United States Court of Appeals for the Federal Circuit

MISCELLANEOUS DOCKET NOS. 803, 805 

IN RE ECHOSTAR COMMUNICATIONS 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 Liability 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 Texas, in case 2:04-CV-1, to 

vacate its September 26, 2005 and October 6, 2005 orders that compelled EchoStar to 

produce documents created by the law firm Merchant & Gould P.C. that EchoStar 

asserts are protected from discovery by the work-product doctrine. Merchant & Gould 
moves for leave to intervene in Miscellaneous 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 responds to the motion for leave to intervene. EchoStar and 

Merchant & Gould reply. We grant Merchant & Gould’s unopposed motion for leave to 

intervene in Miscellaneous Docket No. 803. The motions for leave to file the replies are 

also granted. To the extent 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 response to the allegation of willful infringement, EchoStar asserted the 

defense of reliance on advice of counsel. Prior to the filing of the action, EchoStar 

relied on advice of in-house counsel. After the action was filed, EchoStar obtained 

additional legal advice from Merchant & Gould but elected not to rely on it. Presumably 

to explore further EchoStar’s state of mind in determining that it did not infringe the 

patent, TiVo sought production of documents in the possession of EchoStar and 

Merchant & Gould. The district court held that by relying on advice of in-house counsel 

EchoStar waived its attorney-client privilege and attorney work-product immunity 

relating to advice of any counsel regarding infringement, including Merchant & Gould. 

The district court indicated that the scope of the waiver included communications made 

either before or after the filing 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 trial preparation or information unrelated to 

infringement. EchoStar produced communications, including two infringement opinions

Misc. 803, 805 2 
from Merchant & Gould, but did not produce any work product related to the Merchant & 

Gould opinions.1 

Thereafter, the parties sought clarification of the district court’s order. TiVo 

argued that the district court should order EchoStar to produce all Merchant & Gould 

documents that relate to the advice-of-counsel defense, even if EchoStar was not in 

possession of the documents because they were never communicated to EchoStar.

EchoStar argued that it should only be required to produce documents that were

provided to it by Merchant & Gould. 

On October 5, 2005, the district court issued an order that clarified its previous

order and stated that the waiver of immunity extended to all work product of Merchant & 

Gould, whether or not communicated to EchoStar. The district court determined that

the documents could be relevant or lead to the discovery of admissible evidence

because they might contain information that was conveyed to EchoStar, even if the 

documents were not themselves conveyed to EchoStar. EchoStar petitions this court

for a writ of mandamus with respect to the Merchant & Gould documents not provided to

EchoStar,2

 challenging the district court’s rulings. Merchant & Gould moves for leave to

intervene in EchoStar’s petition and submits its own petition for a writ of mandamus. 

II 

The remedy of mandamus is available in extraordinary situations to correct a clear

abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461, 464 

(Fed. Cir. 1988). A party seeking a writ bears the burden of proving that it has no other

 1 EchoStar also provided notes and communications relating to infringement

prepared by another firm. 

2

 No in-house counsel documents are at issue in the petition. 

Misc. 803, 805 3 
means of obtaining the relief desired, Mallard v. U.S. Dist. Court, 490 U.S. 296, 309 

(1989), and that the right to issuance of the writ is “clear and indisputable,” Allied Chem.

Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980). A writ of mandamus may be sought when

the challenged order turns on questions of privilege. In re Regents of Univ. of Cal., 101 

F.3d 1386, 1387 (Fed. Cir. 1996); In re Pioneer Hi-Bred Int’l, Inc., 238 F.3d 1370, 1374 

(Fed. Cir. 2001). 

EchoStar argues that a writ of mandamus should issue, among other reasons,

because the district court erred in determining that (1) the attorney-client privilege had 

been waived and (2) the waiver of any privilege extended to work-product that was not 

communicated to EchoStar because, inter alia, the documents are not relevant to whether

EchoStar had a good faith belief that it did not infringe. Merchant & Gould also argues that 

the district court erred in requiring the production of documents that Merchant & Gould did 

not provide to EchoStar because any such documents could not be relevant to whether

EchoStar reasonably had a good faith belief that it did not infringe, based upon advice

from counsel. 

In response, TiVo argues, inter alia, that (1) EchoStar is not entitled to a writ of 

mandamus because it has complied, in large part, with the district court orders it now 

challenges, (2) the attorney-client privilege was waived when EchoStar asserted a defense 

of reliance on advice of in-house counsel, (3) the relevance of the Merchant & Gould 

documents can be determined when they are offered as evidence, and (4) even though 

the Merchant & Gould documents may not have been provided to EchoStar, they may 

contain information that was otherwise conveyed to EchoStar. 

Misc. 803, 805 4 
Regarding TiVo’s first argument, that EchoStar is not entitled to mandamus 

because it has complied in large part with the order, we do not believe it is a requirement 

that a party refuse to comply at all with an order, if it seeks to challenge only a part of the 

order. Such a rule would encourage parties not to comply with district court orders that, in 

large part, they do not challenge, so that they could preserve a challenge only to the 

portions that they believe are erroneous. EchoStar cannot undo the disclosures it has 

made to TiVo, but it can challenge the portions of the order that require additional 

disclosures. 

We now turn to the more substantive arguments underlying 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 defense in response to a 

charge of willful patent infringement. “Federal Circuit law applies when deciding 

whether particular written or other materials are discoverable 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 specifically provided for in the Patent Act, see 35 U.S.C. §§ 284-285;

therefore, questions of privilege and discoverability that arise from assertion of the 

advice-of-counsel defense necessarily involve issues of substantive patent law, see In 

re Spalding Sports Worldwide, Inc., 203 F.3d 800, 803-04 (Fed. Cir. 2000) (applying 

Federal Circuit law to question of attorney-client privilege between patent attorney and 

patentee). 

Misc. 803, 805 5 
A 

EchoStar first challenges the district court’s holding that EchoStar waived the 

attorney-client privilege when it asserted its defense in response to the charge of willful 

infringement. The attorney-client privilege protects disclosure of communications

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 to an assertion of willful infringement, the attorney-client privilege is waived. 

“The widely applied standard for determining the scope of a waiver of attorney-client

privilege is that the waiver applies to all other communications 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 because it

intended to rely only on an “in-house investigation supervised by in-house counsel.”

The district court held that the opinion formed by in-house counsel and conveyed to 

EchoStar executives, although not a traditional opinion of counsel, constituted a legal 

opinion. We see no error in the district court’s determination. 

EchoStar summarily asserts that “an internal investigation involving in-house 

engineers and in-house counsel is simply a different subject matter from legal opinions 

commissioned at a later date from outside lawyers.” This argument is without merit.

Whether counsel is employed by the client or hired by outside contract, the offered 

advice or opinion is advice of counsel or an opinion of counsel. Use of in-house 

counsel may affect the strength of the defense, but it does not affect the legal nature of 

Misc. 803, 805 6 
the 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-Bremse Systeme 

Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc)). 

Thus, when EchoStar chose to rely on the advice of in-house counsel, it waived 

the attorney-client privilege with regard to any attorney-client communications relating to 

the same subject matter, including communications with counsel other than in-house 

counsel, which would include communications with Merchant & Gould. See Akeva LLC 

v. Mizuno Corp., 243 F. Supp. 2d 418, 423 (M.D.N.C. 2003). 

B 

EchoStar next asserts that the district court’s order cast too wide a net by 

including within the waiver’s scope documents that were never communicated from

Merchant & Gould (the attorney) to EchoStar (the client). The district court stated: 

EchoStar had the benefit of choice, as explained by the Federal 

Circuit in Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana

Corp., of whether to introduce [in-house counsel’s] opinion. But once 

EchoStar chose to introduce the opinion, it opened to inspection all related 

advice sought and developed regarding EchoStar’s potential infringement

of the ‘389 patent. Regardless of when the opinions or materials were 

transcribed or communicated to EchoStar, such information necessarily

relates to the opinion being offered by [in-house counsel] and goes to 

show EchoStar’s state of mind with respect to willful infringement. This is

particularly true where, as is the case here, EchoStar’s willfulness witness

was privy to the substance of the willfulness opinions developed by 

outside counsel both pre- and post-filing. . . . 

TiVo, Inc. v. EchoStar Comm. Corp., 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 covered documents that were not disclosed to the 

client, the district court discussed the reasons for requiring production of 

uncommunicated work product: 

Misc. 803, 805 7 
Still, other courts have mandated production of all material

regardless of whether they were disclosed, maintaining that the discovery 

of such information is necessary to uncover what the client was actually 

told by opinion counsel. 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 for the patentee to have a full opportunity to probe, not 

only the state of mind of the infringer, but also the mind of the infringer’s

lawyer upon which the infringer so firmly relied.” 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 sought competent advice from competent counsel . . .” and 

“[m]oreover, focusing on the infringer’s waiver rather than state of mind 

may reduce the chances of legal gamesmanship creeping into the practice 

of rendering infringement and validity opinions.” Id. “[I]f negative 

information was important enough to reduce to a memorandum, there is a 

reasonable possibility that the information was conveyed 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 court further explained why the scope of the 

waiver should include work product that was not disclosed to EchoStar: 

Were discovery of “uncommunicated” materials not allowed, accused 

infringers could easily shield themselves from disclosing any unfavorable 

analysis by simply requesting that their 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 determination as to the scope of the waiver for an 

abuse of discretion. In re Pioneer, 238 F.3d at 1373 n.2 (“[I]t appears that virtually all 

the circuits review the decision of a district court [regarding waiver of privilege] 

underlying a petition for writ of mandamus for abuse of discretion.”). EchoStar asserts

that to apply the broad scope employed by the district court to the waiver of both 

Misc. 803, 805 8 
attorney-client privilege and work-product doctrine was an abuse of discretion. We 

agree. 

The attorney-client privilege and the work-product doctrine, though related, are 

two distinct concepts and waiver of one does not necessarily waive the other. See

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 general, a party may obtain discovery of

any matter that (1) is “not privileged” and (2) “is relevant to the claim or defense of any

party.” Fed. R. Civ. P. 26(b)(1). Among other things, attorney-client communications 

are designated as “privileged.” See Upjohn, 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 communications between attorney and client made for the 

purpose of obtaining legal advice.” Id. We recognize the privilege in order to promote 

full and frank communication between a client and his attorney so that the client can 

make well-informed legal decisions and conform his activities to the law. See Upjohn, 

449 U.S. at 389; XYZ Corp. v. United States, 348 F.3d 16, 22 (1st Cir. 2003). This

privilege is at the discretion of the client. Knorr-Bremse, 383 F.3d at 1345; Carter, 909 

F.2d at 1451. The client can waive the attorney-client privilege when, for instance, it

uses the advice to establish a defense. See id. However, selective waiver of the

privilege may lead to the inequitable result that the waiving party could waive its 

privilege for favorable advice while asserting its privilege 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 9 
both a sword and a shield. Id.; Fort James Corp., 412 F.3d at 1349. To prevent such 

abuses, we recognize that when a party defends its actions by disclosing an attorneyclient communication, it waives the attorney-client privilege as to all such 

communications regarding the same subject matter. Id. 

In contrast to the attorney-client privilege, the work-product doctrine, or workproduct immunity as it is also called, can protect “documents and tangible things”

prepared in anticipation of litigation that are both non-privileged and relevant. Fed. R. 

Civ. P. 26(b)(3). Unlike the attorney-client privilege, which protects all communication 

whether written or oral, work-product immunity 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 recognize work-product immunity

because it promotes a fair and efficient adversarial system by protecting “the attorney’s 

thought processes and legal recommendations” from the prying eyes of his or her

opponent. Genentech, 122 F.3d at 1415 (citations omitted); accord Hickman v. Taylor, 

329 U.S. 495, 511-14 (1947) (“Proper preparation of a client’s case demands that he 

assemble information, sift what he considers to be the relevant from the irrelevant facts, 

prepare his legal theories and plan his strategy without undue and needless

interference. . . . Were such materials open to opposing counsel on mere demand,

much of what is now put down in writing would remain unwritten. . . . Inefficiency, 

unfairness and sharp practices would inevitably develop in the giving of legal advice and 

in the preparation of cases for trial. The effect on the legal profession would be 

demoralizing. And the interests of the clients and the cause of justice would be poorly 

served.”); see also Nobles, 422 U.S. at 237; Coastal States Gas Corp. v. Dep’t of

Misc. 803, 805 10 
Energy, 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 that

their opponents will not rob them of the fruits of their labor. Hickman, 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 hardly intended to enable a learned profession to 

perform its functions either without wits or on wits borrowed from the adversary.”);

United States v. Adlman, 68 F.3d 1495, 1501 (2d Cir. 1995) (“The purpose of the 

doctrine is to establish a zone of privacy for strategic litigation planning and to prevent

one party from piggybacking on the adversary's preparation.”); Coastal States, 617 F.2d 

at 864 (noting that the effect of no immunity would mean “less work-product would be 

committed to paper, which 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 (4th 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 that the party is unable without 

undue hardship to obtain the substantial equivalent . . . by other means.” Rule 26(b)(3). 

This rule, however, only allows discovery of “factual” or “non-opinion” work product and 

requires a court to “protect against the disclosure of the mental impressions, 

conclusions, 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. See

id. at 622-23; Thorn EMI N. Am. v. Micron Tech., 837 F. Supp. 616, 621 (D. Del. 1993).

Misc. 803, 805 11 
However, work product waiver is not a broad waiver of all work product related to the 

same subject matter like the attorney-client privilege. Martin Marietta Corp., 856 F.2d at

626. Instead, work-product waiver only extends to “factual” or “non-opinion” work 

product concerning the same subject matter as the disclosed work product. See id. at

625 (noting that a party “impliedly waived the work-product privilege as to all nonopinion work-product on the same subject matter as that disclosed.”) (citing Nobles, 422 

U.S. at 239). 

We recognize that the line between “factual” work product and “opinion” work 

product is not always distinct, especially when, as here, an attorney’s opinion may itself

be “factual” work product. When faced with the distinction between where that line lies,

however, a district court should balance the policies to prevent sword-and-shield 

litigation tactics with the policy to protect work product. 

That being said, we recognize 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 subject

matter of the case, such as a traditional opinion letter; (2) documents analyzing the law,

facts, trial strategy, and so forth that reflect the attorney’s mental impressions but were

not given to the client; and (3) documents that discuss a communication between 

attorney and client concerning the subject matter of the case but are not themselves

communications to or from the client. See Thorn EMI, 837 F. Supp. at 622-623.3

 As to

the first category, we already noted in section A that when a party relies on the adviceof-counsel as a defense to willful infringement the party waives its attorney-client

 3 We by no means anticipate that all work product in every case will fit into

one of these three categories. 

Misc. 803, 805 12 
privilege for all communications between the attorney and client, including any

documentary communications such as opinion letters and memoranda. See also Akeva 

LLC, 243 F. Supp. 2d at 423.4 As to the other two categories, scholars have noted that 

our prior opinions do not clearly define the scope of the work-product waiver.5 As a

result, the district courts that have addressed this issue 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 Corp. v. Nissei 

ASB Co., 24 U.S.P.Q.2d 1073 (N.D. Ga. 1992); and Handgards, Inc. v. Johnson & 

Johnson, 413 F. Supp. 926 (N.D. Cal. 1976). As we discuss in more detail below, we

conclude that waiver extends to the third category but does not extend so far as the 

second. 

By asserting the advice-of-counsel defense to a charge of willful infringement, the 

accused infringer and his or her attorney do not give their opponent unfettered 

discretion to rummage through all of their files and pillage all of their litigation strategies. 

 4 EchoStar contends that waiver of opinions 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 not the case when the advice is relevant to 

ongoing willful infringement, so long as that ongoing infringement is at issue in the 

litigation. See Akeva LLC, 243 F. Supp. 2d at 423 (“[O]nce a party asserts the defense 

of advice of counsel, this opens to inspection the advice received during the entire 

course of the 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 notification of the patent by filing suit and 

that the infringer has a duty of due care to avoid infringement after such notification). 

5

 See David O. Taylor, Wasting Resources: Reinventing the Scope of

Waiver Resulting from the Advice-of-Counsel Defense to a Charge of Willful Patent 

Infringement, 12 Tex. Intell. Prop. L.J. 319, 320-21 (2004); William F. Lee & Lawrence

P. Cogswell, III, Understanding and Addressing the Unfair Dilemma Created by the 

Doctrine of Willful Patent Infringement, 41 Hous. L. Rev. 393, 436-37 (2004).

Misc. 803, 805 13 
See Thorn EMI, 837 F. Supp. at 621-623 (“[C]ourts generally find a [work-product] 

waiver only if facts relevant to a particular, narrow subject matter are at issue and have

been disclosed under circumstances where it would be unfair to deny the other party an 

opportunity to discover other facts relevant to that subject matter.”). Work-product 

waiver extends only so far as to inform the court of the infringer’s state of mind.

Counsel’s opinion is not important for its legal correctness. It is important to the inquiry

whether it is “thorough enough, as combined with other factors, 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 knew or believed, and by contradistinction not what other 

items counsel may have prepared but did not communicate to the client, that informs 

the court of an infringer’s willfulness. 

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 waiving 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 maintain a healthy adversary system[,] then the 

balance of interests recognized in Hickman . . . shifts.”). To the extent the work-product 

immunity could have such an effect, it is waived. 

The second category of work product, which is never communicated to the client, 

is not discoverable. Under Rule 26(b)(3), this so-called “opinion” work product deserves 

the highest protection from disclosure. See Adlman, 134 F.3d at 1197. While an 

Misc. 803, 805 14 
accused 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 analysis and debate over what advice will be given. See Ortho Pharm., 959 F.2d 

at 944. Upon waiver of attorney-client privilege, communicative documents, such as 

opinion letters, become evidence of a non-privileged, relevant fact, 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

evidence come into play with respect to . . . production of documents.”); however,

counsel’s legal opinions and mental impressions that were not communicated do not

acquire such factual characteristics and are, therefore, not within the scope of the

waiver. As the Martin Marietta Corp. court noted, 

There is relatively little danger that a litigant will attempt to use a pure 

mental impression or legal theory as a sword and as a shield in the trial of

a case so as to distort the factfinding process. Thus, the protection of

lawyers from the broad repercussions of subject matter waiver in this 

context strengthens the adversary process, and, unlike the selective 

disclosure of evidence, may ultimately and ideally further the search for 

the truth. 

856 F.2d at 626. Thus, if a legal opinion or mental impression was never

communicated to the client, then it provides little if any assistance to the court in 

determining whether the accused knew it was infringing, and any relative value is

outweighed by the policies supporting the work-product doctrine. 

The third category of work product material falls admittedly somewhere 

interstitially between the first and second. In some instances there may be documents

in the attorney’s file that reference and/or describe a communication between the 

attorney and client, but were not themselves actually communicated to the client. For

Misc. 803, 805 15 
example, if an attorney writes a memorandum or an e-mail to his associate referencing 

a phone call with the client, in which he indicates that he discussed the client’s potential 

infringement, then such a memorandum is discoverable. 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 aid the parties in determining what 

communications were made to the client and protect against intentional or unintentional

withholding of attorney-client communications from the court. 

Still, we must emphasize that such communications may contain work product of 

the second kind—legal analysis that was not communicated. In those situations, the 

parties should take special care to redact such 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 

disclosure of a document but with portions deleted.”); Martin Marietta Corp., 856 F.2d at 

626. 

Therefore, when an alleged infringer asserts its advice-of-counsel defense 

regarding willful infringement of a particular patent, it waives its immunity for any

document or opinion that embodies or discusses a communication to or from it 

concerning whether that patent is valid, enforceable, and infringed by the accused. This

waiver of both the attorney-client privilege and the work-product immunity includes not

only any letters, memorandum, conversation, or the like between the attorney and his or

Misc. 803, 805 16 
her client, but also includes, when appropriate, any documents referencing a 

communication between attorney and client.6 

Here, Merchant & Gould work product that was not communicated to EchoStar or 

does not reflect a communication is not within the scope of EchoStar’s waiver because 

it obviously played no part in EchoStar’s belief as to infringement of the ’389 patent.

See Steelcase, 954 F. Supp. at 1198-99. It may very well be true, as TiVo suggests,

that at times some parties would communicate draft opinion letters or the contents 

thereof to the client confidentially in order to avoid disclosing that communication during 

potential discovery if and when the attorney-client privilege is waived, but we cannot

eviscerate the legitimate policies of the work-product doctrine and chill the principles of

our adversary system as a whole on account of the possibility that, from time to time,

there may be occurrences of ethical transgressions. 

In sum, the advice-of-counsel defense to willfulness requires the court to decide,

inter alia, whether counsel’s opinion was thorough enough to “instill a belief in the 

infringer that a court might reasonably hold the patent is invalid, not infringed, or 

unenforceable.” Ortho Pharm., 959 F.2d at 944. If a Merchant & Gould document was 

not communicated to EchoStar or if a Merchant & Gould document does not reference a 

communication between Merchant & Gould and 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 party

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 waive privilege for

attorney-client communications, Carter, 909 F.2d at 1451, and therefore the right to 

waive privilege to evidence of those communications contained in Merchant & Gould’s

files. As we stated before, there may be a redaction of information which reflects legal 

opinions and mental impressions of Merchant & Gould attorneys that were not 

communicated to EchoStar. Rule 26(b)(3). 

Misc. 803, 805 17 
discretion for the district court to determine that the scope of the waiver of privilege 

extended to such documents. 

 Accordingly, 

IT IS ORDERED THAT: 

The petitions are granted. The district court is directed to vacate its orders, to the 

extent noted above. TiVo is entitled to discovery of Merchant & Gould documents

consistent with, and in the manner set forth in, this opinion. 

 FOR THE COURT

___5-1-06________ _s/Arthur J. Gajarsa___ 

 Date Arthur J. Gajarsa 

 Circuit Judge

Misc. 803, 805 18