The Court of Appeals for the Federal Circuit heard oral arguments in June for In re Seagate Technology, a case that could change the direction of patent litigation in U.S. courts. The hearing was unusual because CAFC decided without prompting from the petitioner to hear the case en banc in response to petition for mandamus from Seagate. The CAFC seldom convenes en banc, and almost never does so without a petitioner's request.
More importantly, the court expanded the inquiry beyond the legal questions the petitioner posed--something courts avoid doing in most cases. Specifically, Seagate asked CAFC to overrule a New York district court's discovery order, which instructed Seagate to produce communications with trial counsel in a patent-infringement lawsuit, Convolve v. Seagate. But CAFC went further, asking whether the court should reconsider its 24-year-old due-care standard for finding willful infringement--which produced Seagate's privilege dilemma.
"Echostar said if you rely on in-house counsel advice for the opinion, you've also waived outside-counsel advice," says Denise DeFranco, a partner with Finnegan Henderson. "After that decision, plaintiffs began arguing if the waiver extends to other opinion counsel, it should apply to trial counsel, because it's a subject-matter waiver."
Indeed, the plaintiffs in Convolve v. Seagate relied on Echostar to convince the district court they had a right to review communications with trial counsel, putting privilege on a collision course with the Underwater Devices standard.