"Advice of Counsel" Defense and Scope of Waiver of Privileges

When a defendant in a patent case (or a trademark case, for that matter) introduces evidence of communications or documents otherwise falling within some privilege in defense of a charge of willful infringement, then quite obviously that privilege is waived. The question is, how far does the waiver extend? The Federal Circuit recently issued a very clear explanation of its view concerning the scope of the waiver that necessarily flows from a defendant's disclosure that he relied on advice given by counsel.

In In re Echostar Communications Corp., Misc. Nos. 803, 805 (Fed. Cir. May 1, 2006), defendant Echostar asserted, in response to a charge of willful infringement, that it had relied on the advice given by its in-house counsel. Echostar later got additional advice from an outside law firm, but elected not to rely on it. The plaintiff, however, moved to compel and got a district court order that, because Echostar was relying on its in-house counsel's advice as a defense, it waived attorney-client privilege and attorney work-product immunity as to all communications from any counsel on that subject, whether or not it was communicated to Echostar. That last italicized bit is important, because, remember, the "advice of counsel" defense goes to the defendant's state of mind. So the district court's ruling, in essence, said that even information not communicated to the client is relevant to the client's state of mind. Yikes!

The Federal Circuit had problems with it too. They focused on work-product doctrine, since they viewed the scope of a work-product waiver as being narrower than a waiver of the attorney-client privilege. Specifically, waivers of privilege are for all privileged materials on the same subject, but a work product waiver extends only to "factual" or "non-opinion" work product on the same subject matter.

The court then broke down the scope of the work product waiver into three categories: (1) documents that themselves are a communication, like a letter or e-mail; (2) documents that discuss or memorialize a communication between the lawyer and the client, but aren't themselves communicated to the client; and (3) documents that analyze the law, the facts, trial strategy, or anything else that reflect the attorney's mental processes, but aren't sent to the client. The court explained that categories (1) & (2), since they either embody or discuss a communication to the client, do inform the client's state of mind, and are discoverable. But category (3) documents, since they aren't communication to the client, don't and aren't.

Seems about right to me. And I see no reason why this reasoning ought not to apply to trademark cases as well. Overall, a good, sensible opinion from a circuit that (at least on trademark matters), I frequently disagree with.