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Keywords

defendantlitigationattorneywillpatentlegal counselattorney-client privilege

litigationappealtrialpatent

Related Cases

Sharper Image Corp. v. Honeywell Intern., Inc., 222 F.R.D. 621

Facts

The dispute arose when Sharper Image accused Kaz, a competitor, of infringing its patents related to an ionic air purifier called the Environizer. Kaz had received legal opinions from multiple law firms regarding the potential infringement of the patents in question. The case involved the interpretation of communications between Kaz and its legal counsel, particularly focusing on the advice received from Wolf Greenfield, which concluded that the Environizer did not infringe any identified patents. The litigation began after Sharper Image filed a complaint alleging willful infringement by Kaz.

The portions of the factual and procedural background that are pertinent to the disposition of the pending disputes include the following. Sharper Image is the assignee of several patents that it accuses Honeywell and Kaz of infringing in this consolidated litigation.

Issue

The main legal issue was the extent to which the waiver of attorney-client privilege and work product doctrine applied when a defendant relies on advice of counsel as a defense against allegations of willful infringement.

The issues we confront have not been resolved by the United States Court of Appeals for the Federal Circuit 3 —and have produced sometimes sharply divided views in federal trial courts.

Rule

The court ruled that the waiver of attorney-client privilege and work product doctrine was limited to communications that addressed the advice relied upon and did not extend to all communications or documents related to the competitor's pending patent applications.

The court held that: 1 waiver was limited to communications addressing allegedly-relied upon advice; 2 waiver did not reach communications and documents related to competitor's own pending patent applications; 3 waiver included all communications from advising counsel relevant to subject matter of advice, regardless of when such communications occurred; 4 waiver reached all relevant pre– and post-complaint communications from and documents created by competitor's general counsel; and 5 waiver did not reach post-complaint communications with separately retained litigation counsel.

Analysis

The court analyzed the scope of the waiver by considering the specific communications that were relevant to the advice of counsel defense. It determined that while the waiver included all communications from advising counsel relevant to the subject matter of the advice, it did not extend to unrelated documents or communications, particularly those concerning pending patent applications. The court emphasized the need for a case-specific approach to determine the fairness of the waiver in the context of the litigation.

The analysis we use to resolve the difficult issues about the scope of the waivers that this dispute raises must be grounded in and responsive to the relevant principles of patent law.

Conclusion

The court concluded that the waiver was limited in scope and ordered Kaz to disclose specific communications related to the advice of counsel while protecting other unrelated communications from disclosure.

Ordered accordingly.

Who won?

Kaz prevailed in part, as the court limited the scope of the waiver, allowing it to protect certain communications from disclosure.

Kaz has continued to sell its Environizer despite the pendency of this litigation.

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