Court Explores the Implied Waiver Doctrine

March 9, 2005

Courts universally hold that patent litigants waive the attorney-client privilege if they argue that they sold the allegedly infringing product in good faith based on a lawyer’s non-infringement opinion. Does this reasoning extend to other assertions of good faith?

In PostX Corp. v. Secure Data in Motion, Inc., No. C 02-04483 SI, 2004 U.S. Dist. LEXIS 24260, at *15 (N.D. Cal. Nov. 20, 2004) (internal quotations and citation omitted), a patent litigant defended against an antitrust claim by arguing that its lawsuits “were filed with a proper legal basis and in good faith.” The litigant’s executive testified in deposition that it filed the lawsuits “upon the advice of counsel.” Id. at *16 (internal quotations omitted). The court held that the litigant had not impliedly waived the privilege. The court explained that the litigant did not intend to introduce or rely on the advice of counsel, and noted that “it is difficult to conceive of a patent case in which opposing counsel could not extract the kind of deposition testimony given here.” Id. at *19.

Although at times the implied waiver doctrine appears ready to swallow the entire privilege, courts do recognize some limits even in patent cases.