In an article written a few years back, I’d noted that combining different forms of representation — litigating and prosecuting, litigating and opinining, and so on — created risk. David Hricik, How Things Snowball: The Ethical Responsibilities and Liability Risks Arising from Representing a Single Client in Multiple Patent-Related Representations, 18 Geo. J. Legal Ethics 421 (2004).

One key risk I noted that arose when a law firm combined both an opinion on and the litigation of a patent was the risk of broad waiver of work product of trial counsel. Id. (“Teh greatest risk that an opining-litigator creates is taht work product — including, in some courts’ views, even work product which was never received by the client from anyone at the lawyer’s firm — will be discoverable.”) A brand new case out of California has shown that risk to be real — and raises even more significant questions about reliance on advice of counsel defenses.

In Informatica Corp. v. Bus. Objects Data Integration, Inc., 2006 WL 2038461 (N.D. Cal. July 14, 2006), the district court, after lengthy briefing by the parties, concluded that it was the infringer’s state of mind that mattered, and so held that it was irrelevant whether trial counsel was the same person who gave the opinion, or even whether trial counsel was in the same firm as opinion counsel. Instead, the court reasoned:

This Court, after weighing all the persuasive authority, concludes that the Federal Circuit has the final word in a patent case on the subject of the scope of waiver of attorney-client privilege and the work product protection for discovery relevant to a substantive issue after assertion of the advice-of-counsel defense. The court in Echostar makes it crystal clear that attorney-client communications on the subject of the opinion BODI relies on for its defense are subject to waiver, as well as documents, including work product, which reference these communications. Similarly, both pre- and post-filing work product is potentially relevant to the alleged infringer’s intent where there is an allegation of continuing infringement and are therefore also subject to waiver. However, only work product which has either been communicated to the alleged infringer or refers to communications is relevant to intent and therefore subject to waiver by assertion of the advice-of-counsel defense.

This Court finds that, according to the analysis in Echostar, what is significant is the state of mind of BODI and not the affiliation of BODI’s attorneys, and that privilege has been waived with respect to pertinent communications and work product of all counsel in this case. Attorney legal opinions, impressions and trial strategy unrelated to the opinion on which BODI relies may be redacted from documents to be produced to Informatica. The Federal Circuit in Echostar cautioned that the parties should protect such information.
*8 Still, we must emphasize that such communications may contain work product of the second kind-legal analysis that was not communicated. In those situations, the parties should take special care to redact such information, and if necessary the district court may review such material in camera.
In re EchoStar, 448 F.3d at1304.

While opinion counsel and trial counsel can be walled off from each other, the immurement is immaterial–what matters, according to the decision by the Federal Circuit in Echostar, is the state of mind of BODI.

For all the above reasons, Informatica’s motion to compel further responses from BODI is granted. This Court finds that, by asserting advice of counsel as a defense to a charge of willful infringement of Informatica’s patents, BODI waived privilege for both pre-and post-filing pertinent attorney-client communications and work product. Under the analysis in Echostar, it is immaterial whether BODI’s opinion counsel and trial counsel are from the same firm, different firms or are even the same person. What matters is that:

1. BODI relies on advice of counsel as a defense to Informatica’s charge that it willfully infringed Informatica’s patents;

2. Therefore, BODI waives privilege for communications with counsel on the subject of the opinion or advice on which it relies as well as work product on that subject communicated to BODI or which refers to communications on that subject;

3. Informatica alleges that BODI continues to infringe Informatica’s patents;

4. Therefore Informatica is entitled to information subject to waiver which BODI received even after Informatica filed its complaint;

5. The categories of information which BODI must turn over to Informatica include (a) attorney-client communications with any counsel on the subject of the opinion or advice on which BODI relies; (b) work product communicated to BODI on that same subject; (c) work product which reflects any communication on that subject.

Attorney legal opinions, impressions and trial strategy unrelated to the opinion on which BODI relies may be redacted from documents to be produced to Informatica.

All responsive discovery which is being withheld as privileged for which privilege has been waived as discussed above shall be produced within twenty days of the e-filing of this order. BODI shall at the same time produce a privilege log for all other withheld documents, in compliance with the decision in In re Grand Jury Investigation, 974 F.2d 1068, 1070 (9th Cir.1992), citing Dole v. Milonas, 889 F.2d 885, 888 n. 3, 890 (9th Cir.1989).

Wow.

This post is by David Hricik, a guest here, who is a professor at Mercer University School of Law in Macon, GA. He isn’t part of the firm that sponsors this site.

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    EchoStar follow-up: Communications with trial counsel?

    On May 1, 2006, the Federal Circuit ruled on a mandamus petition challenging a trial court’s ruling on the scope of a waiver of attorney-client privilege and work product immunity (a waiver made to use the advice of counsel to rebut a charge that…