Advice of Counsel Defense in Patent Litigation and Protecting Attorney-Client Privilege

Description

The Supreme Court's decision in Halo Electronics Inc. v. Pulse Electronics Inc., 136 S. Ct. 1923 (2016) significantly changed the standard for establishing a claim of willful patent infringement. Opinions of counsel are a more important factor that courts examine when exercising their discretion and award enhanced damages.

What Halo failed to address, however, is the interplay between reliance on an opinion of counsel defense to rebut a charge of willful infringement and the scope of a waiver of the attorney-client privilege and work product immunity.

Since Halo, several federal district courts have addressed privilege and work product waiver when the advice of counsel defense is asserted. These district courts considered several important issues, including whether advice-of-counsel waivers: (1) are limited to pre-litigation conduct; (2) can extend to communications between opinion counsel and trial counsel; (3) can extend to communications between inside counsel and outside counsel; and (4) may result in the waiver of privilege concerning collateral issues.

Listen as our authoritative panel of patent attorneys examines the issues of privilege in the context of opinions of counsel and the use of the advice of counsel defense. The panel will review recent decisions and offer best practices for limiting the scope of discovery of communications and work product related to the advice of counsel defense and protecting the privilege.