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In Re Seagate: One Step Closer to a Rational Doctrine

Seagate Technology defended itself in a patent suit against charges that it willfully violated the plaintiff’s patent by raising an opinion of counsel defense.1 As a result, the trial court issued a discovery order that permitted discovery of communications and work-product that applied not only to the outside counsel that issued the opinion but also to trial counsel.2 Seagate sought and was granted a writ of mandamus from the Federal Circuit to prohibit enforcement of the order.3 In granting the writ, an en-banc Federal Circuit in Seagate overturned the standard of care required for potential patent infringers to avoid punitive damages first announced in Underwater Devices Inc. v. Morrison-Knudsen Co.4 At the same time, the Federal Circuit limited the ability of opposing counsel to obtain privileged attorney-client communications with an accused infringer’s trial counsel through discovery due to an advice of counsel defense asserted in response to a charge of willful infringement.5