A PARADIGM SHIFT TO LIMIT THE SCOPE OF WAIVER OF PRIVILEGE WHEN RELYING ON OPINION OF COUNSEL IN DEFENSE OF CLAIMS FOR WILLFUL PATENT INFRINGEMENT AND ENHANCED DAMAGES

A recent decision by U.S. District Judge Robert H. Cleland, Eastern District of Michigan, found that defendant’s voluntary waiver of privilege to rely on an opinion of counsel also waived separate litigation counsel’s privileged and work-product claims for communications prior to filing of the lawsuit. While frightening in many respects, what’s important about this decision is that it suggests a paradigm shift in how clients and litigation counsel can respond to an infringement charge, safely rely on an opinion of counsel to avoid willful infringement, and avoid a scope of waiver that disgorges litigation counsel’s pre-lawsuit privileged and work-product communications. This article discusses that decision and its implications, and strategies that may be useful to avoid or at least limit the scope of waiver.