On January 26, 2007, the Federal Circuit moved aggressively to decide significant issues regarding the role of an opinion of counsel in patent infringement cases that include an allegation of willful infringement. The court announced that it will give en banc review to a writ of mandamus filed by Seagate Technology, LLC, appealing district court orders that found a broad privilege waiver

extending to trial counsel. The court invited briefing on the following questions:

(1) Should a party’s assertion of the advice of counsel defense to willful infringement extend waiver of the attorney-client privilege to communications with that party’s trial counsel? See In re EchoStar Commc’n Corp., 448 F.3d 1294 (Fed. Cir. 2006).

(2) What is the effect of any such waiver on work-product immunity?

(3) Given the impact of the statutory duty of care standard announced in Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), on the issue of waiver of attorney-client privilege, should this court reconsider the decision in Underwater Devices and the duty of care standard itself?