Most courts hold that a party’s intentional use of privileged communication to gain some advantage causes a “subject matter waiver,” requiring the production of all communications on the same subject. In the classic case of a litigant pleading “advice of counsel” as a defense, does the subject matter waiver cover communications up to the present day?
In Akeva L.L.C. v. Mizuno Corp., 243 F. Supp. 2d 418 (M.D.N.C. 2003), the court addressed the admittedly unusual circumstance in which a patent holder defends an infringement claim by claiming advice of counsel. In discussing the temporal scope of the waiver, the court noted that “infringement is a continuing activity”—so that the alleged infringer would have to stop if it learned at any time that its activities are improper. Id. at 423. Given this circumstance, the court held that “all opinions received by the client relating to infringement must be revealed, even if they come from defendants’ trial attorneys, and even if they pre-date or post-date the advice letter of opinion counsel” (emphasis added). Id.
Clients and their lawyers litigating patent infringement cases (and perhaps other analogous cases) should realize that a subject matter waiver may continue up to today, and beyond.