Jenner & Block

“Scope of Waiver: Post-Seagate Trends,” American Bar Association Intellectual Property Litigation Newsletter

In this article, Jenner & Block Partner Reginald J. Hill and Associate Nangah N. Tabah examine how district courts have carved out the scope of waiver of attorney-client privilege and work product immunity in the context of the advice-of-counsel defense in willful patent infringement cases since the Federal Circuit’s decision in In re Seagate Technology, LLC in 2007.  They evaluate the scope of waiver with respect to opinion counsel versus trial counsel and outside counsel versus in-house counsel.  Ultimately, they urge litigants to minimize the risk of waiver through several strategies, among them, “ensuring that separate issues are addressed in separate opinions; maintaining a clear line between the end of opinion work and start of pre-litigation and litigation work; minimizing communications that comment on the opinion, as these also may be subject to discovery; recognizing the paper trail being created and discarding unnecessary drafts; limiting or avoiding post-filing opinions of counsel; and generally, limiting access to the opinion.”