In In re Echostar Communications Corp., the Federal Circuit on May 1 addressed an important issue of patent law and ethics: the scope of the waiver of privilege and work product when an opinion of counsel is relied upon to defend a charge of willful infringement.
Boiled down, the defendant relied on an in-house opinion to contend that its alleged pre-suit infringement was not willful, and eventually an opinion provided by Merchant & Gould for post-suit alleged infringement. In both cases, the opinions addressed non-infringement (not invalidity or unenforceability). The district court ordered the defendant to produce, not just actual opinions received by the client, but also (1) all communications on the subject, (2) all mental impressions of the attorneys even if not communicated to the client, and (3) documents that discuss a communcation between the lawyer and the defendant but which were not themselves communications with the client.
The Federal Circuit held that the scope of waiver reached the first and third, but not the second group. Explaining why protection over opinion work product was not lost, the court reasoned that "if a legal opinion or mental impression was never communicated to the client, then it provides little if any assistance to the court in determining whether the accused knew it was infringing, and any relative value is outeighed by the policies supporting the work-product doctrine."
The opinion makes sense, but it does suggest that lawyers who write opinions be sure to communicate their views fully to the client -- those not communicated clearly cannot serve to defend the client's actionsn -- and also creates the opportunity for mischief. What's that?
Suppose trial counsel provides the opinion. Does this case mean that any communication with the client is now discoverable? Stay tuned.