Richards Layton & Finger
 

Senior Judge Robinson Finds Broad Subject Matter Waiver Related to Opinions of Counsel

August 30, 2017

In The Johns Hopkins University v. Alcon Laboratories, Inc., C.A. No. 15-525-SLR/SRF (D. Del. July 14, 2017), Senior Judge Robinson addressed the plaintiff’s objections to Magistrate Judge Fallon’s order defining the scope of a privilege waiver arising from the defendants’ reliance on advice of counsel. Although Judge Fallon ordered that the defendants produce “any additional documents listed in its privilege log . . . that concern the subject matter of the advice of counsel and ought in fairness to be considered together,” the Magistrate Judge reasoned that the broad subject-matter waiver articulated in Seagate was inappropriate and that Federal Rule of Evidence 502 called for a narrower scope. The plaintiff objected to Magistrate Judge Fallon’s order, specifically to her use of the Rule 502 standard and the limited nature of the waiver.

In addressing the objections, Senior Judge Robinson explained that Rule 502, though applicable, does not alter the scope of waiver for accused infringers who rely on advice of counsel. In that context, according to the Court, there continues to be a “broad subject-matter waiver.” Relying on In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), Senior Judge Robinson found that all documents and communications regarding the validity or infringement of the asserted patent, logged or not, fell within the scope of the waiver, with the only exception communications with trial counsel.

Key Point: Once the decision is made to waive privilege, the waiving party must assume a broad waiver.