En Banc Panel to Determine Scope of Opinion Waiver

In Re Seagate Technology (Fed. Cir. 2007).

The Federal Circuit has decided sua sponte to an en banc hearing addressing the following questions:

1. Should a party's assertion of the advice of counsel defense to willful infringement extend waiver of the attorney-client privilege to communications with that party's trial counsel? See In re EchoStar Commc'n Corp., 448 F.3d 1294 (Fed. Cir. 2006).
2. What is the effect of any such waiver on work-product immunity? 
3. Given the impact of the statutory duty of care standard announced in Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), on the issue of waiver of attorney-client privilege, should this court reconsider the decision in Underwater Devices and the duty of care standard itself?

DOCS

• En Banc Order
• Petition
• Opposition
• Reply

NOTE:

• As I suggested earlier this week, the CAFC has begun to test publication of merits briefs on its www.cafc.uscourts.gov website.
• The Order indicates that Amici will be entertained “in accordance with [FRAP] 29 and Federal Circuit Rule 29.” This likely means that the court will grant leave to all amici briefs, although that meaning is unclear.

Comments

[Michael L. Slonecker]

A good start to understanding the basic issues on this subject is reading Mike McCabe's article at:

http://www.oblon.com/Pub/mccabePrivilege-Work.html

[Chris McGeehan]

Dennis:

The reference to FRAP 29 means that a potential amicus must obtain consent from both parties (FRAP 29(a)) or be granted leave by the Federal Circuit (FRAP 29(b)) to file a brief.

When the Federal Circuit wishes to grant blanket leave to file, the order is written differently, as can be seen from the following order in Phillips v. AWH:
fedcir.gov/opinions/03-1269o.doc

[q]

One interesting issue on this case is whether issue number 3 is properly before the Federal Circuit. The procedural context in Seagate is a waiver was made and the writ is on what is the scope of the waiver. How you can procedurally get from that issue to whether the Court should question Underwater Devices is not apparent to this reader.

[Thomason]

g, I tend to agree, but if there is no affirmative duty to get an opinion, then whether or not one chose to get an opinion may bear on whether the infringer has put the opinion at-issue in the case. If the infringer doesn't put it at-issue, then they might be able to use the shield without every having drawn the sword. The affirmative duty in Underwater Devices is what triggers the problem with defending against a claim of wilfullness, without that defense requiring disclosure of all subject matter relating to a non-willful state of mind.