Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Autumn 2007, Volume 14, Issue 4

Waiver from Advice of Counsel Defense Does Not Extend to Trial Counsel: In re Seagate Technology, LLC

By Signe Naeve[1]


The Federal Circuit has added some clarification to the depth and breadth of the advice of counsel defense to wilful patent infringement and the scope of the waiver incumbent with this defense in its August 2007 ruling in In re Seagate Technology, LLC (“Seagate”).[2] By overruling Underwater Devices[3] and clarifying In re EchoStar,[4] the Federal Circuit held that relying on advice of counsel as a defense to wilful infringement does not waive the attorney-client privilege or the work product exemption with respect to trial counsel.


On July 13, 2000, Convolve, Inc. and the Massachusetts Institute of Technology (“Convolve”) sued Seagate alleging infringement of U.S. Patent Nos. 4,916,635 (“the ‘635 patent”) and 5,638,267 (“the ‘267 patent”).[5] Prior to the lawsuit, Convolve had retained an attorney, Gerald Sekimura, to provide an opinion regarding Convolve’s ‘635 and ‘267 patents and pending International Application WO 99/45535 (“the ‘535 application”), which had technology similar to Convolve’s application for a third patent, U.S. Patent No. 6,314,473 (“the ‘473 patent”).[6] The ‘473 patent issued in 2001 and Convolve amended its complaint in 2002 to assert infringement. Sekimura delivered three opinions to Seagate regarding the validity and enforceability of Convolve’s patents.[7]

Seagate notified Convolve of its intent to rely upon Sekimura’s three opinion letters to defend against wilful infringement.[8] Seagate disclosed Sekimura’s work product and made him available for deposition. Convolve then filed a motion to compel discovery of Seagate’s other counsel, including trial counsel, and the district court ordered disclosure concluding that Seagate had waived its attorney- client and work product protections with regard to any counsel.[9] The court also determined that the waiver began when Seagate first learned of the Convolve patents and lasted until the alleged infringement ceased.[10]

Based upon the trial courts orders, Convolve sought production of trial counsel opinions and noticed depositions of Seagate’s trial counsel. The trial court denied Seagate’s motion to stay and certification of an interlocutory appeal. The Federal Circuit then granted Seagate’s motion to stay the discovery orders, granted Seagate’s motion for a writ of mandamus, and sua sponte ordered an en banc review.


A. Advice of Counsel Defense

The trial court has discretion to award damages in excess of actual damages in patent cases. To award enhanced damages requires a showing of wilful infringement, which historically has created an affirmative duty “to exercise due care to determine whether or not [the potential infringer] is infringing” when he has actual notice of another’s patent rights.[11] “Such an affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before the initiation of any infringing activity.”[12] To counter an accusation of wilful infringement and to avoid enhanced damages, therefore, defendants will assert that they relied upon advice of counsel and that their actions were undertaken in good faith.[13]

B. Knorr-Bremse and In re EchoStar

Because the advice of counsel defense is not defined in the patent statute, parties must turn to case law to determine the metes and bounds of the defense. The Federal Circuit’s opinions in Knorr-Bremse and In re EchoStar, have helped to define these limitations. In Knorr-Bremse the Federal Circuit held that “invoking the attorney-client privilege or work product protection does not give rise to an adverse inference”[14] if an accused infringer fails to seek or to produce evidence of advice from counsel. In EchoStar, meanwhile, the Federal Circuit held that relying upon advice of in-house counsel waived the attorney-client privilege and the work product protection, to the extent that the work product was communicated with the alleged infringer.[15]

C. Extent of Waiver

Underwater Devices, Knorr-Bremse, and EchoStar, all lead the court to answer the question left unanswered by these cases: Whether the attorney-client privilege and work product production waivers from the advice of counsel defense should extend to trial counsel? In its en banc opinion, the Federal Circuit determined that it should not.[16]

In reaching this conclusion, the court reasons that Underwater Devices set a lower threshold for wilful infringement and overrules this decision accordingly.[17] The court abandons the duty of due care, emphasizing that “there is no affirmative obligation to obtain opinion of counsel.”[18] Thus, the court holds that “proof of wilful infringement permitting enhanced damages requires at least a showing of objective recklessness.”[19]

The slightly revised standard now requires a patentee to show “by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its action constituted infringement of a valid patent.”[20] Once this threshold is crossed, the patentee must also show that this risk “was either known or so obvious that it should have been known to the accused infringer.”[21]


When confronted with the issue whether the advice of counsel defense leads to a waiver of the attorney-client privilege and the work product protection with regard to trial counsel, the Federal Circuit determined that the waiver should not extend this far. If EchoStar is any indication, the court seemed to be leaning in favor of expanding, rather than contracting the waiver. However, Seagate demonstrates the court’s unwillingness to reach beyond EchoStar, and a general return to the underlying principles in the en banc decision in Knorr-Bremse.

This new delineation appears to provide additional definition to the scope of waiver when an accused infringer invokes the advice of counsel defense and it may be comforting to some. However, the Federal Circuit leaves a new revised standard for determining the duty of due care in its wake. Thus, patentees and accused infringers alike will look to future cases to “further develop the application of this standard.”[22]

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  • [1] Signe Naeve is the Assistant Director for CASRIP and a Part-Time Lecturer at the University of Washington School of Law.
  • [2] In re Seagate Technology, LLC, 487 F.3d 1360, 1366 (Fed. Cir. 2007)
  • [3] Underwater Devices Inc. v. Morrison-Knudsen Co. 717 F.2d 1380 (Fed. Cir. 1983).
  • [4] In re EchoStar Commc’ns. Corp., 448 F.3d 1294 (Fed. Cir. 2006). See Signe Naeve, Using Advice of Counsel to Fight Willful Damages: Liquid Dynamics and EchoStar, CASRIP Newsletter Vol. 13, Issue 2 (Spring/Summer 2006), for an analysis of EchoStar.
  • [5] See Seagate, 487 F.3d at 1366.
  • [6] Id.
  • [7] Id.
  • [8] Id.
  • [9] See Convolve, Inc. v. Compaq Comp. Corp., 224 F.R.D. 98, 101 (S.D.N.Y. 2004).
  • [10] Id.
  • [11] Seagate, 497 F.3d at 1368 (quoting Underwater Devices, 717 F.2d at 1389-90).
  • [12] Id.
  • [13] Seagate, 497 F.3d at 1369.
  • [14] Id. at 1370 (citing Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1344-45 (Fed. Cir. 2004) (en banc)).
  • [15] See Seagate, 497 F.3d at 1370 (citing EchoStar, 448 F.3d at 1299, 1302-04).
  • [16] See Seagate, 497 F.3d at 1371, 1375.
  • [17] Id. at 1371.
  • [18] Id.
  • [19] Id.
  • [20] Id.
  • [21] Id.
  • [22] Id.

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