Advice-of-Counsel Defense Waives Communications with "All" Counsel
In the latest twist to the post-Echostar waiver debate, Judge Farnan has issued an opinion stating that a party asserting the advice-of-counsel defense to willful infringment waives the attorney-client privilege concerning communications with both opinion counsel and trial counsel. In the July 28th decision, the Court noted that, based on the Federal Circuit's recent In re Echostar decision, 2006 U.S. App. LEXIS 11162 (Fed. Cir. May 1, 2006), a defendant's advice-of-counsel defense effects a waiver of "communications with all counsel related to the same subject matter." This waiver extends to "litigation counsel[ ] and any other counsel." Affinion Net Patents Inc. v. Maritz Inc., C.A. No. 04-360 (D. Del. July 28, 2006) (Farnan, J.), slip op. at 2-3.
Interestingly, the Court bypassed the plaintiff's argument that the waiver extends to all counsel because the defendants here had retained opinion and trial counsel from the same law firm. Instead, the Court relied exclusively on Echostar for its broad statement. Contrast this with another Delaware decision issued only a few weeks earlier, which read Echostar more narrowly. Ampex Corp. v. Eastman Kodak Co., 2006 U.S. Dist. LEXIS 48702, at *11 (D. Del. July 17, 2006) (Jordan, J.) ("Echostar did not even address the issue of communications with trial counsel.").
Ultimately, the Court denied the underlying motion to compel documents, finding that the communications in issue were never disclosed to the client and did not discuss any communication between attorney and client. Nonetheless, the Court's message is explicit: An Echostar waiver extends to both opinion and trial counsel.