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Federal Circuit in Seagate Case to Address Attorney-Client Privilege in Willful Patent Infringement

February 20, 2007

By Robert Masters and John Girgenti

When confronted with a charge of willful patent infringement – something that is pled in nearly all patent infringement cases – a defendant is often faced with the Hobson’s choice of whether to defend that charge by asserting the advice of counsel defense, thereby waiving the attorney-client and work-product privileges, or to forego the advice of counsel defense to avoid having to waive privilege.

The Court of Appeals for the Federal Circuit has decided to revisit this issue, and at a minimum, should provide better guidance as to how far the scope of waiver extends regarding reliance on opinions of counsel or the “advice of counsel” defense and whether it encompasses the work product of trial counsel. The Court’s decision is likely to affect overall trial strategy decisions.