The Unpredictable Scope of the Waiver Resulting from the Advice-of-Counsel Defense to Willful Patent Infringement

I. INTRODUCTION In patent litigation, defendants typically face a dilemma when the complaint contains a claim of willful patent infringement. Often the best response a defendant has to this claim is that counsel advised the defendant that she was not infringing the plaintiff's patent. Raising the advice-of-counsel defense, though, makes certain information available to the plaintiff, which might otherwise be privileged.l The anticipation of this difficult position presents several choices beginning well before the plaintiff files the complaint and continuing through the discovery proceedings.2 Making the defendant's position even more difficult is the fact that in recent years, confusion has existed on the scope of the waiver of privileges resulting from the defendant asserting the advice-of-counsel defense to willful infringement. Some courts have limited the waiver to communications between the attorney and client,3 while other courts have extended the waiver to include material relied on by the attorney, such as the attorney's selection of prior-art patents, even if the attorney never communicated that material to the client.4 The disparate decisions add confusion to the defendant's already difficult decision of whether to assert the advice-of-counsel defense.5 This Comment analyzes the scope of the waiver of the attorney-client privilege and the work product protection resulting from the advice-of-counsel defense to willful infringement. Part II explains the willful infringement standard, details the difficult choices presented to the defendant, and discusses the district court cases dealing with the scope of the waiver. Part III.A details the policies underlying the work product doctrine, the attorney-client privilege, and the competing policies supporting the waiver of those privileges by asserting the advice-ofcounsel defense. Part III.B then balances the competing policies in light of the contradictory Federal Circuit standards for willful infringement. Part III.C discusses the need for certainty in this area of law. Part IV recommends that the Federal Circuit clarify the willful infringement standard, and that meanwhile the district courts base their opinions on certain existing Federal Circuit standards. Part V concludes that if the Federal Circuit and the district courts follow these recommendations, they will instill more certainty in the scope of the waiver and return meaning to the attorney-client privilege and the work product doctrine in this context. II. BACKGROUND A. Willful Infringement The patent laws have the constitutionally mandated goal of "promot[ing] the Progress of Science and useful Arts."6 In doing so, the patent laws attempt to balance two conflicting means toward achieving that goal: (1) providing a reward for inventive activity and (2) allowing public access to ideas.7 The patent laws execute this balance by imposing a quid pro quo arrangement between the patentee and the public. The patentee receives the legal right to exclude others from making, using, selling, offering for sale, or importing the patented invention for twenty years from the patent filing date;8 the public receives an adequate disclosure of the invention,9 and at the end of the twenty years the invention enters the public domain.10 The law surrounding this arrangement between the patentee and the public has provided a means by which the patentee may gain the full effect of the bargain, by excluding others from exploiting the invention. If a patentee discovers someone making, using, selling, offering for sale, or importing the patented invention without authority to do so, she may exercise her right of exclusion by suing for patent infringement in a federal district court.ll The Court of Appeals for the Federal Circuit hears all patent appeals.12 If necessary, a litigant may then apply for a writ of certiorari in the United States Supreme Court-but because the Supreme Court rarely grants certiorari in patent cases, the Federal Circuit is essentially the court of last resort. …