In re Seagate: a Privileged Class, Figuratively Speaking. Part I.

The response brief soon is due on the In re Seagate mandamus petition over waiving the attorney-client privilege, even as to trial counsel, on matters addressed in an opinion letter introduced as a defense.  To partly paraphrase Charlie Manson, ‘Call me crazy, but’ has the CAFC been getting and granting more mandamus petitions?  Mandamus, which regards an equitable remedy when a ‘purely ministerial’ duty is not discharged, seems an odd way for an appeals court to create or clarify prevailing legal standards.  If the legal standards on “selective waiver” in willful infringement cases were clear, then mandamus might lie for disregard of those standards; but, applying unclear standards requires much more than a ‘ministerial’ act.

Ministerial means that “the duty in a particular situation is so plainly prescribed as to be free from doubt.”  Wilbur v. U. S., 281 U.S. 206 (1930); “But where there is discretion . . . even though its conclusion be disputable, it is impregnable to mandamus.” U. S. ex rel. Alaska Smokeless v. Lane, 250 U.S. 549, 555 (1919).  Would patent litigators give an ‘amen’ to one saying that the waiver issue after In re Echostar and the duty of care from Underwater Devices left patentees and infringers uncertain as to whether communications related to willful infringement remain privileged or become discoverable. Can In re Seagate clear it all up?

The present Seagate case, perhaps, was spawned by the noted In re Echostar footnote, which many understand as recognizing a complete waiver, even as to trial counsel, once an infringer signals reliance on opinion counsel’s freedom-to-practice letter.  District courts struggled with that aspect of Echostar, and their rulings went both ways.  In fact, before Echostar they went both ways.

Therein may lie one problem.  As a court of limited review, the CAFC panels put on their appellate blinders, and do microsurgery on an issue, as it arises in that one case.  Perhaps too, they remand for “proceedings not inconsistent with” their opinion, in that one case. After two or three of those, and a host of remand rulings by various Magistrates, an issue of discovery, such as In re Seagate presents, comes roaring back captioned as a petition for mandamus.  That Genesis does not lead clearly to Leviticus (origins that evolve into plain law).

Privilege and waiver law in patent cases is less about crystallized principles, than fairness hearings, justified with figurative language.  It ‘appears to evince a sword-and-shield strategy.’  The ‘subject matter, being the same, enables evaluation of the infringer’s state of mind.’  Having ‘discharged its affirmative duty with a reasonably competent opinion’ discovery allows the ‘totality of the Read v. Portec circumstances to be illumined’ perhas with ‘clear and convincing evidence of willfullness.’  To some, the dialect that has grown up around the privilege/waiver issue is doublespeak for “I just feel like allowing discovery of all these privileged communications,” and here are some pithy phrases to justify that.