In Re Seagate: Understanding the Proper Scope of Privilege Waiver on the Use of 'Advice of Counsel' Defence

Abstract

In case of an alleged wilful patent infringement, the primary defence taken by the infringer is the advice of the counsel. Such decision is taken even at the cost of waiver of the attorney-client privilege and work product immunity, as if the allegation of willful infringement gets proved, the damages can be trebled. The problem lies in analysing the exact extent and nature of such waiver as the principle evolved over time has certain lacunae and lacked proper clarifications. The paper analyses the proper extent and ramification of the judgments, especially the Seagate and Echostar case, in case of waiver of attorney-client privilege when the infringer relies on the advice of the attorney. The first part of the paper gives an introduction to the concept of wilful infringement, its origin and analysis; the second part of the paper discusses what exactly the Attorney-Client Privilege is and how it helps in litigation; the third part deals in details about the proper scope of such waiver along with the evolution of the principle. The paper concludes that the decision of the Seagate is a sound law which will guide the Courts in determining the proper scope of privilege waiver in long future.