The interests advanced by the attorney-client privilege and work product doctrines are a subject of frequent debate. Scholars and practitioners agree, however, that both forms of discovery protection must be waived in certain circumstances. One such situation is where a client asserts the "advice of counsel" as a defense. In the arena of patent litigation, the waiver of discovery protection arises where the alleged patent infringer asserts the advice of counsel defense to claims of willful patent infringement.
The scope of waiver of discovery protections upon asserting the advice of counsel defense to claims of willful patent infringement is expanding dramatically. Over time, lines have been drawn between patent opinion counsel, who provide initial advice to the potential infringer, and litigation counsel, who defend the alleged infringer in litigation. Litigators once believed that the documents produced by, and the advice communicated to, the client would be unaffected by the waiver of discovery protection. Recent cases demonstrate that this is no longer the case.
This Note argues that the scope of the waiver has expanded too far. The scope of the waiver must be limited in some circumstances in order to maintain the interests that underpin the attorney-client privilege and the work product doctrine. This Note suggests that the proper place to draw the line is at the time of filing in a patent matter. Thus, while documents and advice relating to potential infringement communicated to the client prior to the time of filing would be discoverable, any documents or advice communicated after the'time of filing in federal court would be protected.
Michael M. Markman,
Patent Opinions, Privileges, and the Advice of Counsel Defense to Claims of Willfull Patent Infringement: Litigation Counsel Caught in the Crossfire,
19 Hastings Comm. & Ent. L.J. 949
Available at: https://repository.uchastings.edu/hastings_comm_ent_law_journal/vol19/iss4/7