In re Seagate Technology, L.L.C.
497 F.3d 1360 (Fed. Cir. 2007)

  • Seagate wanted to market a product that was similar to a patent held by a company called Convolve. They asked an independent attorney, Sekimura, to write an opinion letter about whether their product would infringe Convolve.
    • Sekimura wrote several opinion letters saying that Convolve’s patents were unenforceable and even if they were, Seagate was not infringing.
  • Convolve sued Seagate for infringing on one of their patents.
    • Convolve argued that Seagate was a willful infringer.
      • A willful infringer is someone who actively knows that they are copying someone else’s patent. In cases of willful infringement, attorney’s fees can be awarded, per 35 U.S.C. §285.
    • Seagate argued that they weren’t a willful infringer because they had relied on Sekimura’s opinion letter.
      • Seagate introduced Sekimura’s letters into evidence.
  • At trial, Convolve asked for discovery of all of Seagate’s lawyers’ written opinions of Sekimura’s conclusions. Seagate opposed the request.
    • Seagate argued that the information was not discoverable because of attorney-client privilege.
    • Convolve argued that Seagate waived their attorney-client privilege (and work product privilege) by introducing Sekimura’s letter.
      • Generally, under the rules of evidence, you can’t waive part of attorney-client privilege. If you want to disclose part of it to your advantage, you have to disclose all of it.
  • The Trial Court ordered Seagate to turn over the information. Seagate appealed.
  • The Appellate Court reversed.
    • The Appellate Court overruled Underwater Devices Inc. v. Morrison-Knudsen Co. (717 F.2d 1380 (1983)) and found that the standard for proving willful infringement was objective recklessness.
      • Underwater had held that that where a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing. This duty includes seeking out competent legal advice before making a potentially infringing product.
        • That was similar to a negligence standard.
      • Under the new recklessness standard, you had to prove by clear and convincing evidence that the infringer acted despite an objectively high likelihood that they were infringing a patent.
        • The standard for punitive damages in tort law is recklessness, not negligence, so if you think of §285 damages as being a form of punitive damages, then this make more sense than the Underwater standard.
    • The Court found that Seagate’s opinion counsel (Sekimura) and their trial counsel (who prepared the case for trial) were different, and so releasing Sekimura’s opinion letter did not constitute a blanket waiver of attorney-client privilege.
      • The Court found that extended to work product as well.
      • But, if you commission a bunch of opinion letters from a bunch of independent lawyers, and just try to introduce the most favorable one, the other less favorable letters are probably also discoverable.