Wednesday, November 13, 2013

In re Seagate Technology, LLC case brief

In re Seagate Technology, LLC case brief summary
497 F.3d 1360 (2007)

Petitioner, an alleged infringer in a patent infringement suit, sought a writ of mandamus directing the U.S. District Court for the Southern District of New York to vacate its orders compelling disclosure of materials and testimony that petitioner claimed were covered by the attorney-client privilege and work product protection.


  • The court confronted the willfulness scheme and its functional relationship to the attorney-client privilege and work product protection. 
  • Regarding willful infringement, the court overruled the standard set out in Underwater Devices v. Morrison-Knudsen Co., 717 F.2d 1380 (1983), and held that proof of willful infringement permitting enhanced damages required at least a showing of objective recklessness. 
  • Because the court abandoned the affirmative duty of due care, it also reemphasized that there was no affirmative obligation to obtain opinion of counsel. 
  • To establish willful infringement, a patentee had to show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. 
  • Next, the court held that, as a general proposition, asserting the advice of counsel defense and disclosing opinions of opinion counsel did not constitute waiver of the attorney-client privilege for communications with trial counsel. 
  • Finally, the court held that, as a general proposition, relying on opinion counsel's work product did not waive work product immunity with respect to trial counsel.


The petition for a writ of mandamus was granted, and the district court was directed to reconsider its discovery orders in light of the opinion.

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