The Advice-of-Counsel Defense in Patent Infringement Cases: How Far Does Waiver of Work Product Extend?

Abstract

An alleged patent infringer responding to a lawsuit involving a claim of willful infringement-and most importantly, that claim's potential for treble punitive damages'-will generally offer written evidence of the legal opinion which was reasonably and in good faith relied upon in making, using, or selling the device in dispute. As a result, this legal opinion, which was previously privileged as an attorney-client communication, now becomes relevant and admissible.3 The courts have held that many of the underlying documents and conversations relating to such an opinion are relevant, in that they are probative of the alleged infringer's intent, and are admissible because the defendant has effectively waived the privilege. The principle supporting such waiver is fundamental fairness - it is said that a party should not be allowed to rely on a self-serving document in its defense while withholding potentially damaging information under the guise of privilege.

One court has described the strategic posturing that the parties to these cases typically take: 

"[T]he patent owner opens with a claim for willful infringement; the alleged infringer answers by denying willful infringement and asserts good faith reliance on advice of counsel as an affirmative defense; then the owner serves contention interrogatories and document requests seeking the factual basis for that good faith reliance defense and the production of documents relating to counsel's opinion; the alleged infringer responds by seeking to defer responses and a decision on disclosure of the opinion; the owner counters by moving to compel; and the alleged infringer moves to stay discovery and for separate trials."

Clearly, the party claiming the advice-of-counsel defense has a simple but difficult decision: claim the defense - or claim the privilege.