Courts have struggled immensely with the scope of waiver of attorney-client privilege and work product immunity in the context of an accused infringer's reliance on the advice-of-counsel defense to accusations of willful patent infringement. The well-established standard for determining the scope of the waiver of attorney-client privilege is that the waiver applies to "all other communications relating to the same subject matter." Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349 (Fed. Cir. 2005); see also In re Seagate Tech., LLC, 497 F.3d 1360, 1372 (Fed. Cir. 2007) (en banc), cert. denied, 552 U.S. 1230 (2008); Hercules, Inc. v. Exxon Corp., 434 F. Supp. 136, 156 (D. Del. 1977). The scope of waiver of work product immunity, however, is more nuanced.
The Federal Circuit has recognized three categories of work product relevant to the advice-of-counsel defense: "(1) documents that embody a communication between the attorney and client concerning the subject matter of the case, such as a traditional opinion letter; (2) documents analyzing the law, facts, trial strategy, and so forth that reflect the attorney's mental impressions but were not given to the client; and (3) documents that discuss a communication between attorney and client concerning the subject matter of the case but are not themselves communications to or from the client." In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1302 (Fed. Cir. 2006). The EchoStar court noted that because counsel's opinion is relevant only to decipher the alleged infringer's state of mind, and not for its legal correctness, documents that counsel prepared but did not communicate to the client—the second category of work product—do not inform the court of an infringer's willfulness and are not discoverable. Id. at 1300.