United States Court of Appeals 

for the Federal Circuit 

__________________________ 

WI-LAN, INC., 

Plaintiff, 

and 

KILPATRICK TOWNSEND & STOCKTON LLP 

(FORMERLY KNOWN AS TOWNSEND AND 

TOWNSEND AND CREW LLP), 

Sanctioned Party-Appellant, 

v. 

LG ELECTRONICS, INC. AND 

LG ELECTRONICS USA, INC., 

Defendants-Appellees. 

__________________________ 

2011-1626 

__________________________ 

Appeal from the United States District Court for the 

Northern District of California in case no. 10-MC-80254, 

Judge Jeremy Fogel. 

__________________________ 

Decided: July 13, 2012 

__________________________ 

DAVID E. SIPIORA, Kilpatrick Townsend & Stockton 

LLP, of Denver, Colorado, argued for sanctioned partyappellant. With him on the brief were MATTHEW C.

HOLOHAN; and RICHARD S. MEYER, of Washington, DC; 
WI-LAN v. LG ELECTRONICS 2

and ADAM H. CHARNES and RICHARD D. DIETZ, of WinstonSalem, North Carolina. 

JAMES J. LUKAS, JR, Greenberg Traurig LLP, of Chicago, Illinois, argued for defendant-appellee. With him on 

the brief were RICHARD D. HARRIS and MATTHEW J.

LEVINSTEIN. 

__________________________ 

Before MOORE, CLEVENGER, and REYNA, Circuit Judges. 

Opinion for the court filed by Circuit Judge CLEVENGER. 

Opinion dubitante filed by Circuit Judge REYNA. 

CLEVENGER, Circuit Judge. 

The law firm of Kilpatrick Townsend & Stockton LLP 

(“Kilpatrick Townsend”) appeals contempt sanctions 

entered in connection with a subpoena served on it in the 

Northern District of California. Wi-LAN, Inc. v. LG 

Elecs., Inc., No. 10-mc-80254 [hereinafter Wi-LAN], 2011 

WL 3648531 (N.D. Cal. Aug. 18, 2011). Kilpatrick Townsend acknowledges that it did not comply with the court’s 

order to produce certain communications between 

Kilpatrick Townsend and its client, Wi-LAN, Inc. (“WiLAN”). Kilpatrick Townsend contends that the order to 

produce these communications was based on legal error 

by the district court and failed to properly apply Wi-LAN’s 

attorney-client privilege against production. Kilpatrick 

Townsend urges that its failure to comply was its only 

ethical course of action. 

Because the district court did not apply the proper 

analysis to the privilege question, we vacate its production order and remand. We also vacate the contempt 

sanctions; on remand the district court may revisit 

whether Kilpatrick Townsend’s failure to comply was 

contempt. 
3 WI-LAN v. LG ELECTRONICS

I 

This case arises from a patent dispute between WiLAN and accused infringers LG Electronics, Inc. and LG 

Electronics USA, Inc. (collectively, “LG”). Wi-LAN holds 

certain patent rights that it claims read on the “V-chip” 

technology for ratings-based blocking of television programs. 

In 2006, LG took a license from Wi-LAN’s predecessor-in-interest. LG subsequently took the position that it 

owed no royalties on the license because its televisions did 

not practice Wi-LAN’s technology. Wi-LAN disagreed. 

In January of 2010, Wi-LAN forwarded to LG a letter 

written by outside counsel Daniel Furniss of the law firm 

Townsend and Townsend and Crew LLP (“Townsend”), 

referred to herein as “the Townsend letter.” The letter 

bore a date of December 21, 2009. It named William 

Middleton, Wi-LAN’s general counsel and senior vice 

president, as addressee. It was marked 

“CONFIDENTIAL” on every page. And it contained 

detailed analysis of Wi-LAN’s patent rights as applied to 

LG’s technology, ultimately opining that LG was practicing Wi-LAN’s technology and so owed royalties on the 

license. There is no dispute that Wi-LAN’s disclosure of 

the letter to LG was intentional. Apparently, Wi-LAN 

hoped that the letter’s reasoning would convince LG to 

revise its position and begin paying royalties. 

The letter did not convince LG. On January 19, 2010, 

Wi-LAN sued for patent infringement in the Southern 

District of New York. It identified Townsend as litigation 

counsel on its complaint. 

Once fact discovery was underway, LG served a subpoena on Townsend’s offices in Palo Alto, California, for 

documents and testimony relating to the subject matter of 
WI-LAN v. LG ELECTRONICS 4

the Townsend letter. LG’s view, which it maintains in 

this appeal, was that any privilege Wi-LAN might have 

had over that material was absolutely waived by its 

voluntary disclosure of the Townsend letter. 

Townsend had then changed its name to Kilpatrick 

Townsend, and it disagreed. It moved the district court 

for the Northern District of California to quash the subpoena. Kilpatrick Townsend argued that the Townsend 

letter was disclosed during settlement negotiations and 

that Wi-LAN had expressly disclaimed use of the letter 

for any purpose in the New York litigation. In those 

circumstances, Kilpatrick Townsend contended that in 

fairness, any waiver of the attorney-client privilege 

should be limited to the Townsend letter itself. Kilpatrick 

Townsend also pointed to Federal Rule of Evidence 

502(a), which restricts the scope of an express waiver of 

the attorney-client privilege “in a Federal or State proceeding” to the matter disclosed unless fairness requires 

more extensive disclosure. Kilpatrick Townsend argued 

that Rule 502(a) should apply “in the context” of a federal 

proceeding, and that the Townsend letter should be seen 

as having been disclosed in such a context. Mot. Quash, 

Wi-LAN (N.D. Cal. Oct. 26, 2010), Dkt. #1, J.A. 102. The 

magistrate judge rejected Kilpatrick Townsend’s arguments. Mag. Order, Wi-LAN, 2011 WL 500072, at *3–4 

(N.D. Cal. Feb. 8, 2011). 

Kilpatrick Townsend unsuccessfully asked the district 

court for relief from the magistrate’s order, again arguing 

that any waiver should be limited to the Townsend letter 

and that “[f]airness does not compel a subject-matter 

waiver.” Mot. for Relief, Wi-LAN, at 5 (N.D. Cal. Feb. 22, 

2011), Dkt. #24, J.A. 264, 268; see also Wi-LAN, 2011 WL 

841271 (N.D. Cal. Mar. 8, 2011) (denying motion). 

Kilpatrick Townsend remained intransigent. It took the 

position that, privilege notwithstanding, LG’s subpoena 
5 WI-LAN v. LG ELECTRONICS

was drawn so narrowly as to reach only a small universe 

of material. This position was rejected both by the magistrate and the district court. 

Kilpatrick Townsend next filed a defective motion for 

certification of an interlocutory appeal, which the magistrate judge rejected on jurisdictional grounds. See WiLAN, 2011 WL 3648531, at *2 & n.5 (N.D. Cal. Aug. 18, 

2011) (discussing denial of this motion). 

At this point it had been several months since service 

of the subpoena, and Kilpatrick Townsend had yet to fully 

comply with the district court’s discovery orders. The 

magistrate judge ordered Kilpatrick Townsend to appear 

before the district court and show cause why it should not 

be held in contempt. The district court considered the 

case, found Kilpatrick Townsend in contempt, and entered 

sanctions in the amount of LG’s costs and fees. Id. at *3. 

Kilpatrick Townsend timely appealed. This court has 

jurisdiction to review a district court’s contempt order in 

an ancillary proceeding to a patent infringement case. 28 

U.S.C. § 1295(a)(1); Micro Motion Inc. v. Exac Corp., 876 

F.2d 1574, 1577–78 (Fed. Cir. 1989). 

II 

The applicability of attorney-client privilege in a case 

such as this, in which subject matter jurisdiction extends 

from the underlying presence of a federal patent law 

question, is determined by federal common law. Fed. R. 

Evid. 501. In an appeal from a district court’s handling of 

a subpoena, where the issues concerned are not unique to 

patent law, this court applies the law of the regional 

circuit of the court under whose authority the subpoena 

was issued. Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc., 

813 F.2d 1207, 1209 (Fed. Cir. 1987). For this appeal, 
WI-LAN v. LG ELECTRONICS 6

then, we must look to Ninth Circuit law in reviewing the 

district court’s rulings. 

The Ninth Circuit reviews trial court rulings as to the 

scope of attorney-client privilege de novo. United States v. 

Graf, 610 F.3d 1148, 1157 (9th Cir. 2010). It reviews 

contempt proceedings and the grant or denial of motions 

to quash for abuse of discretion. In re Cal. Pub. Utils. 

Comm’n, 892 F.2d 778, 780 (9th Cir. 1989); In re Grand 

Jury Proceedings, 33 F.3d 1060, 1061 (9th Cir. 1994). To 

the extent the Ninth Circuit has not spoken definitively 

on any legal issue raised by this appeal, we must predict 

how it would decide such a question. Heat & Control, Inc. 

v. Hester Indus., Inc., 785 F.2d 1017, 1026 (Fed. Cir. 

1986). 

III 

This appeal requires us to assess the consequences of 

Wi-LAN’s disclosure of the Townsend letter to its rival 

LG. We have no difficulty concluding that this disclosure 

implicated Wi-LAN’s attorney-client privilege. Though 

Kilpatrick Townsend suggests that the Townsend letter 

was always intended to be disclosed, and so was never 

really confidential (and so never really privileged), the 

available evidence demonstrates otherwise. The Townsend letter is marked “CONFIDENTIAL” on every page. 

It is addressed from an attorney to his client and contains 

detailed legal opinions. Kilpatrick Townsend has not 

offered evidence (as opposed to attorney argument) to 

justify departing from the obvious conclusion that the 

letter was at least initially confidential. We therefore 

agree with the district court that Wi-LAN’s disclosure of 

the letter waived both that confidentiality and Wi-LAN’s 

attorney-client privilege, at least as to the letter itself. 

The question presented by this appeal thus concerns 

not whether Wi-LAN waived its privilege, but how far the 
7 WI-LAN v. LG ELECTRONICS

waiver extended. Kilpatrick Townsend argues that under 

a fairness balancing test the scope of waiver should be 

narrow, essentially limited to the Townsend letter itself 

and reaching no other communication between Wi-LAN 

and Kilpatrick Townsend. LG, on the other hand, believes the waiver should be broad, exposing to discovery a 

wide swath of attorney-client communications, both preand post-dating the Townsend letter, relating to the 

subject matter addressed therein. Kilpatrick Townsend 

does not argue here, as it did below, that Federal Rule of 

Evidence 502 should govern the scope of waiver here, on 

the theory that disclosures “in the context of” a federal 

proceeding qualify for the benefit of the rule. 

It is well-established that when a client discloses to 

another person the content of a privileged attorney communication, the resulting privilege waiver may extend 

beyond the communication itself to other related matter. 

Weil v. Inv./Indicators, Research & Mgmt., Inc., 647 F.2d 

18, 24–25 (9th Cir. 1981). LG suggests that this is both 

the beginning and the end of the inquiry. It says Wi-LAN 

waived privilege as to the Townsend letter, so it ipso facto

waived privilege as to all other communications on the 

same subject matter. Kilpatrick Townsend, on the other 

hand, argues that basic considerations of fairness preclude a broad waiver in this case. It claims that LG is 

unable to articulate any prejudice it would suffer by 

assertion of privilege to matters beyond the four corners 

of the letter, and so there is no equitable reason to extend 

the waiver beyond the letter. Kilpatrick Townsend argues 

that by rejecting its attempt to incorporate such a fairness 

inquiry into assessing the scope of waiver, the district 

court legally erred. 

Kilpatrick Townsend’s plea for fairness balancing in 

this appeal resonates with certain trends in federal privilege law. The parties do not dispute that modern law 
WI-LAN v. LG ELECTRONICS 8

requires fairness balancing for certain varieties of privilege waiver. 

The most prominent such requirement derives, as already mentioned, from Federal Rule of Evidence 502(a). 

Enacted in 2008, the rule limited the effect of waiver by 

strongly endorsing fairness balancing. See Fed. R. Evid. 

502(a)(1) (extending waiver to undisclosed materials only 

where the disclosed and undisclosed matter “ought in 

fairness to be considered together”); see also Edward J. 

Imwinkelried, The New Wigmore § 6.12.7 & nn.579–86 

(2010 ed.) (discussing Rule 502 and noting that, prior to 

its adoption, “the prevailing view extended the waiver 

farther”). 

Although we have no occasion to decide if Rule 502(a) 

governs the scope of waiver resulting from the prelitigation disclosure in this case, the rule illuminates the 

policy question presented by this appeal. If a party who 

expressly waives privilege during litigation receives the 

protection of a fairness balancing test, as per Rule 502(a), 

should the same protection be made available to a person 

whose waiver occurred pre-litigation? The parties to this 

appeal present opposing positions. Kilpatrick Townsend 

argues that fairness balancing should always be available 

to one who expressly waives privilege pre-litigation. LG, 

on the other hand, argues that fairness balancing must 

never be available in those circumstances. According to 

LG, an extrajudicial waiver of the attorney-client privilege must always extend beyond the precise matter disclosed, regardless of the circumstances in which the 

waiver occurs and even when the waiver inures in no 

benefit whatsoever to the party waiving the privilege. 

The parties do agree that the Ninth Circuit has not 

spoken squarely on this issue, i.e., whether fairness 

balancing is either required or proscribed in this case. 
9 WI-LAN v. LG ELECTRONICS

Our task is to analyze the Ninth Circuit’s law and determine what that court would hold, were the question 

presented to it. Heat & Control, 785 F.2d at 1026. We 

conclude that the Ninth Circuit would find fairness balancing to be required. That court has favorably recognized the strong precedent of fairness balancing in the 

last twenty-five years. Equally importantly, we find 

nothing in the Ninth Circuit’s law to demonstrate that it 

has adopted a rule simultaneously requiring district 

courts to apply fairness balancing to privilege waivers 

made during litigation, but blocking them from applying 

it to extrajudicial waivers. 

In order to understand the law of the Ninth Circuit, it 

is necessary to begin with a case that the Ninth Circuit 

has several times cited with approval, though never 

adopted in its entirety. It is the Second Circuit case 

Auersperg ex rel. von Bulow v. von Bulow (In re von Bulow), 828 F.2d 94 (2d Cir. 1987). The facts were as follows. After Claus von Bulow was acquitted of assault, his 

attorney Alan Dershowitz wrote the well-known book 

Reversal of Fortune. With Mr. von Bulow’s permission, 

the book recounted portions of conversations the two men 

had in connection with the criminal proceedings. In 

subsequent civil litigation there was an attempt to discover the undisclosed portions of each conversation, on 

the theory that any privilege had been waived. The 

Second Circuit declined to extend such a waiver, holding 

that Mr. von Bulow’s express waiver of his privilege (i.e., 

his consent to publication of the book) had not prejudiced 

his opponent, and that there was therefore “no reason in 

logic or equity to broaden the waiver beyond those matters actually revealed.” von Bulow, 828 F.2d at 103. 

LG acknowledges von Bulow but contends that it 

should not control this case. First, it seeks to distinguish 

von Bulow as a case of implied waiver, not express 
WI-LAN v. LG ELECTRONICS 10

waiver. We disagree. The doctrine of implied waiver is 

invoked when a party makes the content of his attorney’s 

advice relevant to some claim or defense in the case. 

Even if the party does not expressly disclose the advice 

received, but only alludes to it, the privilege can be 

deemed waived by implication. See, e.g., Bittaker v. 

Woodford, 331 F.3d 715, 719 (9th Cir. 2003) (en banc); 

Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th 

Cir. 1992) (“Where a party raises a claim which in fairness requires disclosure of the protected communication, 

the privilege may be implicitly waived.”). In von Bulow it 

is clear that Mr. von Bulow had not attempted to make 

his attorney’s advice part of any claim or defense. von 

Bulow, 828 F.2d at 103 (noting that the disclosures were 

made “extrajudicially and without prejudice to the opposing party”). He voluntarily consented to publication of the 

book—an express waiver of his attorney-client privilege. 

Von Bulow cannot be distinguished as a case of implied 

waiver. 

Second, LG would have us interpret Ninth Circuit law 

to bar application of von Bulow to this appeal. We disagree. As discussed below, the Ninth Circuit has several 

times cited von Bulow with approval. And we find nothing in any of those cases to suggest that that court, 

though it approved of some aspects of von Bulow, nevertheless maintained a rule barring district courts from 

applying von Bulow’s central holding, fairness balancing, 

to cases of extrajudicial waiver. 

Chevron Corp. v. Pennzoil Co., 974 F.2d 1156 (9th Cir. 

1992), is illuminating. In that case, Pennzoil was charged 

with having waived its attorney-client privilege by two 

distinct acts, on theories of both express and implied 

waiver. The first act came before the litigation began: 

Pennzoil disclosed to an outside auditor legal memoranda 

addressing tax issues related, but subsidiary, to those in 
11 WI-LAN v. LG ELECTRONICS

the subsequent litigation. There was no dispute that 

Pennzoil had expressly waived privilege over these memoranda, and the district court limited the scope of the 

waiver just to the documents actually provided to the 

auditors. But Chevron contended on appeal that the 

resulting waiver was broader in scope, stripping Pennzoil’s privilege over attorney communications not only 

specifically addressing the “subsidiary” tax issues of the 

memoranda, but also removing privilege over communications addressing broader, related tax issues. The Ninth 

Circuit rejected that argument, and affirmed the limited 

scope of waiver set by the district court. Citing von Bulow, it held: 

Pennzoil was not required, as a result of 

the limited disclosure, to provide Chevron 

with every document or communication 

that touched on the more general tax deferral question. See In re von Bulow, 828 

F.2d 94, 102–03 (2d Cir. 1987) (disclosure 

of privileged communications did not 

waive privilege beyond “matters actually 

revealed”). 

Chevron, 974 F.2d at 1162. In other words, the Ninth 

Circuit adopted von Bulow’s fairness inquiry in analyzing 

express waiver, and affirmed the limited scope of the 

waiver resulting from the extrajudicial disclosure of the 

privileged matter. 

Chevron went on to analyze implied waiver. As part 

of its defense at trial, Pennzoil had urged that certain 

statements in corporate filings were made on advice of 

counsel, and the statements should therefore be held 

reasonable, but it asserted privilege against Chevron’s 

attempt to discover the details of this advice. Even 

though Chevron occurred before enactment of Rule of 
WI-LAN v. LG ELECTRONICS 12

Evidence 502(a)(1), the Ninth Circuit analyzed the scope 

of the waiver through a fairness lens. The Ninth Circuit 

thus held that Pennzoil could not use privilege “both as a 

sword and a shield.” Id. It therefore ordered Pennzoil to 

produce those communications on which it was relying for 

this defense, and reversed the district court’s holding to 

the contrary. Id. at 1163. Because this second aspect of 

Chevron concerns an implied waiver, in which a litigant 

deliberately injects the contents of his attorney’s advice 

into litigation, it does not govern this appeal. Wi-LAN 

has not made the advice of its attorney the focus of any 

claim or defense. Its waiver was not implied but express. 

But in any event, Chevron reveals application by the 

Ninth Circuit of fairness considerations to both express 

extrajudicial and in-court implied waivers of the attorneyclient privilege. 

The Ninth Circuit again relied on von Bulow in 

United States v. Mendelsohn, 896 F.2d 1183 (9th Cir. 

1990). Martin Mendelsohn was charged with conspiracy 

in connection with the interstate transportation of bookmaking paraphernalia. During the government’s preindictment investigation, Mr. Mendelsohn told Detective 

Felix, an undercover policeman, that Mr. Mendelsohn’s 

attorney had opined that sale of the paraphernalia was 

legal. Mr. Mendelsohn subsequently told the policeman 

that his attorney “did not know” what would happen if it 

was sold across state lines. As it happened, Mr. Mendelsohn’s statements to the policeman were false: the attorney had told him sale across state lines was unlawful. 

The district court held that Mr. Mendelsohn’s extrajudicial statement to Detective Felix constituted a limited 

waiver of the attorney-client privilege. On appeal, Mr. 

Mendelsohn argued that there had been no waiver of the 

privilege at all because he did not truthfully disclose what 

his attorney had told him. The Ninth Circuit agreed with 
13 WI-LAN v. LG ELECTRONICS

the district court that a waiver had occurred, but noted 

that “[t]he district court was careful to confine the attorney’s testimony to the subject of Mendelsohn’s limited 

waiver.” Mendelsohn, 896 F.2d at 1189. The Ninth 

Circuit saw Mendelsohn as different from the kind of case 

in which a court was asked to expand a limited extrajudicial waiver to a much larger field, and cited von Bulow as 

that kind of case. Describing von Bulow as an “extrajudicial disclosure of privileged communications” that did not 

“waive privilege beyond ‘matters actually revealed,’” the 

Ninth Circuit emphasized that “[t]he district court did not 

err with regard to the waiver.” Id.

LG would have us read Mendelsohn as a case strongly 

in its favor, as it can point to the language in the Ninth 

Circuit opinion that the waiver was limited to “the subject 

of Mendelsohn’s limited waiver,” and can argue that the 

waiver approved by the Ninth Circuit went beyond the 

words stated by Mr. Mendelsohn to Detective Felix to the 

general subject matter of the words stated. We think 

such a reading of Mendelsohn is strained, given the 

context in which the Ninth Circuit placed the appeal. The 

government was not asking the Ninth Circuit to extend 

the waiver beyond the matter actually disclosed, and the 

Ninth Circuit’s opinion is careful to emphasize the narrowness of the waiver and to connect the facts of the case 

to the holding in von Bulow. The clearly better reading of 

the Ninth Circuit opinion is that it understood the district 

court to have correctly limited the extrajudicial waiver to 

the matter actually disclosed. Finally, nothing in the 

Mendelsohn opinion suggests that the Ninth Circuit in 

that case enforced the rule LG seeks here, that an extrajudicial waiver always extends beyond the matter actually 

disclosed. 

The Ninth Circuit’s most recent discussion of von Bulow is in the en banc case Bittaker v. Woodford, 331 F.3d 
WI-LAN v. LG ELECTRONICS 14

715 (9th Cir. 2003) (en banc). Lawrence Bittaker, a 

prisoner on California’s death row, filed a habeas petition 

claiming ineffective assistance of counsel. The government argued that, by raising the issue and by expressly 

discussing certain aspects of the representation he received, Mr. Bittaker waived attorney-client privilege to 

such an extent that the government could not only learn 

the details of Mr. Bittaker’s communications with his 

attorney, but could also disseminate them to outside 

agencies. 

The Ninth Circuit acknowledged that there had been 

a waiver of privilege, but rejected the government’s plea 

to distribute the information beyond the litigation. 331 

F.3d at 721. It decided the case on implied waiver 

grounds. But, apparently in response to the government’s 

arguments concerning express waiver, the court offered 

the following footnote: 

 Although we do not decide this case 

under the express waiver doctrine, we 

note that the law in this area is not as settled as the state would have us believe. 

See, e.g., Diversified Indus., Inc. v. Meredith, 572 F.2d 596, 604 n.1, 611 (8th Cir. 

1977) (holding that voluntary disclosure of 

information to the SEC resulted only in a 

limited waiver and that the information 

remained privileged in subsequent private 

litigation); In re von Bulow, 828 F.2d 94, 

103 (2d Cir. 1987) (“[W]here . . . disclosures of privileged information are made 

extrajudicially and without prejudice to 

the opposing party, there exists no reason 

in logic or equity to broaden the waiver 

beyond those matters actually revealed.”); 

Christopher B. Mueller & Laird C. 
15 WI-LAN v. LG ELECTRONICS

Kirkpatrick, Evidence: Practice Under the 

Rules § 5:28, at 541 (2d ed. 1999) (noting 

that “[t]he trend of modern cases” is toward finding only limited waivers). 

Id. at 720 n.5 (alterations 9th Cir.’s, citations edited). 

LG points out, rightly, that this footnote is dictum. 

But in light of our duty to predict how the Ninth Circuit 

would resolve this appeal, it is persuasive dictum. It 

indicates that the logical path we have laid out herein, 

the path leading through von Bulow’s fairness inquiry, is 

headed in the right direction. 

In deciding whether Ninth Circuit law bars or mandates fairness considerations when determining the scope 

of an express extrajudicial waiver of the attorney-client 

privilege, we note that the Ninth Circuit is not averse to 

looking to other circuits for guidance on new issues of law. 

Am. Vantage Cos., Inc. v. Table Mountain Rancheria, 292 

F.3d 1091, 1098 (9th Cir. 2002) (“[A]lthough we are by no 

means compelled to follow the decisions of other circuits, 

there is virtue in uniformity of federal law as construed 

by the federal circuits.”) (internal quote marks omitted). 

We thus think the Ninth Circuit would appreciate the 

heavy weight of current authority that comes down on the 

side of employing fairness considerations to decide the 

scope of waivers. E.g., United States v. XYZ Corp. (In re 

Keeper of the Records), 348 F.3d 16, 24 (1st Cir. 2003); von 

Bulow, 828 F.2d at 103; Conkling v. Turner, 883 F.2d 431, 

434 (5th Cir. 1989); In re Grand Jury Proceedings Oct. 12, 

1995, 78 F.3d 251, 256 (6th Cir. 1996); Cox v. Adm’r U.S. 

Steel & Carnegie, 17 F.3d 1386, 1417–18 (11th Cir. 1994), 

modified, 30 F.3d 1347 (11th Cir. 1994); United States v. 

White, 887 F.2d 267, 271 (D.C. Cir. 1989); see also Paul R. 

Rice, 2 Attorney-Client Privilege in the United States

§ 9:81 & n.2 (2011 ed.) (citing fairness as the driving 
WI-LAN v. LG ELECTRONICS 16

consideration in assessing scope of waiver); Imwinkelried, 

supra, § 6.12.7 n.613 (with accompanying text) (arguing 

that fairness considerations would mitigate for limited 

waiver in extrajudicial disclosure situations). We think 

the Ninth Circuit would align itself with the substantial 

weight of authority. 

As between the two directions put forward by the parties—one requiring fairness balancing for extrajudicial 

discloses, the other barring it—we conclude that the 

Ninth Circuit’s cases support the former far better than 

the latter. The Ninth Circuit has repeatedly endorsed 

fairness balancing in a variety of circumstances; more to 

the point it has never set forth, either expressly or inherently, any rule barring fairness’s application to extrajudicial disclosures. Nor do the Ninth Circuit’s cases suggest 

any policy reason why the fairness protections available 

for express disclosures in litigation should be unavailable 

to those who waive privilege pre-litigation. Such a rule, 

which LG promotes in this appeal, seems to us bad policy, 

and we decline to adopt it on the Ninth Circuit’s behalf. 

For the foregoing reasons, we conclude that the district court erred by rejecting considerations of fairness—

i.e., whether LG would be unfairly prejudiced by WiLAN’s assertion of privilege against discovery into attorney-client communications beyond the four corners of the 

Townsend letter—when assessing the scope of waiver 

here. None of the orders considering scope of waiver in 

this case applied such a test. However, we decline the 

parties’ invitation to evaluate fairness ourselves in the 

first instance. We therefore vacate the magistrate and 

district court’s orders concerning the scope of Wi-LAN’s 

waiver and remand for further proceedings. 

We also vacate the district court’s entry of contempt 

sanctions against Kilpatrick Townsend but note the 
17 WI-LAN v. LG ELECTRONICS

district court’s discretion to revisit the issue on remand. 

As a general matter the Ninth Circuit defers to a trial 

court’s finding of contempt. Cal. Pub. Utils. Comm’n, 892 

F.2d at 780. Even in this appeal, where we agree with 

Kilpatrick Townsend that the district court committed 

legal error in its application of privilege doctrine, that is 

not the same as excusing failure to comply with a judicial 

order. In some cases one who disputes a subpoena’s 

lawful scope has no alternative but to invite a contempt 

citation in order to obtain appellate review. Here, however, Kilpatrick Townsend had options that it did not 

pursue. Nevertheless, it is not for this court to determine 

whether and to what extent Kilpatrick Townsend should 

pay a penalty for its failure to either properly move the 

district court for certification of an interlocutory appeal or 

to seek mandamus review from this court when faced with 

an unlawful production order. 

VACATED AND REMANDED

COSTS

No costs. 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

WI-LAN, INC., 

Plaintiff, 

and 

KILPATRICK TOWNSEND & STOCKTON LLP 

(FORMERLY KNOWN AS TOWNSEND AND 

TOWNSEND AND CREW LLP), 

Sanctioned Party-Appellant, 

v. 

LG ELECTRONICS, INC. AND 

LG ELECTRONICS USA, INC., 

Defendants-Appellees. 

__________________________ 

2011-1626 

__________________________ 

Appeal from the United States District Court for the 

Northern District of California in case no. 10-MC-80254, 

Judge Jeremy Fogel. 

__________________________ 

Before MOORE, CLEVENGER, and REYNA, Circuit Judges. 

REYNA, Circuit Judge, dubitante. 

The majority embarks on a winding course as it explores Ninth and other regional circuit case law, and 

evidentiary rules. At the start of its journey, the majority 
WI-LAN v. LG ELECTRONICS 2

recognizes, “The parties do agree that the Ninth Circuit 

has not spoken squarely on this issue, i.e., whether fairness balancing is either required or proscribed in this 

case.” Maj. Op. at 8. 

Still, the majority discerns a trend in the law and on 

that basis takes a guess that the Ninth Circuit, if its hand 

were at the helm, would hold that there must be a fairness balancing in the context of express extrajudicial 

waivers. 1

I examine the trend and find in it no gates that lead 

to secure blue water. Indeed, I find that even a route 

that lies opposite the route charted by the majority is as 

good a route as any. 

Thus, while instinct tells me the majority could be 

correct, I am concerned that our heading is not based on 

an accurate bearing. As I cannot prove or disprove our 

result, I go along with the majority—but with doubt. 

 1 See Maj. Op. at 8-9. Citing numerous cases from 

other circuits, the majority opines that “the Ninth Circuit 

would appreciate the heavy weight of current authority 

that comes down on the side of employing fairness considerations to decide the scope of waivers.” Id. at 15-16.