Patent Infringement: Opinions of Counsel: Echostar INTELLECTUAL PROPERTY

Echostar and the Scope of Attorney-Client Privilege Waiver

Companies concerned about another's patent often seek "opinions of counsel" for the purpose of establishing a defense to charges of willful infringement and avoiding the specter of the treble damages that may be assessed against one found to be a willful infringer. Such opinions of counsel are often produced during litigation to show that, rather than willfully infringing, the defendant exercised due care by obtaining an opinion that its activities do not infringe any valid claims of the patent. Like other communications between an attorney and a client, opinions of counsel may be protected by the attorney-client privilege. However, that privilege is waived if the opinion is produced in litigation. In In re EchoStar Communications Corp., the US Court of Appeals for the Federal Circuit addressed the scope of the waiver associated with producing such an opinion. In EchoStar, the Federal Circuit held that all opinion counsel, and any work-product of opinion counsel that reflected communications with the client on the subject matter of the waiver, were included in the waiver. Since Echostar,there has been much debate concerning the scope of waiver in other contexts, including for trial counsel. In In re Seagate Technology, LLC, the CAFC will consider en banc the Echostar decision as well as the "duty of care" itself that underlies the doctrine of willful infringement.

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Echostar and the Scope of Attorney-Client Privilege Waiver

Companies concerned about another's patent often seek "opinions of counsel" for the purpose of establishing a defense to charges of willful infringement and avoiding the specter of the treble damages that may be assessed against one found to be a willful infringer. Such opinions of counsel are often produced during litigation to show that, rather than willfully infringing, the defendant exercised due care by obtaining an opinion that its activities do not infringe any valid claims of the patent. Like other communications between an attorney and a client, opinions of counsel may be protected by the attorney-client privilege. However, that privilege is waived if the opinion is produced in litigation. In In re EchoStar Communications Corp., the US Court of Appeals for the Federal Circuit addressed the scope of the waiver associated with producing such an opinion. In EchoStar, the Federal Circuit held that all opinion counsel, and any work-product of opinion counsel that reflected communications with the client on the subject matter of the waiver, were included in the waiver. Since Echostar,there has been much debate concerning the scope of waiver in other contexts, including for trial counsel. In In re Seagate Technology, LLC, the CAFC will consider en banc the Echostar decision as well as the "duty of care" itself that underlies the doctrine of willful infringement.

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