CAFC Orders Review of EchoStar Waiver of Privilege

In re Seagate Technology LLC - January 26, 2007 The Federal Circuit issued a sua sponte order on Friday to address the following questions en banc:

(1) Should a party's assertion of the advice of counsel defense to willful infringement extend waiver of the attorney-client privilege to communications with that party's trial counsel? See In re EchoStar Commc'n Corp., 448 F.3d 1294 (Fed. Cir. 2006).

(2) What is the effect of any such waiver on work-product immunity?

(3) Given the impact of the statutory duty of care standard announced in Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), on the issue of waiver of attorney-client privilege, should this court reconsider the decision in Underwater Devices and the duty of care standard itself?

Pursuant to new policy, the CAFC is now posting merit briefs on the web site. In the order, the court indicated that briefs of amici curiae will be entertained in accordance with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.

• CAFC order
• Petition for Writ of Mandamus
• Opposition
• Reply

Background:

APLF (2001) publication "Discovery and Use of Opinions in Litigation"

Joseph R. Re, "Litigating the Issue of Willful Patent Infringement"

See also 1989 IDEA article by Robert L. Baechtold, titled "The Federal Circuit's Views on Attorney Client Privilege, Work Product and Related Items," noting that,

Unfortunately, since discovery orders are ordinarily not final, and therefore not appealable, rulings on privilege rarely reach the appellate level. We may have to wait quite a while for another case involving discovery sought outside the trial forum, facts so clearcut as to justify mandamus, or a respondent brave enough to risk contempt to get appellate review.