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Ethical Issues in Opinions of Counsel and in Working with Patent Agents Chapter 17

attorney-client communications from the court.”40 The court’s holding makes sense since privilege over communications on the subject of the opinion have been waived, and the fact that a lawyer writes down a privileged communication does not convert the substance of the communication into a work product document. However, the court emphasized that information in such documents that had not been communicated could be redacted.41 With respect to the final (second, in the court’s analysis) category of documents – those that are work product but never communicated to the client – the court found work product protection still existed despite waiver of privilege.42 “[I]f a legal opinion or mental impression was never communicated to the client, then it provides little if any assistance to the court in determining whether the accused knew it was infringing, and any relative value is outweighed by the policies supporting the work product doctrine.”43 The three categories provide some framework for analysis, but the EchoStar case has created multiple uncertainties, in part because the court used broad language in the context of a fairly narrow set of facts.

First, for example, the question of what is the “subject matter” waived is obscured by the EchoStar decision. Although the case involved only noninfringement opinions received by the client, the court ultimately wrote that an accused infringer who asserts advice of counsel waived protection over communications “concerning whether that patent is valid, enforceable, and infringed by the accused.”44 This language suggests that reliance on an opinion of counsel for one defense waives them for all. That was not an issue in the case, however, and the court’s statement is, at best, dicta.

The case provides additional guidance for lawyers to determine whether to waive privilege by relying upon advice of counsel, and also provides guidance to lawyers and courts in determining the scope

–  –  –

of waiver of work product after a decision to waive is made. In a footnote, the court examined the question

of whether waiver extended to post-litigation documents. It wrote:

EchoStar contends that waiver of opinions does not extend to advice and work product given after 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. See Akeva LLC, 243 F.Supp.2d at 423 (“[O]nce a party asserts the defense of advice of counsel, this opens to inspection the advice received during the entire course of the alleged infringement.”); see also Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1351-1353 (Fed. Cir. 2001) (noting that an infringer may continue its infringement after notification of the patent by filing suit and that the infringer has a duty of due care to avoid infringement after such notification).45 The EchoStar opinion has already been followed by several district court opinions taking different views of the scope of waiver of work product with respect to post-suit communications with trial counsel.

They form a continuum from strict waiver, to middle ground balancing, to no waiver.

Combining these roles in the same firm increases the likelihood that a trial court will find broader waiver has occurred over that when the roles are kept separate. Significantly, the presence of an opininglitigator increases the likelihood that a court will order disclosure of work product which relates to the subject matter of the opinion provided by the attorney. Although there is a definite split, most courts hold that an accused infringer may rely on at least a pre-suit46 opinion of counsel without waiving trial counsel’s 448 F.3d at 1302 n.4.


Where trial counsel provides a post-suit opinion—an unusual circumstance—there is an even greater risk of broader waiver.

Explaining why, one court explained:

Here, the opinions were rendered by trial counsel’s firm after the litigation began. Although it is difficult to understand how there could be a defense to willful infringement based on an opinion rendered after the litigation began, defendants have raised such a defense. They cannot use their status as trial counsel to erect a barrier to discovery of documents to which plaintiff would otherwise be entitled. Neither can counsel play cute by carefully circumscribing information given to the lawyer in the firm who wrote the opinion, and funneling the information given him through other lawyers in the firm to avoid the concept of ‘communications between client and attorney.’ If a draft opinion is prepared and given to [the opining litigator] who reviews in light of trial strategy before it is given to the client and then sends it back for redrafting if it is a little weak or inconsistent with the trial strategy, plaintiffs have a right to know this. It bears on the independence, competence, analysis, credibility, and value of the opinion.

–  –  –

work product, at least where the opinion comes from a different firm than trial counsel.47 However, where the opinion comes from trial counsel, or from the same firm as trial counsel, then the risk to the client increases. The greatest risk that an opining-litigator creates is that work product—including, in some courts’ views, even work product which was never received by the client from anyone at the lawyer’s firm—will be discoverable.

This was the holding reached by Judge Farnan in Novartis Pharmaceutical Corp. v. Eon Labs Manufacturing., Inc.48 There, the Cohen Pontani firm defended an accused infringer Eon. In response to a charge of willful infringement, Eon procured an opinion from a member of Cohen Pontani, Mr. Pontani.

In addition to holding that Novartis was entitled to discover even work product information that Mr.

Pontani never provided to Eon, Judge Farnan held that “Eon should be compelled to produce all legal advice it received from any member of the Cohen, Pontani law firm with regard to the subject matter of Mr.

Pontani’s opinion.”49 Judge Farnan explained that conclusion:

Eon has not only elected to engage in the unconventional and risky arrangement of having opinion and trial counsel from the same law firm, but Eon’s opinion counsel, Mr. Pontani, has actually entered an appearance in this matter. Because the Court cannot differentiate between opinion and trial counsel, the Court will grant Novartis’ Motion to Compel to the extent it seeks the production of all legal advice Eon received from the Cohen, Pontani law firm relating to the subject matter of Mr. Pontani’s opinion.50 Other courts have reached similar results.51 For example, another court reasoned that

–  –  –


See Motorola, Inc. v. Vosi Techs., Inc., No. 01 C 4182, 2002 WL 1917256 (N.D. Ill. Aug. 19, 2002) (holding that privilege over trial counsel’s views of infringement or validity were not waived even though on same subject as pre-suit opinions by other lawyers).


206 F.R.D. 396 (D. Del. 2002).


Id. at 399.


Id. (emphasis in original).


Convolve, Inc. v. Compaq Computer Corp., No. 00 Civ. 5141 GBD JCF, 2004 WL 1178783 (S.D.N.Y. May 28, 2004).


AKEVA L.L.C. v. Mizuno Corp., 243 F. Supp. 2d 418, 424 (M.D.N.C. 2003).

Ethical Issues in Opinions of Counsel and in Working with Patent Agents Chapter 17

In explaining why the involvement of trial counsel in providing even a pre-suit opinion of counsel increases the breadth of work product waiver, the court reasoned that where the opinion comes from counsel separate and independent from trial counsel, then the reasons supporting broad waiver of work product are not implicated.53 As of now, however, there is no clear rule that has emerged. Instead, the courts have taken views all along the spectrum, from strict waiver, to a middle-ground balancing approach, to the position that no waiver occurs. The following sections analyze these cases.

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Some district courts are holding that there is full waiver of communications between accused

infringer and trial counsel.54 In that case, the district court wrote:

While opinion counsel and trial counsel can be walled off from each other, the immurement is immaterial — what matters, according to the decision by the Federal Circuit in EchoStar, is the state of mind of BODI. For all the above reasons, Informatica’s motion to compel further responses from BODI is granted. This Court finds that, by asserting advice of counsel as a defense to a charge of willful infringement of Informatica’s patents, BODI waived privilege for both pre-and post-filing pertinent attorney-client communications and work product. Under the analysis in EchoStar, it is immaterial whether BODI’s opinion counsel and trial counsel are from the same firm, different firms or are even the same person.55 Another district court indicated in dicta that it would follow this approach.56 There, the defendant obtained an opinion from a firm, then retained different lawyers in that same firm to defend it in the

litigation. The court wrote:

Defendant contends that, because it has retained different lawyers, although in the same firm, as opinion and litigation counsel, only communications with opinion counsel are waived. This argument is not supported by the case law of the Federal Circuit. When a defendant asserts the advice-of-counsel defense, the attorney-client privilege is waived as to communications with all counsel related to the same subject matter. Accordingly, Defendant has waived the attorney-client privilege as to communications with ‘litigation counsel,’ and 53.

Convolve, Inc., 2004 WL 1178783, at *9.

Informatica Corp. v. Business Objects Data Integration, Inc., 2006 WL 1038461 (N.D. Cal. July 14, 2006).

Id. at *8.

Affinion Net Patents, Inc. v. Maritz, Inc., __ F. Supp. 2d __, __, 2006 WL 2096712, *1 (D. Del. July 28, 2006).

Ethical Issues in Opinions of Counsel and in Working with Patent Agents Chapter 17

any other counsel, to the extent the communications relate to non-infringement, invalidity, and any other defense to infringement.... The work-product privilege is waived only to the extent it is relevant to the alleged infringer’ state of mind, i.e., whether counsel’s opinion is ‘thorough enough, as combined with other factors, to instill a belief in the infringer that the court might reasonably hold the patent is invalid, not infringed, or unenforceable.’ Accordingly, impressions and opinions of attorneys, which are not provided by the attorneys to the clients, are not discoverable because they would not have had an impact on the accused infringer’s state of mind.

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In the middle, some courts hold that waiver applies, but only to communications with trial counsel expressing doubts about the opinion or its strength. For example, in Intex Recreation Corp. v. Team

Worldwide Corp.,57 the court reasoned:

[Patentee] TWW submits that Intex must provide “all communications and documents reflecting such communications, regardless of date, concerning whether the ‘469 patent is valid, enforceable, and infringed, not just communications regarding the October 26, 2004 oral opinion.” In support of its contention, TWW submits that “[i]n EchoStar, the Federal Circuit clearly held that the waiver of the attorney-client privilege and work product immunity extends into the future for so long as the alleged infringement continues[.]” … Although neither party addressed it in their written submissions or during oral argument, another judge of this court has already addressed the issue presented. In an action in which Intex was a party, this court addressed “the issue of any temporal limitation” on an alleged infringer’s waiver of the attorney-client and work product protections. See Intex, 2005 U.S. Dist. LEXIS 10149 at * 15. In that case, the court recognized that:

The issue of any temporal limitation on an otherwise broad waiver of attorney-client privilege has divided federal courts, with many courts insisting on the broadest waiver and hence disclosure of all communications and documents regarding the subject matter of the opinion through trial, while other courts construct the subject matter narrowly and limit waiver to communications and documents created prior to litigation, in order to maximize protection of litigation work product.58 The court explained why it decided to follow BASF Aktiengesellschaft v. Reilly Indus., Inc.:59 [A] ‘middle ground’ is the most appropriate approach to this issue, under which waiver extends only to those trial counsel work product materials that have been communicated to the client and ‘contained conclusions or advice that contradict or cast doubt on the earlier opinions.’ … Hence, any otherwise privileged documents or other information generated by [the alleged infringer] or its counsel subsequent to the [opinion letters] issued in 2000 (including post-suit materials), and relating to the subject matter of 2006 WL 2023552 (D.D.C. July 14, 2006) Id. (citations omitted).

283 F.Supp.2d 1000, 1005-06 (S.D.Ind.2003)

Ethical Issues in Opinions of Counsel and in Working with Patent Agents Chapter 17

those opinion letters, must be produced if the documents were communicated to [the infringer] and if they question or contradict in any way the competence or validity of the opinions rendered.60

–  –  –

Other courts hold that waiver does not extent to work product communications with trial counsel.

For example, the court in Ampex Corp. v. Eastman Kodak Co.,61 wrote:

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