Does Reliance on the Advice of One Lawyer Waive the Privilege Covering Communications with Another Lawyer?

February 22, 2006

Every court recognizes that a litigant pleading “advice of counsel” as a defense waives the privilege covering communications to and from the lawyer who provided that opinion. In patent cases, courts frequently analyze the waiver’s possible expansion to cover communications with other lawyers.

In SEB, S.A. v. Montgomery Ward & Co., No. 99 Civ. 9284 (SCR), 2006 U.S. Dist. LEXIS 2703 (S.D.N.Y. Jan. 9, 2006), patent infringement defendants relied on “advice of counsel” — disclosing communications with two lawyers, but not a third lawyer who had also provided an opinion. The court ordered defendants to produce those communications too — although the defendants did not hire the third lawyer until after the lawsuit had begun.

Admittedly, patent infringement cases present unique “advice of counsel” waiver issues. Still, these cases highlight the uncertainty of the waiver’s extent once the “cat is out of the bag.”