Computer Associates Int. v. Simple.com E.D. New York, decided Oct. 20, 2006 Judge Hurley Computer Associates sought a declaratory judgment that three patents owned by Simple.com are invalid, unenforceable, and ââ?¬Å?not infringedââ?¬Â? by their products. Simple.com counterclaimed for willful infringement. Computer Associates invoked ââ?¬Å?advice of counselââ?¬Â? as a defense to the counterclaim and produced two opinion letters. However, they did not produce any communications with litigation counsel citing attorney-client privilege. On motion the Special Master ordered that Computer Associates were compelled to produce documents concerning advice of counsel on infringement, from both non-litigation counsel and litigation counsel. In the present case the court upheld the order after reviewing the holding in EchoStar. Specifically the court found that although EchoStar had not involved trial counsel, the court had cited favorably to Akeva v. Mizuno, 243 F. Supp. 2d 418 (2003), which stated that ââ?¬Å?all opinions received by the client relating to infringement must be revealed, even if they come from the defendantââ?¬â?¢s trial attorney.ââ?¬Â? Judge Hurley held:

The scope of [Computer Associateââ?¬â?¢s] waiver of the attorney-client privilege and work-product doctrine lies within the sound discretion of the trial court and EchoStar provides ample support for the Special Master’s recommendations.

Thus, because Computer Associates had chosen to raise the advice of counsel defense they had waived the privilege as to all opinions and could not ââ?¬Å?use the privilege as both a sword and a shield by waiving its privilege for favorable advice while asserting it for unfavorable advice.ââ?¬Â? The patent community needs to seriously rethink how willfulness and waiver are working together. The Federal Circuit took a step in the right direction in the Knorr-Bremse opinion, but did not go far enough. Intuitively, there is something wrong with requiring a defendant to reveal all documentation concerning discussions about infringement, when they almost have to in order to properly defend themselves. I would like to see some drastic legislation pass in Congress concerning this issue.

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