By Michael J. Bonella of Woodcock Washburn LLPMichael J. Bonella, a partner in the Philadelphia office of Woodcock
Washburn LLP, focuses his practice on complex patent litigation. He can be reached at bonella@woodcock.com.
In January 2007, the Federal Circuit decided sua sponte to request
briefing from the parties in In Re Seagate Tech., LLC 1 on three questions regarding willful infringement:
(1) Should a party’s assertion of the advice-of-counsel defense to willful
infringement extend waiver of the attorney-client privilege to communications with that party’s trial
counsel? 2
(2) What is the effect of any such waiver on work-product immunity?
(3) Given the impact of the statutory duty of care standard announced in
Underwater Devices, Inc. v. Morrison-Knudsen Co., 3 on the issue of waiver of attorney-client privilege, should
this court
reconsider the decision in Underwater Devices and the duty of care standard itself?
The answer to the first two questions could have profound implications on patent
litigation strategy, and the answer to the third coul...
