In-House Considerations in Advice of Counsel Defense

Introduction

In patent litigation, a finding of willful infringement may treble damages under 35 U.S.C. § 284. A common defense to willful infringement involves retaining third-party "opinion counsel" to opine on whether an activity or product infringes a patent and/or whether the patent is valid and enforceable. In the wake of Halo Electronics, Inc. v. Pulse Electronics, Inc., which lowered the bar for establishing willfulness, such "advice of counsel" defenses have become more prevalent.

This defense, however, is not without drawbacks: relying on an opinion of counsel triggers waiver of attorney-client and work product privileges as to the "subject matter" of the opinion letter.

Given the subject matter of the opinion letter — e.g., infringement, validity, claim construction — overlaps significantly with the substantive aspects of patent litigation, asserting an advice of counsel defense can result in sweeping discovery requirements, including disclosure of post-complaint communications, strategy discussions with third parties, and deposition of in-house counsel.

Unsurprisingly, the exact contours of this waiver is oft disputed in cases involving allegations of willful infringement.

In the mid-2000's, the Federal Circuit's Echostar and Seagate somewhat clarified the scope of the waiver: privilege is waived for opinion counsel, but absent "unique circumstances" trial counsel retains its ability to assert attorney-client and work product privileges.

Still, these decisions gave trial courts little guidance on how waiver applies to in-house counsel and explicitly eschewed establishing an absolute rule. This paper examines recent treatment of waiver in advice of counsel defenses and provides best practices for obtaining and relying on opinion letters.

Read "In-House Considerations in Advice of Counsel Defense" here.