Trouble is brewing for patent infringement defendants who use lawyers from one law firm to act as trial counsel and other lawyers from the same or different firm (albeit perfectly screened off from the trial team) to prepare a non-infringement opinion as an advice of counsel defense to allegations of willful infringement. The 2006 Federal Circuit decision in EchoStar has set off a veritable feeding frenzy of attacks by patentees' counsel on the most sacred of attorney client communications and work product: that of trial counsel. In a case of first impression, one federal court has even granted a motion to disqualify the trial counsel shortly before the jury trial was to begin, when a member of that firm had given the client an opinion relevant to non-willfulness, thereby turning the advice of counsel defense to willfulness on its head. Consequently, the potential for grave abuses of, and misguided extensions of, the EchoStar decision is rife with confusion and threatens to invade and destroy a defendant's ability not only to rely on the defense but to deny it effective assistance of trial counsel if it does. Was the motion to disqualify the law firm mandated by ethics or merely motivated by gamesmanship? Is this a case of first impression from a renegade court or a prescient avant-garde likely to trigger cascading decisions that follow suit? The current state of flux in the law forecasts dire consequences if an opinion of counsel may be used as fodder for declaring open season on trial counsel, thereby morphing the defense into the troubled water instead of a "bridge over troubled water" as intended. The article proposes a coherent and equitable balancing test that will bring clarity and fairness to the potentially chilling effect on discussions between trial counsel and its client in the wake of EchoStar.
Christopher A. Harkins,
Choosing Between the Advice of Counsel Defense to Willful Patent Infringement or the Effective Assistance of Trial Counsel: A Bridge or the Troubled Waters,
Nw. J. Tech. & Intell. Prop.