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Implied Waiver of Attorney-Client Privilege Extends to Trial Counsel Who Consulted with Patent Prosecutor

Plaintiffs filed a patent infringement action against National Semiconductor Corporation alleging that National Semiconductor’s WEBENCH tools infringed plaintiff’s’ patent. National Semiconductor filed an amended answer and counterclaim asserting, among other things, that plaintiffs patent was invalid due to inequitable conduct based on plaintiffs’ failure to disclose material information about WEBENCH and other third-party tools to the Patent and Trademark Office (“PTO”) during prosecution of the patent-in-suit.

National Semiconductor filed a motion to compel after, as it alleged, plaintiffs disclosed only certain privileged information that it considered helpful to its position during the deposition of individuals involved in the prosecution of the patent. Two of the inventors testified that they understood and complied with the duty of candor and one of the inventors testified that he relied on the advice of counsel. In addition, one of the prosecutors testified that he acted in good faith before the PTO. Other than disclosing this information, plaintiffs instructed the witnesses not to answer based on the attorney-client privilege, including, for example, whether one of the inventors provided patent counsel with documents such as prior art references.

In the motion to compel, National Semiconductor argued that plaintiffs waived the privilege by using it as both a sword and a shield and sought to compel further testimony, arguing that the implied waiver of the privilege also extended to trial counsel. The plaintiffs conceded that the manner in which it utilized the attorney-client privilege constituted an implied waiver but argued that the waiver was limited and was authorized under the Federal Circuit’s recent decision in Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) as a disclosure “sufficient to substantiate or refute the patentee’s good faith and advice of counsel defenses.”

The district court disagreed with the plaintiffs, finding that Therasense merely heightened the standard of proof required to succeed on a claim of inequitable conduct but did not support a new standard for determining implied waiver. The district court also rejected the argument that the waiver did not extend to communications with counsel occurring during the prosecution of the applications that were continuations of the patent-in-suit because these were communications that extended to the same subject matter.

The district court then also agreed with National Semiconductor that “this is one of the unique circumstances that warrants extending the implied waiver to litigation counsel.” The district court reached this conclusion because one of the members of the trial team communicated and consulted with the prosecuting attorneys during the prosecution of the patent-in-suit and that they had “a series of meetings and written communications regarding ‘patent litigation’ and ‘damages.'” The district court also concluded that “such communications between trial counsel and prosecution counsel, especially during the prosecution of the [patent-in-suit], have the potential to cast doubt on the credibility of [plaintiffs’] advice of counsel and good faith defenses.”

Accordingly, the district court granted the motion to compel, including finding an implied waiver of communication between the patent prosecutors and the trial counsel.

eTool Developments, Inc., et al. v. National Semiconductor Corporation, Case No. 2:08-CV-196-DF (E.D. Tex. Nov. 29, 2011)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or