Waiver Of Privilege From Asserting Reliance On Counsel’s Advice Is Broad, But Normally Does Not Extend To Trial Counsel’s Communications:
EchoStar: “When 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. This waiver of both the attorney-client privilege and the work-product immunity includes not only any letters, memorandum, conversation, or the like between the attorney [whether or not the attorney authoring the clearance opinion] and his or her client, but also includes, when appropriate, any documents [whether or not communicated to the client] referencing a communication between attorney and client.” EchoStar (Fed. Cir. 05/01/06).
Seagate: “We hold, as a general proposition, that asserting the advice of counsel defense and disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege [or work product immunity] for communications with trial counsel. We do not purport to set out an absolute rule. Instead, trial courts remain free to exercise their discretion in unique circumstances to extend waiver to trial counsel, such as if a party or counsel engages in chicanery.” In re Seagate Tech. (Fed. Cir. 08/20/07) (en banc). Cf. Fed. R. Evid. 502 (2008) (restricting scope of intentional waiver during litigation, by fairness balancing); Wi-Lan (Fed. Cir. 07/13/12) (9th would likewise restrict scope of waiver arising from intentional disclosures outside of litigation, by fairness balancing).
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