Genentech Inc. v. Insmed Incorporation, decided August 10, 2006 United States District Court, N.D. California Magistrate Judge Edward M. Chen Plaintiffs’ motion on the scope and procedure of willfulness discovery and Defendants’ cross-motion to quash or limit the scope of subpoenas. Motions of each party granted in part and denied in part. A recent Northern District of California case, Genentech v. Insmed Inc., gave an in depth evaluation of the policy considerations concerning the waiver of privilege issue that was articulated in In re EchoStar. At issue is whether advice letters from opinion counsel regarding possible infringement may constitute a waiver of privilege of trial counsel’s communications with the client. The court borrowed language from EchoStar, and set up the countervailing interests as such:
[t]he overarching goal of waiver … is to prevent a party from using the advice he received as both a sword, by waiving privilege to favorable advice, and a shield, by asserting privilege to unfavorable advice.” EchoStar, 448 F.3d at 1303.
On the other hand, the policies to uphold the attorney-client privilege and the work product privilege must also be considered. EchoStar maintains the privilege regarding uncommunicated work product, but says that in instances where the client was made aware of information, the privilege is waived. The court found no issue with the EchoStar reasoning, but also felt that it did not offer trial counsel enough protection. With that in mind, the court applied a middle ground approach of partial waiver and stated:
Waiver of trial counsel communication with the client should apply to documents and communications that are most akin to that which opinion counsel normally renders–i.e., documents and communications that contain opinions (formal or informal) and advice central and highly material to the ultimate questions of infringement and invalidity. 2006 WL 2336484 at 7
This Ã¢â?¬Ë?degree of materialityÃ¢â?¬â?¢ test is further augmented by the courtÃ¢â?¬â?¢s language indicating that any negative opinions or advice are presumed to be more likely to be considered material. The court also stated that the waiver Ã¢â?¬Å?would exclude lower level documents and communications that are more akin to discussions of trial strategy.Ã¢â?¬Â? Thus, according to the court, communication will be privileged if it is trial strategy. However, communications containing information pertinent to the infringement will not be so protected.