## Facts

- Convolve, Inc. and the Massachusetts Institute of Technology sued Seagate Technology, LLC for patent infringement and alleged willful infringement involving disk-drive technology patents.
- Before suit, Seagate retained outside opinion counsel, who issued written opinions addressing infringement and validity.
- Seagate disclosed the opinion letters and related materials and produced opinion counsel for deposition to support an advice-of-counsel defense to willfulness.
- The patent holders moved to compel broader discovery into Seagate’s communications and work product involving in-house counsel and trial counsel on infringement, validity, and enforceability.
- The district court ordered broad production, concluding Seagate’s reliance on opinion counsel waived attorney-client privilege and work-product protection for communications with opinion, in-house, and trial counsel on the same subject matter, including some trial-strategy materials.
- Seagate sought mandamus relief after being denied a stay and interlocutory appeal; the Federal Circuit took the petition en banc to address willfulness and waiver scope.

## Issues

1. What standard governs willful patent infringement for purposes of enhanced damages under 35 U.S.C. § 284, and whether the “affirmative duty of due care” doctrine should be overruled.
2. Whether asserting an advice-of-counsel defense and disclosing opinion counsel’s opinions waives attorney-client privilege for communications with trial counsel on the same subject matter.
3. Whether such reliance also waives work-product protection for trial counsel materials, including litigation strategy and mental impressions.
4. Whether mandamus is an appropriate mechanism to review a discovery order compelling disclosure of allegedly privileged and protected materials.

## Decision

- The Federal Circuit granted mandamus and vacated the discovery order, directing application of a narrower waiver rule.
- The court overruled the prior “affirmative duty of due care” approach and held that willfulness requires, at minimum, objective recklessness.
- The patentee must prove by clear and convincing evidence that the accused infringer acted despite an objectively high likelihood that its conduct infringed a valid patent.
- The court held there is no affirmative obligation to obtain an opinion of counsel to avoid a willfulness finding, and failure to obtain one does not support an adverse inference.
- The court held that relying on opinion counsel and disclosing opinion counsel’s advice does not waive attorney-client privilege for communications with trial counsel.
- The court held that relying on opinion counsel’s work product does not waive work-product protection for trial counsel’s work product, preserving trial strategy and mental impressions.

## Legal Principles

- Willful infringement for enhanced damages requires proof of objective recklessness: an objectively high likelihood of infringement of a valid patent, proven by clear and convincing evidence; only after that showing may subjective intent be considered.
- An accused infringer has no affirmative duty to obtain an opinion of counsel to avoid willfulness, and no adverse inference may be drawn from the absence of such an opinion.
- Assertion of an advice-of-counsel defense and disclosure of opinion counsel’s opinions does not, by itself, waive attorney-client privilege for communications with trial counsel on the same subject matter.
- Reliance on opinion counsel’s work product does not waive work-product immunity for trial counsel materials; trial counsel’s litigation strategy and mental impressions remain protected.
- Mandamus may be appropriate to prevent compelled disclosure of privileged material where the issue is important and unresolved, the privilege would be effectively lost absent immediate review, and prompt resolution avoids erosion of privilege protections.

## Conclusion

The en banc Federal Circuit reset willfulness doctrine by requiring objective recklessness and rejecting any duty to secure an opinion of counsel, while also sharply limiting waiver from an advice-of-counsel defense so that trial-counsel communications and work product are not opened to discovery merely because opinion counsel’s advice is disclosed.


In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc)