In re Seagate Technology, LLC
United States Court of Appeals for the Federal Circuit
497 F.3d 1360 (2007)
Convolve and MIT (plaintiffs) sued Seagate (defendant) for patent infringement; Seagate had retained independent attorney Gerald Sekimura for written opinions on potential infringement and, after notifying Convolve it would rely on those opinions to defend against a willfulness claim, faced a district court order finding it had waived attorney-client privilege and work product protection for all related communications, including with its separate trial counsel. Seagate petitioned for mandamus.
Whether a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood of infringing a valid patent to establish willful infringement, and whether asserting an opinion-counsel defense to that claim waives privilege or work product protection for separate trial counsel.