. Id. at 3. The court further emphasized that EchoStar did not even address the issue of communications with trial counsel. Rulings extending waiver While most of the other recent district court decisions addressing this issue have read EchoStar as extending the waiver to litigation counsel, these decisions vary significantly in the extent to which they extend the waiver to litigation counsel communications and work product. Some district courts have extended the waiver to litigation counsel solely because ongoing infringement was an issue in the case. See Informatica Corp. v. Business Objects Data Integration Inc., 454 F. Supp. 2d 957 (N.D. Calif. 2006); Computer Assoc. Int’l v. Simple.com Inc., No. 02 Civ. 2748, 2006 WL 3050883 (E.D.N.Y. Oct. 23, 2006); Outside the Box Innovations LLC v. Travel Caddy Inc., No. 1:05-CV-2482, 2006 WL 2861191 (N.D. Ga. Oct. 6, 2006); Beck Systems Inc. v. Managesoft Corp., No. 05 C 2036, 2006 WL 2037356 (N.D. Ill. July 14, 2006). Most of the district courts that took this approach further limited the waiver to exclude communications related to trial or litigation strategy. See Informatica; Computer Assoc.; Outside the Box. The court in the Beck case, however, took a broader view of the waiver and did not exclude from the waiver communications involving litigation or trial strategy. An even broader approach to the waiver was taken by the court in Affinion Net Patents Inc. v. Maritz Inc., 440 F. Supp. 2d 354 (D. Del. 2006), which extended the waiver to communications with all counsel, including litigation counsel, without excluding communications involving litigation or trial strategy. Notably, the judge in this case, Judge Joseph J. Farnan, had a broad view of the waiver that was in direct contrast to the much narrower view of another judge in the District of Delaware, Judge Kent A. Jordan, who just 11 days earlier in the Ampex case refused to extend the waiver to any trial counsel communications or work product. Other courts that have allowed the waiver to extend to litigation counsel have narrowly construed the waiver so as to considerably limit its scope. The court in Intex Recreation Corp. v. Team Worldwide Corp., 439 F. Supp. 2d 46 (D.D.C. 2006), concluded that the EchoStar decision did not go so far as to extend the waiver to all trial counsel communications and work product concerning whether the patent at issue is valid, enforceable and infringed when the alleged infringement is continuing during the litigation. Rather, like the court in Indiana Mills, the Intex court found that EchoStar‘s discussion concerning this issue was limited to its particular facts, in which the post-filing opinions being sought were those of opinion counsel, not trial counsel. The district court then relied on one of its previous opinions that directly addressed this issue and limited the waiver only to trial counsel communications and work product communicated to the client that either question or contradict the competence or validity of the opinions relied upon by the accused infringer to rebut willfulness. Similarly, the court in Genentech Inc. v. Insmed Inc., 442 F. Supp. 2d 838 (N.D. Calif. 2006), found that EchoStar did not consider or address the specific issue of whether the waiver should extend to trial counsel. Instead, the Genentech court’s view of EchoStar was that “the thrust of the case is that a blanket immunity for trial counsel is not appropriate.” While the court ultimately decided to extend the waiver to trial counsel, it did so based on the finding that the accused infringers relied not just on the advice of opinion counsel, but also on the advice of trial counsel when they decided to launch the accused drug product after U.S. Food and Drug Administration approval was received, which occurred after the lawsuit was commenced. Moreover, the court limited the trial counsel waiver to those documents and communications that are “most akin” to those that opinion counsel normally renders-i.e., documents and communications that contain opinions and advice “central and highly material to the ultimate questions of infringement and invalidity,” which was the subject matter of the opinions relied upon by the accused infringers. The district court reasoned that this approach would exclude “lower level” documents and communications that are more akin to discussions of trial strategy, and instead would focus on the advice and work product of trial counsel that was “reasonably central” to the accused infringer’s decision to launch the accused product and continue its sale. Subject-matter waiver District courts applying EchoStar also have arrived at inconsistent rulings when deciding the issue of whether the scope of the subject-matter waiver extends to communications and work product that discuss any willfulness defenses, as opposed to limiting the waiver to just those materials that address the particular defense that is the subject of the opinion relied upon by the accused infringer. The following statement in the EchoStar opinion has been the primary focus when the district courts have addressed this issue: “[W]hen an alleged infringer asserts its advice-of-counsel defense regarding willful infringement of a particular patent, it waives its immunity for any document or opinion that embodies or discusses a communication to or from it concerning whether that patent is valid, enforceable, and infringed by the accused.” 448 F.3d at 1304. Several district courts have relied on this language in the EchoStar opinion to conclude that the scope of the subject-matter waiver extends to all willfulness defenses-i.e., validity, enforceability and infringement-even when the subject matter of the opinion relied upon by the accused infringer was limited to a subset of those defenses, e.g., infringement only. See Intex; Affinion; Outside the Box. Other courts, however, have taken a narrower view of the subject-matter waiver, limiting the waiver only to the specific defenses that were addressed in the opinion relied upon by the accused infringer. See Computer Assoc.; Beck; Indiana Mills; see also Autobytel Inc. v. Dealix Corp., No. 2:04-CV-338, 2006 WL 2850324 (E.D. Texas Oct. 3, 2006). For example, in declining to extend the waiver beyond the specific defense addressed in the underlying opinion, the court in the Autobytel case stated that “the EchoStar court did not squarely address whether the waiver extends beyond the subject matter of the underlying opinion to include all defenses to willful infringement.” Id. at 4. The court further noted that “[c]ourts confronting this issue after EchoStar have been split.” Id. As demonstrated by the district court decisions that have addressed the scope of the advice-of-counsel waiver in the wake of EchoStar, it is clear that while the EchoStar decision helped to clarify the scope of the waiver in some respects, unresolved issues remain. Indeed, the EchoStar decision itself appears to have contributed to the uncertainty regarding the issues of whether and to what extent the waiver extends to litigation counsel communications and work product, and whether the waiver extends beyond the specific subject matter of the underlying opinion relied upon by the accused infringer. The answers to these questions are important, since they will determine the extent to which litigation counsel communications and work product will be discoverable when accused infringers rely on opinions of counsel to defend against claims of willful infringement. These issues undoubtedly will continue to be the subject of future litigation and, eventually, the Federal Circuit’s guidance will be needed once again to clarify the proper scope of the advice-of-counsel waiver. Until that happens, however, in cases in which an accused infringer raises the advice-of-counsel defense to willful infringement, litigation counsel representing an accused infringer should be aware that communications between them regarding infringement, validity and enforceability of the patent-in-suit may very well be discoverable. Vito J. DeBari is a partner in the New York office of Kramer Levin Naftalis & Frankel. His practice is focused on IP litigation and counseling.

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