CLE courses seem to be popping up left and right about the impact of the Supreme Court’s 2016 Halo v. Pulse decision reversing the prior Seagate willful infringement standard. The focus of these other CLEs seems to be more on the substantive law of willfulness and how the district courts have responded to the issue and applied the Halo standard.
But willful infringement always has had with it a thorny side issue–the “opinion of counsel” defense, and secondary to that, whether and how reliance on an opinion of counsel as a defense to a willfulness allegation waives the attorney-client privilege or work product immunity. The CAFC’s en banc Seagate decision did more than just adopt a two-part willfulness test. The CAFC in Seagate also clarified the scope of the privilege and immunity waiver.
The CAFC, for example, held in Seagate that communications after the infringement lawsuit is filed are never (or at least almost never) relevant to the accused infringer’s state of mind. And if they are relevant, in most cases protecting the privilege and work product is more important for policy reasons. Thus, per Seagate, in most cases, privileged communications and work product on the subject of an opinion are generally not waived after the litigation is filed.
Notably, Halo did not expressly address Seagate‘s analysis on the scope of the waiver. In fact, the Supreme Court in Halo did not discuss privilege or work product at all. Whether it did so implicitly by rejecting the underlying substantive rule of willfulness law is unclear. A body of jurisprudence is quickly developing on willful infringement in the main. To date, however, only a couple of cases post-Halo have taken on the “waiver when an accused infringer relies upon an opinion of counsel” issue.
To learn more about this fascinating subject, please join Eleanor M. Yost and me for a 90-minute webinar sponsored by Strafford aptly entitled, “Advice of Counsel Defense in Patent Litigation: Protecting Attorney-Client Privilege.” We will deep dive into the murky waiver waters before and after Halo.
The webinar is tomorrow, March 17, 2017, starting at 1:00 pm Eastern. For more information and to sign up, go to the link here.