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Patent Law: Waiver of Privilege
February 21, 2005 Full PDF
Lew Clayton's article, "Waiver of Privilege" is featured in the February 21 National Law Journal. The article discusses unsettled questions concerning the scope of the privilege waiver in patent cases where the defendant chooses to rely on opinions of counsel to defend against claims for willful infringement. Lew discusses the different approaches of lower courts to basic waiver issues. Under the Federal Circuit's recent decision in Knorr-Bremse Systeme Für Nutzfahrzeuge GmbH v. Dana Corp, the defendant's invocation of privilege or failure to obtain legal advice in a patent case will no longer give rise to an adverse inference that an opinion was or would have been unfavorable. Under the old law, accused infringers often had little choice but to seek opinions and introduce them into evidence, thereby waiving the attorney-client privilege and exposing opinion counsel and others to discovery. After Knorr-Bremse, waiver is less likely to be by compulsion, but rather by choice, which will now focus more attention on the scope of the waiver. Lew concludes that faced with the differing opinions and interpretations of this waiver decision, both opinion and litigation counsel need to take caution. Opinion counsel should assume that their notes and files--even if never shared with the client--may be open to discovery. He advises that litigation and opinion counsel should be from different firms, and the separation between their roles should be maintained. Kerry Quinn assisted in the preparation of this article.