Privilege not waived in asserting advice of counsel defense where documents were not disclosed to accused infringer
Affinion Net Patents, Inc. v. Maritz, Inc., No. 04-360-JJF, July 28, 2006.
Farnan, J. Patentee’s motion to compel two claims charts where privilege was waived due to advice-of-counsel defense was denied.
Patentee’s contention that waiver of privilege arising from the assertion of the advice of counsel defense extends to documents inadvertently produced by litigation counsel in addition to documents from separate opinion counsel within the same law firm was rejected because the documents had not been provided to the client. Waiver extends to litigation and any counsel with respect to communications relating to non-infringement, invalidity, and any other infringement defense. Work product is waived only to the extent it is relevant to the alleged infringer’s state of mind. Attorney impressions which are not communicated to clients are not discoverable. Documents prepared after litigation commences relating to advice of counsel are discoverable.
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