IP News

In the case of In Re Seagate Tech., Misc. Docket No. 830, 2007 U.S. App. LEXIS 2457, *1 (Fed. Cir. Jan. 26, 2007), the Federal Circuit decided, sua sponte, to hear en banc, a petition for writ of mandamus seeking to vacate an Order of the Southern District of New York compelling defendant Seagate to produce trial counsel's privileged advice. The district court's order came after Seagate invoked the advice of counsel defense to allegations of willful infringement.

In its petition for mandamus, Seagate argued that the district court's decision contradicted controlling legal principles set forth in Federal Circuit precedent and allowed the plaintiffs to invade the most sacred of attorney-client communications ' those directed to trial strategy and preparation ' even though Seagate had at all times maintained separate and independent opinion and trial counsel. The respondents, Convolve Inc. and Massachusetts Institute of Technology, argued that under Federal Circuit precedent, the district court was within its discretion in determining the scope of the privilege waiver, and that the district court had provided for in camera review, which allowed for the proper balance of competing concerns on a document-by-document basis.