Judge Sue L. Robinson recently ordered defendants asserting an opinion-of-counsel defense to “product all documents and communications, whether listed on defendants’ privilege log or not, other than communications with trial counsel, that address” validity or infringement of the patent-in-suit. Johns Hopkins Univ. v. Alcon Labs., Inc., Civ. No. 15-525-SLR/SRF (D. Del. June. 14, 2017). The defendants argued that the “Federal Circuit has explained that the Rule 502(a) ‘limited the effect of waiver by strongly endorsing fairness balancing.'” Judge Robinson explained, though, that under Seagate, which is “still good law” in this respect, “relying on in-house counsel’s advice to refute a charge of willfulness triggers waiver of the attorney-client privilege . . . [and] asserting the advice of counsel defense waives work product protection and the attorney-client privilege for all communications on the same subject matter, as well as any documents memorializing attorney-client communications.” This broad waiver, the Court explained, is in fact rooted in principles of fairness, to avoid situations where a party may use privilege as both a sword and a shield.
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