## United States Court of Appeals for the Federal Circuit

MISCELLANEOUS DOCKET NOS. 803, 805

IN RE ECHOSTAR COMM UNICATIONS CORPORATION, ECHOSTAR DBS CORPORATION, ECHOSTAR TECHNOLOGIES CORPORATION, and ECHOSPHERE LIMITED LIABILITY COMPANY, and MERCHANT & GOULD P.C., Petitioners. ON PETITION FOR WRIT OF MANDAMUS

Before SCHALL, GAJARSA, and PROST, Circuit Judges

. GAJARSA, Circuit Judge

. O R D E R EchoStar Communications Corporation, EchoStar DBS Corporation, EchoStar Technologies Corporation, and Echosphere Limited Liabi lity Company (collectively “EchoStar”) petition for a writ of mandamus, in Miscellaneous Docket No. 803, to direct the United States District Court for the Eastern District of Texa s, in case 2:04-CV-1, to vacate its September 26, 20 05 and October 6, 2005 orders t hat compelled EchoStar to produce documents created by the law firm Merchant & Gould P.C. that EchoStar asserts are protected from discovery by t he work-product doctrine. Merchant & Gouldmoves for leave to intervene in Miscella neous Docket No. 803 and submits its own petition for a writ of mandamus, filed as Miscellaneous Docket No. 805. TiVo, Inc

. opposes the petitions and respon ds to the motion for leave to intervene. EchoStar and Merchant & Gould reply. We gr ant Merc hant & Gould’s unoppos ed motion f o r leave to intervene in Miscellaneous Dock et No. 803. The motions for leave to file the replies are also granted. To the ext ent set forth below, we grant the petition for mandamus.
I TiVo sued EchoStar for infringement of its U.S. Patent No. 6,233,389 (“the ’389 patent”). In respons e to the allegation of willful infringement, EchoStar asserted the defense of reliance o n advice o f counsel. Pr ior to the filing of the action, EchoStar relied on advice of in-house counsel. Afte r the acti on was filed, EchoStar obtained additional legal advice from Me rchant & Gould but elect ed not to r e ly on it. Presumably to explore further EchoStar’s state of mind in determining t hat it did not infringe the patent, TiVo sought production of document s in the posses s ion of Ec hoStar and Merchant & Gould. The district court held t hat by relying on adv ice of in-house couns el EchoStar waived its attorney-client priv ilege and attorney work-product immunity relating to advice of any couns el regarding infringement, incl uding Merchant & Gould. The district court indic a ted that the scope of the waiver inclu ded c o mmunications made either before or after the fili ng of the complaint and any work product, whether or not the product was communicated to EchoStar. The district court also held that EchoStar could redact information related only to tr i a l preparation or information unrelated to infringement. EchoStar produced communications , including two infringement opinions

Misc. 803, 805 2from Merchant & Gould, but did not produce any work product related to the Merchant & Gould opinions. 1 Thereafter, the parties sought clarificati on of the district c ourt’s order. TiVo argued that the district cour t should order EchoStar to pr oduce all Merchant & Gould documents that relate to t he advice-of-counsel defense, even if EchoStar was not in possession of the documents because they we re never communicated to EchoStar

. EchoStar argued that it shou ld only be required to pr oduce documents that were provided to it by Merchant & Gould. On October 5, 2005, the district court i ssued an order that clar ifi e d its previous order and s t ated that the waiver of immunity extended to all work product of Merchant & Gould, whether or not communi cated to EchoStar. The district court determined that the docum ents could be relevant or lead to the discovery of admissible evidenc e because they might contain information that was conveyed to EchoStar, even if the documents were not themselves conveyed to EchoStar. EchoSt a r petitions this court for a writ of mandamus with respect to the Merchant & Gould doc uments not provided t o EchoStar, 2 challenging the district court’s rulings . Merchant & Gould moves for leave t o intervene in EchoStar’s petition and submits it s own petition for a w r it of mandamus.
II
T h e remedy of mandamus is av ailable in extr aordinary s i tuat ions to corr ect a c l ear abuse of discr et ion or us ur pa ti on of judi cial pow er. In re Ca lm ar, I n c. , 854 F.2d 461, 464 (Fed. Ci r. 1988). A par ty seeki ng a w r i t bears the burden of pr ov ing that it has no other

1 EchoStar also prov ided notes and co mmunications relating to infringement prepared by another fi rm. 2 No in-hous e counsel documents are at issue in the petition.
Misc. 803, 805 3means of obtaining t he r e lief des i r e d, Mallard v. U.S. Dist. Court , 490 U

. S. 296, 309 (1989), and that t he r i ght to is s u ance of th e writ is “c le ar and i ndisputable,” Allied Chem. Corp . v. Da if lon, I n c. , 449 U. S. 33, 35 ( 1 980)

. A wr it of mandam us may be soug ht whe n the chal lenged orde r t u r n s on quest i on s of privilege. In re R egents of U n iv. of Cal

. , 101 F.3d 1386, 13 87 (Fed. Ci r. 1996); In re Pi oneer H i

- B r ed In t’l , In c

. , 238 F.3d 1370, 1374 (Fed. Ci r. 2001). Ec hoSt a r argues that a writ of mandam us should is s u e, am ong other r e as ons , because the distri ct court er red in determining that (1) the attorney-cli ent pri v ilege had been waived and (2) the wai v er of any pri v ilege ex tended to wo rk -p rodu c t th at was not communi cated to E c hoS tar because, inter alia , the documents are not relev a nt to wheth e r E c hoS tar had a good fai t h belief that it did not infringe. Merc hant & Gould al so argues that the distr i ct court er red in r e quir ing the pr oduc tion of doc u ments that Merchant & Gould did not provi de to EchoS tar becaus e any s u c h doc u m ent s could no t be relevant to whether
E c hoS tar reasonabl y had a good fai t h belief that it did not infringe, based upon advi c e from counsel. In response, TiVo argues, inter alia , that (1) Ec hoSt ar is no t ent i t l ed t o a wr it of mandam us bec a us e it has c o m p li ed, in large part, wit h the di stri ct court orders i t now challenges, (2) the att o rney- c lient pr iv ilege was waived when EchoSta r asserted a defense of reliance on advice of in- h ous e couns e l, (3) t h e r e levanc e of t h e M e rchant & Gould documents can be dete rmined when they ar e offered as evidence , and (4) even though the Merchant & Gould docum ents may not have been provided to E c hoStar, they m a y cont ain inf o rmat i on that was ot her w i s e conveyed to E c hoS tar.

Misc. 803, 805 4Regarding TiVo’s first ar gument, that EchoS t ar is not enti tled to mandamus bec a us e it has complied in lar g e part wit h t h e or der, we do not belie ve i t is a re qui re me nt tha t a pa rty re fu se to co mp ly a t all wit h an or der, if it s e ek s t o c hallenge only a part of t h e

or der. Suc h a r u le woul d encourage parties not to c o m p ly wit h dist rict c o urt or ders t h at, in large part, they do not challe nge, s o t hat they c o uld pres erve a challenge o n ly to the porti ons that they believe are erroneous. EchoS tar cannot undo the di scl os ures it has made to T i Vo, but it can c h a llenge t h e port ions of the or der that require addi tional di scl osures. We now turn to the more substant ive arguments underlyi ng this petition.
III In this petition, we apply our own law, rather than the law of the regional circuit. This case involves the extent to which a party waives its attorney-client privilege and work-product immunity when it asserts the advice-of-counsel def ense in res p onse to a charge of willful pat ent infringement. “Federal Circuit law applies when deciding whether particular written or other materials are discoverabl e in a patent case, if those materials relate to an issue of substantive patent law. ” Advanced Cardiovascular Sys. v. Medtronic, Inc. , 265 F.3d 1294, 1307 (Fed. Cir. 2001). A remedy for willful patent infringement is specif ically pr ovided for in the Patent Act, see 35 U.S.C. §§ 284-285; therefore, questions of privil ege and discoverability that ar ise from assertion of the advice-of-counsel defense nece ssarily inv o lve issues of substantive patent law, see In re Spalding Sports Worldwide, Inc. , 203 F.3d 800, 803-04 (Fed. Cir. 2000) (applying Federal Cir cuit law to question of attorney-client privilege between patent at torney and patentee).

Misc. 803, 805 5A EchoStar first challenges the district court’ s holding t hat EchoSt ar waived the attorney-client privileg e when it asserted its defense in response to the charge of willful infringement. The attorney-client privile ge protects disclosure of communication s between a client and his attorney. United States v. Zolin , 491 U.S. 554, 562 (1989) ; Upjohn Co. v. United States , 449 U.S. 383, 389 (1981). Once a party announces that it will rely on advice of counsel, for example, in response t o an asser t ion of wil lful infringement, the attorney -client privilege is wa ived. “The widely applied standard for determining the scope of a waiver of attorney-client privilege is that the waiver applies to all other commun ications relating to the same subject matter.” Fort James Corp. v. Solo Cup Co. , 412 F.3d 1340, 1349 (Fed. Cir. 2005). EchoStar argues that it did not assert the advice-of-counsel defense bec ause it intended to rely only on an “in-house investi gation supervised by in-hous e counsel. ” The district court held that the opinion formed by in- house counsel and conveyed to EchoStar executiv es, although not a traditional opinion of couns e l, constituted a legal opinion. We see no error in the di strict court’s determination. EchoStar summarily asserts th at “an inte rnal investigation involving in-house engineers and in-house counsel is simply a different subject matter from legal opin ions commissioned at a later date from outside lawy ers. ” This argument is without merit. Whether counsel is empl oyed by the c lient or hired by outside contract, the offered advice or opinion is advice of counsel or an opinion of counsel. Use of in-house counsel m a y affect the strength of the defense, but it does not affect the legal nature of

Misc. 803, 805 6the advice. See Underwater Devices, Inc. v. Morrison-Knudsen Co. , 717 F.2d 1380, 1390 (Fed. Cir. 1983) ( overruled in part on other grounds by Knorr-Brems e Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp. , 383 F.3d 1337 (Fed. Cir. 2004) ( en banc )). Thus, when EchoStar chose to rely on t he advice of in-house counsel, it waived the attorney-client priv ilege with r egard to any attorney-client com m unications relating to the same subject matter, in cluding communications with c ounsel other than in-house counsel, which would include communi cations with Merchant & Gould. See Akeva LLC v. Mizuno Corp. , 243 F. Supp. 2d 418, 423 (M.D.N.C. 2003).
B EchoStar next asser t s that the district court’s order cast too wide a net by including within the waiver’s s c ope document s that were nev er communicated from Merchant & Gould (the attorney) to EchoStar (the client). The di stri ct court stated: EchoStar had the benefit of choice , as explained by the Federal Circuit in Knorr-Bremse Systeme Fuer Nu tzfahrzeuge GmbH v. Dana Corp. , of whether to introduce [in-hous e counsel’s] opinion. But once EchoStar c hose to introduce the opinion, it opened to inspection all related advice sought and devel oped regarding Ec hoStar’s potential infr ingement of the ‘389 patent. Regardless of w hen the opinions or materials were transcribed or communicated to EchoSt ar, such information nec essarily relates to the opinion being offered by [in-house counsel] and goes to show Echo Star’s state of mind with respect to willfu l infringement. This is particularly true where, as is the ca se here, EchoStar’s willfulness witnes s was privy to the substance of the willfulness opinions dev e loped by outside cou n sel both pre- and post-filing. . . . TiVo, Inc. v. EchoStar Comm. C o rp. , No. 2 : 04-CV-1, at 13 (E.D. Tex

. Sept. 26, 2005) (“September Order”). Noting that district courts had ruled differently on whether the waiver of work-product protection cover ed documents that were not disclosed to the client, the district court discussed t he reasons for requiring production of uncommunicated work product:

Misc. 803, 805 7Still, other courts have mandat ed production of all materia l regardless of whether they were discl os ed, maintaining that the discovery of such information is necessary to unc over what the cli ent was actually told by opinion couns e l. See Aspex Eyewear Inc. v

. E’Lite Optik Inc. , 276 F. Supp. 2d 1084, 1092-93 (D. Nev. 2003); Novartis Pharms. Corp. v. EON Labs Mfg., Inc. , 206 F.R.D. 396 (D. Del. 2002). In Novartis , the court stated, “it is critical fo r the patentee to have a full oppor tunity to probe, not only the state of mind of the infringer, but also t he mind of the i n fringer’s lawyer upo n wh ich the infring e r so firmly re lied.” Id . at 399. The rationale behind this approach is that, by imposing broad waiver, the advice of counsel defense will only be invoked by “infringers who prudently and sincerely s ought competent advice fr om competent counsel . . .” and “[m]oreover, focusing on the infringer’s waiver rather t han state of mind may reduc e the chances of legal gamesmanship creepi ng into the practice of rendering infringement and validity opinions.” Id . “[I]f negative information was important enough to r educe to a memorandum, there is a reasonable possibility that the information was convey ed in some form or fashion to the client.” Beneficial Franchise Co. Inc. v. Bank One N.A. , 205 F.R.D. 212, 218 (N.D. Ill. 2001). September Order at 11-12. In a subsequent order, the district c ourt further explained why the scope of the waiver should inc l ude work product t hat was not disclos ed to EchoStar: Were discovery of “uncommunicated” materials not allowed, accused infringers c ould easily shield themse lves from disclos ing any unf avorable analys is by simply requesting that thei r opinion counsel not send it. This would be unfair. TiVo, Inc. v. EchoStar Comm. Corp. , No. 2:04-CV-1, at 3 (E.D. Tex

. Oct. 6, 2005 ) (“October Order”). We review the district court’s determinat ion as to the s c ope of the waiv er for an abuse of discretion. In re Pioneer , 238 F.3d at 137 3 n.2 (“[I]t appears that virtually a l l the circuit s review the dec ision of a dist rict court [regarding waiver of privilege] underlying a petition for writ of mandamus for abuse of discr etion.”). EchoStar asserts that to apply the broad scope employed by the district c ourt to the waiver of both

Misc. 803, 805 8attorney-client privilege and wor k -product doc trine was an abuse of discretion. We
agree. The attorney-client privilege and the work -product doctrine, though related, are two distinc t concepts and waiv er of one does not necessarily wa ive the other. Se e Carter v. Gibbs , 909 F.2d 1450, 1451 (Fed. Cir. 1990) ( en banc ), superseded in nonrelevant part , Pub. L. No. 103-424, § 9(c), 108 Stat. 4361 (1994), as recognized in Mudge v. United States , 308 F.3d 1220, 1223 (Fed. Cir. 2002); see also United States v. Nobles , 422 U.S. 225, 238 n.11 (1975). In gener al, a party may obtain discovery of any matter that (1) is “not privileged” and (2) “is relev a nt to the claim or defense of an y party.” Fed. R. Civ. P. 26(b)(1). Among other things, attorney-client com m unications are designated as “privileged.” See Upjoh n , 449 U.S. at 389; Genentech, Inc. v. Int’l Trade Comm’n , 122 F.3d 1409, 1415 (Fed. Cir. 1997). “The attorney-client privilege protects the confidentiality of communicati ons between attorney and client made for the purpose of obtaining legal advic e.” Id. W e recogniz e the priv ilege in order to promote full and frank communication between a client and his attorney so that the client can make well-informed legal decis i ons and co nform his ac tivities to t he law. See Upjoh n , 449 U.S. at 389; XYZ Corp. v. United States , 348 F.3d 16, 22 (1st Cir. 2003). This privilege is at the discr etion of the client. Knorr-Bremse , 383 F.3d at 1345; Carter , 909 F.2d at 1451. The client can waive the at to rney-client privilege wh en, for instance, it uses the advice to establish a defense. See id. However, se lective waiver of the privilege may lead to the ine quitable result that the wa iving party could waive its privilege for favorable advice while assert ing its privile ge on unfavorable advice. XYZ Corp. , 348 F.3d at 24. In such a case, the party uses the attorney-client privilege as

Misc. 803, 805 9both a sword and a shield. Id. ; Fort James Corp. , 412 F.3d at 1349. To prevent such abuses, we recogniz e that when a party def ends its actions by disclos ing an attorneyclient communication, it waives the atto rney-client privilege as to all s u ch communications regarding the same subject matter. Id. In contrast to the attorney-client priv ilege, the work-product doctrine, or workproduct immunity as it is also called, c an protect “documents and tangible things ” prepared in anticipation of litigation that ar e both non-privileged and releva nt. Fed. R. Civ. P. 26(b)(3). Unlike t he attorney-client privilege, wh ich protects all communication whether wr itten or oral, work-product immuni ty protects documents and tangible things, such as memorandums, letters, and e-mails. See generally Judicial Watch, Inc. v. Dep’t of Justice , 432 F.3d 366 (D.C. Cir. 2005). We recogniz e work-product immunity because it promotes a fair and ef ficient adversarial system by prot ecting “the attorney’s thought processes and legal r e commendations” from the prying eyes o f his or h e r opponent. Genentec h , 122 F.3d at 1415 (citations omitted); accord Hickm an v. Taylor , 329 U.S. 495, 511-14 (1947) (“P roper preparation of a client ’s c a se demands that he assemble information, sift what he cons ider s to be the relevant from the irrelevant facts, prepare his legal theories and plan his strategy without undue and needles s interference. . . . Were such materials open to opposing counsel on mere demand, much of w hat is now put down in writing w ould remain unwritten. . . . Inefficiency, unfairness and sharp practices woul d inevitably develop in the giv i ng of legal a d vice and in the preparation of cases for trial. Th e effect on the legal profession would be demoralizing. And the interests of the cli ent s and the cause of justice would be poorly served.”); see als o Nobles , 422 U.S. at 237; Coast a l States Gas Corp. v. Dep’t of

Misc. 803, 805 10Energy , 617 F.2d 854, 864 (D.C. Cir. 1980). Essentially, the work-product doctrine encourages attorneys to write down their thoughts and opinions with the knowledge tha t their opponents will not r ob them of the fruits of their labor. Hick m an , 329 U.S. at 511; Id. at 516 (Jackson, J. concurring ) (“[A] common law trial is and always should be an adversary proceeding. Discovery was hardl y intended to enable a learned pr ofession to perform its functions either without wits or on wits borrow ed from the adversary.”); United States v. Adlman , 68 F.3d 1495, 1501 (2d Cir. 1995) (“The purpose of the doctrine is to establis h a zone of privacy fo r strategic litigation pl anning and to prevent one party from piggybacking on t he adversary's preparation.”); Coastal States , 617 F.2d at 864 (noting that the effect of no immunit y would mean “less work-product would be committed to paper, w h ich might harm the quality of trial preparation”). Like the attorney-client privilege, however, the work-product doctrine is not absolute. See In re Martin Marietta Corp. , 856 F.2d 619, 626 (4t h Cir. 1988 ). First, a party may discover certain types of work product if they have “substantial need of the materials in the preparation of the party’s case and t hat the pa rty is unable without undue hardship to obt ain the substantial equivalent . . . by other means.” Rule 26(b)(3). This rule, however, only allows discovery of “factual” or “non-opinion” work pr oduct and requires a court to “protect against the disc losure of the mental impressions , conclus i ons, opinions , or legal theories of an attorney or other representative.” Id. ; accord United States v. Adlman , 134 F.3d 1194, 1197 (2d Cir. 1998); Martin Marietta Corp. , 856 F.2d at 626. Second, a party may discover work product if the party waives its immunity. Se e id. at 622-23; Thorn EMI N. Am. v. Micron Tech. , 837 F. Supp. 616, 621 (D. Del. 1993).

Misc. 803, 805 11Howev e r, work product waiver is not a broad waiv er of all work product related to the same subject matter like the attorney-client privilege. Martin Mari etta Corp. , 856 F.2d at 626. Instead, work-product waiver only ext ends t o “factual” or “non-opinion” work product concerning the same subject ma tter as the dis c losed wor k product. See id. at 625 (noting that a party “impliedly waived the work -product privilege as to all nonopinion work-product on the same subj ect matter as that disclos ed.”) ( citing Nobles , 42 2 U.S. at 239). We recognize that the line bet ween “factual” work product and “opinion” work product is not always distinct, especially when, as here, an a ttorney’s opinion may itself be “factual” work product. When faced with the distinc t ion between where t hat line lies , however, a district court s hould balanc e the policies to prev ent sword-and-shield litigation tactics with the policy to protect work product. That being said, we recogniz e at least three categories of work product that are potentially relevant to the advice- of-counsel defense here. They include: (1) documents that embody a communication between the attorney and client concerning the subjec t matter of the case, such as a traditional op inion letter; (2) docum ents analyzing the law, facts, trial strategy, and so forth that reflec t the attorney’s mental impressions but wer e not given to the client; and (3) document s that discuss a communication between attorney and client c oncerning the subject matter of the case but are not themselve s communications to or from the client. See T horn EMI , 837 F. Supp. at 622-623. 3 A s t o the first category, we already not ed in sect ion A that when a par ty relies on the adviceof-counsel as a defense to willfu l infring e m ent the party waives its attorney-clien t

3 We by no means anticipate that all work product in ev ery case will fit into one of these three categories.
Misc. 803, 805 12privilege f o r all communications between the attorney and client, inc l uding any documentary communications s u ch as opinion letters and memoranda. See also Ak eva LLC , 243 F

. Supp. 2d at 423. 4 As to the other two categor ies, scholars have n o ted that our prior opinions do not clearly defi ne the scope of the work-product waiver. 5 A s a result, the district courts that have address ed this iss ue are split on just how far to extend that scope. Compare Thorn EMI , 837 F. Supp. at 621-623 and Steelcase, Inc. v. Haworth, Inc. , 954 F. Supp. 1195, 1198-99 (W.D. Mich. 1997) with Mushroom Assoc. v. Monterey Mushrooms, Inc. , 24 U.S.P.Q.2d 1767 (N .D. Cal. 1992); FMT Cor p . v. Nissei ASB Co. , 24 U.S.P. Q.2d 1073 (N.D. Ga. 1992); and Handgar ds, Inc. v. Johnson & Johnson , 413 F. Supp. 926 (N.D. Cal. 1976). As we discuss in more detail below, w e conclude that waiver extends to the third category but does not extend so far as the second. By asserting the adv ic e-of-c ounsel defens e to a charge of willful infr ingement, the accused infringer and his or her attor ney do not give thei r opponent unfettered discretion t o rummage through all of their files and pillage all of their litigation s t rategies.

4 EchoStar c ontends that waiver of opi nions does not extend to advice and work product given after litigation began. While this may be true when the work product is never communicated to the client, it is no t the case when the advice is relevant to ongoing willful infringement, so long as that ongoing infri ngement is at issue in the litigation. See Akev a LLC , 243 F. Supp. 2d at 423 (“[O]nce a party asserts the defense of advice of counsel, this opens to inspecti on the advice received during the entire course of t he alleged infringement.”); see also Crystal Semiconductor Corp. v. Tritech Microelectronics Int’l, Inc. , 246 F

. 3d 1336, 1351-1353 (Fed. Cir . 2001) (noting that an infringer may continue its infringement after not ification of the patent by filing suit and that the infringer has a duty of due care to av oid infringement after such notification). 5 See David O. Taylor, Wasting Resources: Reinventing the Scope of Waiver Re sulting from the Advice-of-Cou n se l Defen s e to a Charge of Willful P a tent Infringement , 12 Tex. Intell. Prop. L.J. 319, 320- 21 (2004); William F. Lee & Lawrenc e P. Cogswe ll, III, Understanding and Addressing the Unfair Dilemma Created by the Doctrine of Willful Pate nt Infringement , 41 H ous. L. Rev. 393, 436-37 (2004).
Misc. 803, 805 13See T horn EMI , 837 F. Supp. at 621- 623 (“[C]ourts generally find a [work-product] waiver o n ly if facts relevant to a particula r, narrow subject matter are at issue and have been disclosed under circumstances where it woul d be unfair to deny the other party an opportunity to discover other facts relevant to that subject matter .”). Work-product waiver ext ends only so far as to inform the court of the infringer’s state of mind. Counsel’s opinion is not important for its legal c o rrectness. It is important to the inquiry whether it is “thorough enou gh, as combined with other factor s, to instill a belief in the infringer that a court might reasonably hold the patent is invalid, not infringed, or unenforceable.” Ortho Pharm. Corp. v. Smith , 959 F.2d 936, 944 (Fed. Cir. 1992). It is what the alleged infringer k new or believ e d, and by contr adistinction not what other items counsel may have prepared but did not communicate to the client, that informs the court of an infringe r’s willfu l ne ss. The overarching goal of waiver in such a case is to prevent a party from using the advice he received as both a sword, by wa iv ing privilege to favorable advice, and a shield, by asserting privilege to unfavorable advice. See Fort James Corp. , 412 F.3d at 1349; Martin Marietta Corp. , 856 F.2d at 626; In re Sealed Case , 676 F.2d 793, 818 (D.C. Cir. 1982) (“[W]hen a party seeks greater advantage from its control over work product than the law must provide to mainta in a healthy adver sary syste m [,] then the balanc e of interests recognized in Hickman . . . sh ifts.”). To the ext ent the work-product immunity could have s u ch an effect, it is waived. The second category of work product, which is never c o mmunicated to the client, is not disc overable. Under Rule 26(b)(3), th is so-called “opinion” work product deserves the highes t protection from disclosure. See Adl m an , 134 F. 3d at 1197. While an

Misc. 803, 805 14accused infringer may waive the immunity for work product that embodies an opinion in letters and memorandum communicated to the client, he does not waive the attorney’s own analys is and debate over what advice wil l be given. See Ortho Pharm. , 959 F.2d at 944. U pon waiv er of attorney-client pr ivilege, communicative documen t s, such as opinion letters, become evidence of a non- priv ileged, relevant fac t, namely what was communicated to the client, see Nobles , 422 U.S. at 239 n.14 (“[ W]here . . . counsel attempts to make a testimonial use of [work-product] materials the normal rules of evidenc e c o me into play with respect to . . . production of documents.”); however, counsel’s legal opinions and mental impres sions that we re not c o mmunicated do not acquire such factual characteristics and ar e, therefore, not wit hin the sc ope of the waiver. As the Martin Marietta C o rp. court noted, There is r e latively litt l e danger that a litigant will attempt to use a pure mental impression or legal theory as a s w or d and as a shield in the trial of a case so as to distort the factfindi ng process. Thus, the protection of lawyers from the broad repercussions of subject matter waiver in this context strengthens the adversary pr ocess, and, unlike the selective disclos ure of evidenc e, may ultimately and ideally further the search for the truth. 856 F.2d at 626. Thus, if a legal opi nion or mental impression was nev er communicated to the client, then it prov ides little if any ass i stance to the court in determining whether the accused knew it was infringing, and any relativ e value is outweighed by the policies suppor ting the work-product doctrine. The third category of work product ma terial falls admittedly somewhere interstitially between t he first and second. In some ins t ances there may be documents in the attorney’s file that reference and/or describe a communication bet ween the attorney and client, but were not themselves actually c o mmunicated to the client. For

Misc. 803, 805 15example, if an attorney writes a memorandum or an e-mail to his associate referencing a phone call with the c lient, in which he indic a te s that he disc ussed the c lient’s potentia l infringement, then such a memorandum is discove rable. Unlike work product that was uncommunicated, this work product references a specific communication to the client. Though it is not a communication to the client directly nor does it contain a substantive reference to what was communicated, it will a i d the parties in determining wh at communications were made to t he client and protect against in tentional or unintention a l withholding of attorney-client co mmunications from the court. Still, we m u st empha size that s u ch comm unicatio n s may contain work pro d uct of the second kind—legal analysis that was not communicated. In those situations, the parties should take special care t o redact su ch information, and if necessary the district court may review such material in camera

. See Rule 26(b)(3); see also id. advisory committee’s note (1970) (“[T]he courts will sometimes find it necessary to order disclos ure of a document but with portions deleted.”); Martin Mari etta Corp. , 856 F.2d at
626. Therefore, when an alleged infringer asserts its advice-of-counsel defe n se regarding willful infri ngement of a particular patent, it waives its immunity for an y document or opinion that em bodies or discusses a communi cation to or from it concerning whether that patent is valid, enforceable, and infr inged by the accused. This waiver of both the attorney-client privile ge and the work-product i mmunity includes not only any letters, memorandum, conversation, or the like between the attorney and his or

Misc. 803, 805 16her client, but also includes, when appr opriate, any documents referencing a communication between attorney and client. 6 Here, Merchant & Gould work product t hat was not communicated to EchoStar or does not r e flect a communication is not wit hi n the sc ope of EchoStar’s waiv er because it obviously play ed no part in Ec hoStar’s belief as to infringement of the ’3 89 patent. See Steelc a se , 954 F

. Supp. at 1198-99. I t may ve ry well be true, as T i Vo suggests, that at times some parties would communica te draft opinion lette rs or the contents thereof to the client confidentially in order to avoid disclosing that communication during potential discovery if and when the attorney-c lient privilege is waived, but we cannot eviscerate the legitimate policies of the wor k -product doctrine and chill the principles of our adversary system as a whole on account of the p o ssibility that, from ti me to time , there may be occurrences of ethical transgressions. In sum, the advice-of-counsel defense to willfulness requires t he court to decide, inter alia , whether c ounsel’s o p inion was t horough enough to “instill a belief in th e infringer that a court might reasonably hold the patent is invalid, not infringed, or unenforceable.” Ortho Pharm. , 959 F.2d at 944. If a Merc hant & Gould do cument was not communicated to EchoStar or if a Merc hant & Gould document does not reference a communication between Merchant & Gould a nd EchoStar, its relevant value is outweighed by the policies of the work-product doctrine. Thus, it was an abuse of

6 Merchant & Gould contends that it alone retains the right to deny a part y access to work product not communicated to a client. While we do not answer this question directly; here, the client, EchoStar, holds the right to waiv e privilege for attorney-client communications, Carter , 909 F.2d at 1451, and th erefore the right to waive privilege to ev idence of those communi cations contained in Merchant & Gould’s files. As we stated before , there may be a r edaction of information whic h reflects lega l opinions and mental impressions of Merc hant & Gould attorneys that were not communicated to EchoStar. Rule 26(b)(3).
Misc. 803, 805 17discretion f o r the district court to determi ne that the scope of the waiv er of privilege extended to such documents. Accordingly, IT IS ORDERED THAT: The petitions are granted. The district court i s directed to vacate its orders, to the
extent not ed above. TiVo is entitled to discovery of Merchant & Gould documents consistent with, and in the manner set forth in, this opinion.
F O R T H E C O U R T

___ 5-1-06

________ _ s/Arthur J. Gajarsa

___ Date Arthur J. Gajarsa C i r c u i t J u d g e

Misc. 803, 805 18