Wasting Resources: Reinventing the Scope of Waiver Resulting from the Advice-of-Counsel Defense to a Charge of Willful Patent Infringement
41 Pages Posted: 19 Jun 2011
Date Written: 2004
Patent infringement cases may be the very definition of “high-stakes litigation.” In addition to issuance of permanent injunctions and high-dollar damage awards, judges have discretion to award treble damages and attorney’s fees in patent cases. Judges may exercise this discretion when infringement is found to be willful. One way for an alleged willful infringer to rebut an allegation of willfulness is to introduce an opinion of counsel evidencing the alleged willful infringer’s good faith effort to investigate the patent at issue after receiving notice of potential infringement. Disclosure of such an opinion, however, waives attorney-client privilege and work-product immunity. District courts have been pondering the scope of this waiver for two decades, and they have yet to come to any agreement. The courts initially split into two distinct camps. One argued that waiver extends only to communications between the client and opinion counsel. The other extended the waiver to include non-communicated work-product. Only recently a compromise position developed. It would extend the waiver to include non-communicated fact work product only. The Federal Circuit, for its part, has yet to weigh in on the issue or to signal which, if any, of these three approaches it would adopt. This Article concludes that, whatever the appropriate scope of waiver should be, the Federal Circuit should finally act to announce that scope to eliminate confusion, reduce inefficiencies, and provide predictability. To do so, the Federal Circuit should assert some form – any form – of appellate jurisdiction.
Keywords: willfullness, infringement, attorney client privilege, work product immunity, patents
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