1360 497 FEDERAL REPORTER, 3d SERIES1360 497 FEDERAL REPORTER, 3d SERIES NEWMAN, Circuit Judge,...

1360 497 FEDERAL REPORTER, 3d SERIES

NEWMAN, Circuit Judge, dissenting inpart.

As the Armed Services Board of con-tract Appeals determined, there were seri-ous flaws in the bidding and thus in theperformance of this contract. WhetherGrumman actually knew that the informa-tion that it states it expected from the AirForce was not available or was seriouslyinadequate is far from clear, but a discrep-ancy of $100 million between the bids ofthe incumbent Lockheed (who knew of theflaws and inadequacies) and the competitorGrumman is so extreme that some flaw inthe bidding information should be consid-ered, for it is clear that the Air Force hadknowledge based on which it could nothave expected adequate performance atthe bid price. Government procurement isnot a game of ‘‘gotcha.’’ The likely impos-sibility of performance should have beencommunicated before, not after, the con-tract was awarded and performance wasundertaken.

The Board indeed found that significantadditional costs were incurred due to thestate of the project as Grumman receivedit. That is, whatever the reason for theinadequate communication of the nature ofthe information that would be available toGrumman after award, the Board foundthat much more work was reasonably re-quired. Further, the Board found thatGrumman was entitled to compensation forat least some of this work, and deniedcompensation only because of the difficultyof measuring precisely what costs weredue to precisely what aspects. It is notdisputed that these measurement difficul-ties existed. This is a classic example ofthe procedure that has come to be calledthe ‘‘jury-verdict’’ method of measuringperformance costs in government con-tracts. See, e.g., Bluebonnet Savings

Bank, F.S.B. v. U.S., 466 F.3d 1349, 1359(Fed.Cir.2006) (‘‘jury verdict damages areallowed where there is ‘clear proof of inju-ry and TTT no more reliable method forcomputing damages.’ ’’); Raytheon Co. v.White, 305 F.3d 1354 (Fed.Cir.2002):

The jury verdict method is designed toproduce an approximation of damagesbased on the entire record. Before re-sorting to the jury verdict method, acourt (or Board) must determine (1) thatclear proof of injury exists; (2) thatthere is no more reliable method forcalculating damages; and (3) that theevidence is sufficient to make a fair andreasonable approximation of the dam-ages.

Id. at 1367 (citing WRB Corporation v.United States, 183 Ct.Cl. 409, 425 (1968)).This method should have been appliedhere, with the Board making its best esti-mate of a fair and just award based on thebest available information. It is neitherfair nor just to deny compensation simplybecause it is hard to measure. From thecourt’s acceptance and endorsement of thisdenial, I respectfully dissent.

,

In re SEAGATE TECHNOLOGY,LLC, Petitioner.

Misc. No. 830.

United States Court of Appeals,Federal Circuit.

Aug. 20, 2007.

Background: Patent holder brought ac-tion against competitor alleging infringe-

1361IN RE SEAGATE TECHNOLOGY, LLCCite as 497 F.3d 1360 (Fed. Cir. 2007)

ment of patents related to computer diskdrive technology. The United States Dis-trict Court for the Southern District ofNew York, George B. Daniels, J., 224F.R.D. 98, issued order to compel discov-ery. Competitor petitioned for writ of man-damus.

Holdings: The Court of Appeals, Mayer,Circuit Judge, held that:

(1) proof of willful patent infringement atleast requires showing of objectiverecklessness;

(2) there is no affirmative obligation toobtain an opinion of counsel in order tooppose a claim of willful patent in-fringement;

(3) patentee had show by clear and con-vincing evidence that infringer acteddespite objectively high likelihood thatits actions constituted infringement ofvalid patent to establish willful in-fringement;

(4) assertion of advice of counsel defenseand disclosing opinions of opinion coun-sel does not constitute waiver of theattorney-client privilege for communi-cations with trial counsel, overrulingUnderwater Devices Inc. v. Morrison–Knudsen Co., 717 F.2d 1380 (Fed.Cir.1983); and

(5) relying on opinion counsel’s work prod-uct does not waive work product immu-nity with respect to trial counsel, over-ruling Underwater Devices Inc. v.Morrison–Knudsen Co., 717 F.2d 1380.

Petition granted.

Gajarsa, Circuit Judge, filed concurringopinion which was joined by, Newman,Circuit Judge.

1. Mandamus O168(2)

A party seeking a writ of mandamusbears the burden of proving that it has no

other means of attaining the relief desiredand that the right to issuance of the writ isclear and indisputable.

2. Mandamus O32

In appropriate cases, a writ of manda-mus may issue to prevent the wrongfulexposure of privileged communications.

3. Mandamus O32

Mandamus review may be granted ofdiscovery orders that turn on claims ofprivilege when (1) there is raised an im-portant issue of first impression, (2) theprivilege would be lost if review were de-nied until final judgment, and (3) immedi-ate resolution would avoid the develop-ment of doctrine that would undermine theprivilege.

4. Federal Courts O824

A trial court’s determination of thescope of waiver of attorney-client privilegeis reviewed for an abuse of discretion.

5. Courts O96(7)

Substantive patent law is invoked, andthus the law of the Federal Circuit isapplied, where there are questions regard-ing willful infringement and the scope ofwaiver accompanying the advice of counseldefense. 35 U.S.C.A. § 284.

6. Patents O319(3)

Because patent infringement is astrict liability offense, the nature of theoffense is relevant only in determiningwhether enhanced damages are warranted.35 U.S.C.A. § 284.

7. Patents O227

Where a potential infringer has actualnotice of another’s patent rights, he has anaffirmative duty to exercise due care to


determine whether or not he is infringing;such an affirmative duty includes, interalia, the duty to seek and obtain competentlegal advice from counsel before the initi-ation of any possible infringing activity.

8. Patents O227

Under the advice of counsel defense,an accused willful infringer of a patentaims to establish that due to reasonablereliance on advice from counsel, its contin-ued accused activities were done in goodfaith.

9. Patents O227

Although a patent infringer’s relianceon favorable advice of counsel, or con-versely his failure to proffer any favorableadvice, is not dispositive of the willfulnessinquiry, it is crucial to the analysis. 35U.S.C.A. § 284.

10. Patents O319(3)

Proof of willful patent infringementpermitting enhanced damages at least re-quires a showing of objective recklessness.35 U.S.C.A. § 284.

11. Patents O319(3)

There is no affirmative obligation toobtain an opinion of counsel in order tooppose a claim of willful patent infringe-ment that permits enhanced damages. 35U.S.C.A. § 284.

12. Patents O312(8)

To establish willful infringement, apatentee must show by clear and convinc-ing evidence that the infringer acted de-spite an objectively high likelihood that itsactions constituted infringement of a validpatent. 35 U.S.C.A. § 284.

13. Patents O312(8)

On a claim of willful patent infringe-ment, the state of mind of the accused

infringer is not relevant to the objectiveinquiry of whether there is clear and con-vincing evidence that the infringer acteddespite an objectively high likelihood thatits actions constituted infringement of avalid patent. 35 U.S.C.A. § 284.

14. Patents O319(3)

On a claim of willful patent infringe-ment that permits enhanced damages, ifthe threshold objective standard is satis-fied, the patentee must also demonstratethat the objectively-defined risk, which isdetermined by the record developed in theinfringement proceeding, was eitherknown or so obvious that it should havebeen known to the accused infringer. 35U.S.C.A. § 284.

15. Witnesses O198(1)

The attorney-client privilege recog-nizes that sound legal advice or advocacyserves public ends and that such advice oradvocacy depends upon the lawyer’s beingfully informed by the client.

16. Witnesses O217, 219(3)

The attorney-client privilege belongsto the client, who alone may waive it.


A waiver of the attorney-client privi-lege applies to all other communicationsrelating to the same subject matter.


When determining what constitutesthe subject matter of a waiver of the attor-ney-client privilege, courts weigh the cir-cumstances of the disclosure, the nature ofthe legal advice sought, and the prejudiceto the parties of permitting or prohibitingfurther disclosures.

19. Patents O226

Patent infringement is an ongoing of-fense that can continue after litigation hascommenced.


20. Patents O319(3)

A patentee who does not attempt tostop an accused infringer’s activities bymoving for a preliminary injunction shouldnot be allowed to accrue enhanced dam-ages based solely on the infringer’s post-filing conduct. 35 U.S.C.A. § 283.

21. Patents O227

In ordinary circumstances, willfulnessdepends on a patent infringer’s prelitiga-tion conduct. 35 U.S.C.A. § 284.

22. Patents O301(1)

Whether a willfulness claim based onconduct occurring solely after litigation be-gan is sustainable depends on the facts ofeach case, as when a patentee is denied apreliminary injunction despite establishinga likelihood of success on the merits, suchas when the remaining factors are consid-ered and balanced. 35 U.S.C.A. § 284.


As a general proposition, assertion ofthe advice of counsel defense and disclos-ing opinions of opinion counsel in a patentcase does not constitute waiver of the at-torney-client privilege for communicationswith trial counsel; overruling UnderwaterDevices Inc. v. Morrison–Knudsen Co.,717 F.2d 1380.

24. Federal Civil Procedure O1600(3)

The work product doctrine is designedto balance the needs of the adversary sys-tem: promotion of an attorney’s prepara-tion in representing a client versus soci-ety’s general interest in revealing all trueand material facts to the resolution of adispute.


Whereas factual work product can bediscovered solely upon a showing of sub-

stantial need and undue hardship, mentalprocess work product is afforded evengreater, nearly absolute, protection.


Work product protection in discoverymay be waived.

27. Patents O292.3(1)

In a patent case, as a general proposi-tion, relying on an opinion counsel’s workproduct does not waive work product im-munity with respect to trial counsel; over-ruling Underwater Devices Inc. v. Morri-son–Knudsen Co., 717 F.2d 1380.


A party may obtain discovery of workproduct absent waiver upon a sufficientshowing of need and hardship, bearing inmind that a higher burden must be met toobtain that pertaining to mental processes.Fed.Rules Civ.Proc.Rule 26(b)(3), 28U.S.C.A.

29. Patents O292.3(1)

In a patent case, work product protec-tion is available for ‘‘nontangible’’ workproduct.

Patents O328(2)

4,916,635, 5,638,267, 6,314,473. Cited.

Brian E. Ferguson and Raphael V.Lupo, McDermott Will & Emery LLP, ofWashington, DC, argued for petitioner.With them on the brief were Paul Devin-sky and Natalia V. Blinkova. Also on thebrief were Terrence P. McMahon, StephenJ. Akerley, Lucy H. Koh, and Mary B.Boyle, of Palo Alto, CA.

Debra Brown Steinberg, Cadwalader,Wickersham & Taft LLP, of New York,


NY, argued for respondents, Convolve,Inc., and MIT. With her on the brief wereJames T. Bailey, Tom M. Fini, and KevinJ. McNamee. Of counsel on the brief wereAlbert L. Jacobs, Jr., Daniel A. Ladow,Adam B. Landa, and Richard E. Kurtz,Greenberg Traurig LLP, of New York,NY.

Carter G. Phillips, Sidley Austin LLP, ofWashington, DC, for amici curiae, AdobeSystems Incorporated, et al. With him onthe brief was Pankaj Venugopal. Also onthe brief were Constantine L. Trela, Jr.and Richard A. Cederoth, of Chicago, IL.

Karen J. Mathis, American Bar Associa-tion, of Chicago, IL, for amicus curiae,American Bar Association. With her onthe brief were William L. LaFuze andMichael A. Valek, Vinson & Elkins, L.L.P.,of Houston, TX.

Matthew D. Powers, Weil, Gotshal &Manges LLP, of Redwood Shores, CA, foramicus curiae, American Intellectual Prop-erty Law Association. With him on thebrief was Steven C. Carlson; and AmberH. Rovner, of Austin, TX. Of counsel onthe brief was Judith M. Saffer, AmericanIntellectual Property Law Association, ofArlington, VA.

Peter A. Sullivan, Hughes Hubbard &Reed LLP, of New York, NY, for amicuscuriae, Association of the Bar of the Cityof New York.

Kyle Bradford Fleming, Renner OttoBoisselle & Sklar, of Cleveland, OH, foramici curiae, Avery Dennison Corporation,et al. With him on the brief were Jay R.Campbell and Todd R. Tucker. Of counselon the brief was Keith A. Newburry,Avery Dennison, Inc., of Pasadena, CA, foramicus curiae, Avery Dennison Corpora-tion.

Blair E. Taylor, Venable LLP, of Wash-ington, DC, for amicus curiae, Bar Associa-tion of the District of Columbia. With heron the brief was Peter J. Curtin. Of coun-sel on the brief were Robert C. Bertin andErin M. Dunston, Bingham McCutchenLLP, of Washington, DC.

Hans Sauer, Biotechnology Industry Or-ganization, of Washington, DC, for amicuscuriae, Biotechnology Industry Organiza-tion. Of counsel on the brief were ScottA.M. Chambers, Patton Boggs LLP, ofMcLean, VA, and Brian P. Barrett, EliLilly and Company, of Indianapolis, IN.

M. Kala Sarvaiya, SoCal IP Law GroupLLP, of Westlake Village, CA, for amicuscuriae, Conejo Valley Bar Association.With him on the brief were Steven C.Sereboff and Mark S. Goldstein.

Alison M. Tucher, Morrison & FoersterLLP of San Francisco, CA, for amici curi-ae, Echostar Communications Corporation,et al. With her on the brief were HaroldJ. McElhinny, Michael A. Jacobs, and Ra-chel Krevans. Also on the brief wereCharles S. Barquist and Bita Rahebi, ofLos Angeles, CA.

Joshua D. Sarnoff, Glushko–SamuelsonIntellectual Property Law Clinic, Washing-ton College of Law, American University,of Washington, DC, for amici curiae, Elec-tronic Frontier Foundation, et al.

Stanley H. Lieberstein, St. Onge Stew-ard Johnston & Reens LLC, of Stamford,CT, for amicus curiae, Federal Circuit BarAssociation. With him on the brief wasRichard J. Basile.

Maxim H. Waldbaum, Schiff HardinLLP, of New York, NY, for amicus curiae,Federation Internationale Des Conseils EnPropriete Industrielle.

Mark A. Thurmon, Roy, Kiesel, Keegan& DeNicola, of Baton Rouge, LA, for ami-


cus curiae, Houston Intellectual PropertyLaw Association.

Gary M. Hoffman, Dickstein ShapiroLLP, of Washington, DC, for amicus curi-ae, Intellectual Property Owners Associa-tion. With him on the brief were KennethW. Brothers and Rachael Lea Leventhal.Also on the brief were Marc S. Adler andRichard F. Phillips, Intellectual PropertyOwners Association, of Washington, DC.Of counsel was Herbert C. Wamsley.

Michael Barclay, Wilson Sonsini Good-rich & Rosati, of Palo Alto, CA, for amicuscuriae, MediaTek, Inc. With him on thebrief was Monica Mucchetti Eno.

Roderick R. McKelvie, Covington &Burling LLP, of Washington, DC, for ami-cus curiae, Pharmaceutical Research andManufacturers of America. With him onthe brief was Simon J. Frankel, of SanFrancisco, CA.

Patricia Smink Rogowski, Connolly BoveLodge & Hutz LLP, of Wilmington, DE,for amicus curiae, Philadelphia IntellectualProperty Law Association.

Douglas E. Olson, Paul, Hastings, Janof-sky & Walker, LLP, of San Diego, CA, foramicus curiae, San Diego IntellectualProperty Law Association. Of counsel onthe brief was Vicki G. Norton, Wilson Son-sini Goodrich & Rosati, of San Diego, CA.

Thomas S. Biemer, Dilworth PaxsonLLP, of Philadelphia, PA, for amici curiae,Securities Industry and Financial MarketsAssociation, et al. With him on the briefwas Philip J. Foret.

Laurence H. Pretty, Law Office of Lau-rence H. Pretty, of Los Angeles, CA, foramicus curiae, TiVo, Inc.

Michael K. Kirschner, Hillis Clark Mar-tin & Peterson, P.S., of Seattle, WA, foramicus curiae, Washington State PatentLaw Association. Of counsel on the briefwere Peter J. Knudsen, Washington StatePatent Law Association, of Bothell, WA,and Pam Kohli Jacobson, Betts Patterson& Mines, P.S., of Seattle, WA.

Before NEWMAN, MAYER, LOURIE,RADER, SCHALL, BRYSON, GAJARSA,LINN, DYK, and PROST, CircuitJudges.*

Opinion for the court filed by CircuitJudge MAYER, in which Circuit JudgesNEWMAN, LOURIE, RADER,SCHALL, BRYSON, GAJARSA, LINN,DYK, and PROST join. Concurringopinion filed by Circuit Judge GAJARSA,in which Circuit Judge NEWMAN joins.Concurring opinion filed by Circuit JudgeNEWMAN.

MAYER, Circuit Judge.

Seagate Technology, LLC (‘‘Seagate’’)petitions for a writ of mandamus directingthe United States District Court for theSouthern District of New York to vacateits orders compelling disclosure of materi-als and testimony that Seagate claims iscovered by the attorney-client privilegeand work product protection. We ordereden banc review, and now grant the peti-tion. We overrule Underwater DevicesInc. v. Morrison–Knudsen Co., 717 F.2d1380 (1983), and we clarify the scope of thewaiver of attorney-client privilege andwork product protection that results whenan accused patent infringer asserts an ad-vice of counsel defense to a charge ofwillful infringement.

* Chief Judge Michel and Circuit Judge Mooretook no part in the consideration of the merits

of this case.


Background

Convolve, Inc. and the MassachusettsInstitute of Technology (collectively ‘‘Con-volve’’) sued Seagate on July 13, 2000,alleging infringement of U.S. Patent Nos.4,916,635 (‘‘the 8635 patent’’) and 5,638,267(‘‘the 8267 patent’’). Subsequently, U.S.Patent No. 6,314,473 (‘‘the 8473 patent’’)issued on November 6, 2001, and Convolveamended its complaint on January 25,2002, to assert infringement of the 8473patent. Convolve also alleged that Sea-gate willfully infringed the patents.

Prior to the lawsuit, Seagate retainedGerald Sekimura to provide an opinionconcerning Convolve’s patents, and he ulti-mately prepared three written opinions.Seagate received the first opinion on July24, 2000, shortly after the complaint wasfiled. This opinion analyzed the 8635 and8267 patents and concluded that manyclaims were invalid and that Seagate’sproducts did not infringe. The opinionalso considered Convolve’s pending Inter-national Application WO 99/45535 (‘‘the8535 application’’), which recited technolo-gy similar to that disclosed in the yet-to-be-issued 8473 patent. On December 29,2000, Sekimura provided an updated opin-

ion to Seagate. In addition to his previousconclusions, this opinion concluded that the8267 patent was possibly unenforceable.Both opinions noted that not all of thepatent claims had been reviewed, and thatthe 8535 application required further anal-ysis, which Sekimura recommended post-poning until a U.S. patent issued. OnFebruary 21, 2003, Seagate received athird opinion concerning the validity andinfringement of the by-then-issued 8473patent. There is no dispute that Seagate’sopinion counsel operated separately andindependently of trial counsel at all times.

In early 2003, pursuant to the trialcourt’s scheduling order, Seagate notifiedConvolve of its intent to rely on Sekimu-ra’s three opinion letters in defendingagainst willful infringement, and it dis-closed all of his work product and madehim available for deposition. Convolvethen moved to compel discovery of anycommunications and work product of Sea-gate’s other counsel, including its trialcounsel.1 On May 28, 2004, the trial courtconcluded that Seagate waived the attor-ney-client privilege for all communicationsbetween it and any counsel, including itstrial attorneys and in-house counsel,2 con-cerning the subject matter of Sekimura’s

1. Specifically, Convolve sought to obtain thefollowing:

internal communications on the same sub-jects as the formal [Sekimura] opinions,communications between Seagate and anyattorneys on the same subjects as the for-mal opinions, documents reflecting outsidecounsel’s opinion as to the same subjects ofthe formal opinions, documents reviewedor considered, or forming the basis for out-side counsel’s opinion as to the subject mat-ter of the formal opinions, and documentsreflecting when oral communications con-cerning the subjects of the opinions oc-curred between Compaq and outside coun-sel.

Convolve, Inc. v. Compaq Comp. Corp., 224F.R.D. 98, 101 (S.D.N.Y.2004).

2. We do not address the trial court’s discov-ery orders pertaining to Seagate’s in-housecounsel. The questions presented for en bancreview do not encompass this issue. See Kirk-endall v. Dep’t of the Army, 479 F.3d 830, 835n. 2 (Fed.Cir.2007) (en banc) (‘‘As a generalrule, the scope of our en banc review is limit-ed to the issues set out in the en banc or-der.’’). That is not remarkable because Sea-gate’s petition sought relief only as to trialcounsel. Moreover, the nature and role of in-house counsel in this litigation is entirely un-clear on the record before us. For the samereason, we do not address the separate opin-ion of Judge Gajarsa, post.


opinions, i.e., infringement, invalidity, andenforceability. It further determined thatthe waiver began when Seagate firstgained knowledge of the patents and wouldlast until the alleged infringement ceased.Accordingly, the court ordered productionof any requested documents and testimonyconcerning the subject matter of Sekimu-ra’s opinions. It provided for in camerareview of documents relating to trial strat-egy, but said that any advice from trialcounsel that undermined the reasonable-ness of relying on Sekimura’s opinionswould warrant disclosure. The court alsodetermined that protection of work prod-uct communicated to Seagate was waived.

Based on these rulings, Convolve soughtproduction of trial counsel opinions relat-ing to infringement, invalidity, and en-forceability of the patents, and also noticeddepositions of Seagate’s trial counsel. Af-ter the trial court denied Seagate’s motionfor a stay and certification of an interlocu-tory appeal, Seagate petitioned for a writof mandamus. We stayed the discoveryorders and, recognizing the functional rela-tionship between our willfulness jurispru-dence and the practical dilemmas faced inthe areas of attorney-client privilege andwork product protection, sua sponte or-dered en banc review of the petition. Theen banc order set out the following ques-tions:

1. Should a party’s assertion of theadvice of counsel defense to willfulinfringement extend waiver of theattorney-client privilege to commu-nications with that party’s trialcounsel? See In re EchoStarCommc’ns Corp., 448 F.3d 1294(Fed.Cir.2006).

2. What is the effect of any such waiv-er on work-product immunity?

3. Given the impact of the statutoryduty of care standard announced in

Underwater Devices, Inc. v. Morri-son–Knudsen Co., 717 F.2d 1380(Fed.Cir.1983), on the issue of waiv-er of attorney-client privilege,should this court reconsider the de-cision in Underwater Devices andthe duty of care standard itself?

In re Seagate Tech., LLC, 214 Fed.Appx.997 (Fed.Cir.2007).

Mandamus

[1–3] A party seeking a writ of manda-mus bears the burden of proving that ithas no other means of attaining the reliefdesired, Mallard v. U.S. Dist. Court forthe S. Dist. of Iowa, 490 U.S. 296, 309, 109S.Ct. 1814, 104 L.Ed.2d 318 (1989), andthat the right to issuance of the writ is‘‘clear and indisputable,’’ Allied Chem.Corp. v. Daiflon, Inc., 449 U.S. 33, 35, 101S.Ct. 188, 66 L.Ed.2d 193 (1980). In ap-propriate cases, a writ of mandamus mayissue ‘‘to prevent the wrongful exposure ofprivileged communications.’’ In re Re-gents of the Univ. of Cal., 101 F.3d 1386,1387 (Fed.Cir.1996). Specifically, ‘‘manda-mus review may be granted of discoveryorders that turn on claims of privilegewhen (1) there is raised an important issueof first impression, (2) the privilege wouldbe lost if review were denied until finaljudgment, and (3) immediate resolutionwould avoid the development of doctrinethat would undermine the privilege.’’ Id.at 1388. This case meets these criteria.

[4, 5] We review the trial court’s deter-mination of the scope of waiver for anabuse of discretion. In re EchoStarCommc’ns. Corp., 448 F.3d 1294, 1300(Fed.Cir.2006); In re Pioneer Hi–BredInt’l, Inc., 238 F.3d 1370, 1373 n. 2 (Fed.Cir.2001). Because willful infringementand the scope of waiver accompanying the


advice of counsel defense invoke substan-tive patent law, we apply the law of thiscircuit. EchoStar, 448 F.3d at 1298.

Discussion

[6] Because patent infringement is astrict liability offense, the nature of theoffense is only relevant in determiningwhether enhanced damages are warranted.Although a trial court’s discretion inawarding enhanced damages has a longlineage in patent law,3 the current statute,similar to its predecessors, is devoid of anystandard for awarding them.4 Absent astatutory guide, we have held that anaward of enhanced damages requires ashowing of willful infringement. BeatriceFoods Co. v. New England Printing &Lithographing Co., 923 F.2d 1576, 1578(Fed.Cir.1991); see also Jurgens v. CBK,Ltd., 80 F.3d 1566, 1570 (Fed.Cir.1996)(holding that bad faith infringement, whichis a type of willful infringement, is re-quired for enhanced damages). This well-established standard accords with Su-preme Court precedent. See Aro Mfg. Co.v. Convertible Top Replacement Co., 377

U.S. 476, 508, 84 S.Ct. 1526, 12 L.Ed.2d457 (1964) (enhanced damages were avail-able for willful or bad faith infringement);see also Dowling v. United States, 473U.S. 207, 227 n. 19, 105 S.Ct. 3127, 87L.Ed.2d 152 (1985) (enhanced damages areavailable for ‘‘willful infringement’’); Sey-mour v. McCormick, 57 U.S. 480, 489, 16How. 480, 14 L.Ed. 1024 (1853) (‘‘wantonor malicious’’ injury could result in exem-plary damages). But, a finding of willful-ness does not require an award of en-hanced damages; it merely permits it.See 35 U.S.C. § 284; Odetics, Inc. v. Stor-age Tech. Corp., 185 F.3d 1259, 1274 (Fed.Cir.1999); Jurgens, 80 F.3d at 1570.

[7] This court fashioned a standard forevaluating willful infringement in Under-water Devices Inc. v. Morrison–KnudsenCo., 717 F.2d 1380, 1389–90 (Fed.Cir.1983):‘‘Where TTT a potential infringer has actualnotice of another’s patent rights, he has anaffirmative duty to exercise due care todetermine whether or not he is infringing.Such an affirmative duty includes, interalia, the duty to seek and obtain compe-tent legal advice from counsel before the

3. Trial courts have had statutory discretion toenhance damages for patent infringementsince 1836. 35 U.S.C. § 284 (2000); Act ofAug. 1, 1946, 60 Stat. 778; Patent Act of1870, ch. 230, § 59, 16 Stat. 198, 207 (1870)(providing that ‘‘the court may enter judg-ment thereon for any sum above the amountfound by the verdict as the actual damagessustained, according to the circumstances ofthe case, not exceeding three times theamount of such verdict, together with thecosts’’); Patent Act of 1836, ch. 357, 5 Stat.117 (1836) (stating that ‘‘it shall be in thepower of the court to render judgment for anysum above the amount found by such verdictTTT not exceeding three times the amountthereof, according to the circumstances of thecase’’).

4. The current statute, enacted in 1952 andcodified at 35 U.S.C. § 284, provides:

Upon finding for the claimant the courtshall award the claimant damages adequateto compensate for the infringement, but inno event less than a reasonable royalty forthe use made of the invention by the in-fringer, together with interest and costs asfixed by the court.When the damages are not found by a jury,the court shall assess them. In either eventthe court may increase the damages up tothree times the amount found or assessed.Increased damages under this paragraphshall not apply to provisional rights undersection 154(d) of this title.The court may receive expert testimony asan aid to the determination of damages orof what royalty would be reasonable underthe circumstances.


initiation of any possible infringing activi-ty.’’ (citations omitted). This standard wasannounced shortly after the creation of thecourt, and at a time ‘‘when widespreaddisregard of patent rights was undermin-ing the national innovation incentive.’’Knorr–Bremse Systeme Fuer Nutzfahrz-euge GmbH v. Dana Corp., 383 F.3d 1337,1343 (Fed.Cir.2004) (en banc) (citing Advi-sory Committee on Industrial InnovationFinal Report, Dep’t of Commerce(Sep.1979)). Indeed, in Underwater De-vices, an attorney had advised the infring-er that ‘‘[c]ourts, in recent years, have—inpatent infringement cases—found [assert-ed patents] invalid in approximately 80%of the cases,’’ and on that basis the attor-ney concluded that the patentee would notlikely sue for infringement. 717 F.2d at1385. Over time, our cases evolved toevaluate willfulness and its duty of duecare under the totality of the circum-stances, and we enumerated factors in-forming the inquiry. E.g., Read Corp. v.Portec, Inc., 970 F.2d 816, 826–27 (Fed.Cir.1992); Rolls–Royce Ltd. v. GTE Valer-on Corp., 800 F.2d 1101, 1110 (Fed.Cir.1986).

[8, 9] In light of the duty of due care,accused willful infringers commonly assertan advice of counsel defense. Under thisdefense, an accused willful infringer aimsto establish that due to reasonable relianceon advice from counsel, its continued ac-cused activities were done in good faith.Typically, counsel’s opinion concludes thatthe patent is invalid, unenforceable, and/ornot infringed. Although an infringer’s re-liance on favorable advice of counsel, orconversely his failure to proffer any favor-able advice, is not dispositive of the willful-ness inquiry, it is crucial to the analysis.E.g., Electro Med. Sys., S.A. v. Cooper LifeScis., Inc., 34 F.3d 1048, 1056 (Fed.Cir.

1994) (‘‘Possession of a favorable opinion ofcounsel is not essential to avoid a willful-ness determination; it is only one factor tobe considered, albeit an important one.’’).

Since Underwater Devices, we have rec-ognized the practical concerns stemmingfrom our willfulness doctrine, particularlyas related to the attorney-client privilegeand work product doctrine. For instance,Quantum Corp. v. Tandon Corp., 940 F.2d642, 643 (Fed.Cir.1991), observed that‘‘[p]roper resolution of the dilemma of anaccused infringer who must choose be-tween the lawful assertion of the attorney-client privilege and avoidance of a willful-ness finding if infringement is found, is ofgreat importance not only to the partiesbut to the fundamental values sought to bepreserved by the attorney-client privilege.’’We cautioned there that an accused in-fringer ‘‘should not, without the trialcourt’s careful consideration, be forced tochoose between waiving the privilege inorder to protect itself from a willfulnessfinding, in which case it may risk prejudic-ing itself on the question of liability, andmaintaining the privilege, in which case itmay risk being found to be a willful in-fringer if liability is found.’’ Id. at 643–44.We advised that in camera review andbifurcating trials in appropriate caseswould alleviate these concerns. Id. How-ever, such procedures are often consideredtoo onerous to be regularly employed.

Recently, in Knorr–Bremse, we ad-dressed another outgrowth of our willful-ness doctrine. Over the years, we hadheld that an accused infringer’s failure toproduce advice from counsel ‘‘would war-rant the conclusion that it either obtainedno advice of counsel or did so and wasadvised that its [activities] would be aninfringement of valid U.S. Patents.’’Knorr–Bremse, 383 F.3d at 1343 (quoting


Kloster Speedsteel AB v. Crucible Inc., 793F.2d 1565, 1580 (Fed.Cir.1986)). Recog-nizing that this inference imposed ‘‘inap-propriate burdens on the attorney-clientrelationship,’’ id., we held that invoking theattorney-client privilege or work productprotection does not give rise to an adverseinference, id. at 1344–45. We further heldthat an accused infringer’s failure to obtainlegal advice does not give rise to an ad-verse inference with respect to willfulness.Id. at 1345–46.

More recently, in EchoStar we ad-dressed the scope of waiver resulting fromthe advice of counsel defense. First, weconcluded that relying on in-house coun-sel’s advice to refute a charge of willful-ness triggers waiver of the attorney-clientprivilege. EchoStar, 448 F.3d at 1299.Second, we held that asserting the adviceof counsel defense waives work productprotection and the attorney-client privilegefor all communications on the same subjectmatter, as well as any documents memori-alizing attorney-client communications.Id. at 1299, 1302–03. However, we heldthat waiver did not extend to work productthat was not communicated to an accusedinfringer. Id. at 1303–04. EchoStar didnot consider waiver of the advice of coun-sel defense as it relates to trial counsel.

In this case, we confront the willfulnessscheme and its functional relationship tothe attorney-client privilege and workproduct protection. In light of SupremeCourt opinions since Underwater Devicesand the practical concerns facing litigantsunder the current regime, we take thisopportunity to revisit our willfulness doc-trine and to address whether waiver re-sulting from advice of counsel and workproduct defenses extend to trial counsel.See Knorr–Bremse, 383 F.3d at 1343–44.

I. Willful Infringement

The term willful is not unique to patentlaw, and it has a well-established meaning

in the civil context. For instance, oursister circuits have employed a reckless-ness standard for enhancing statutorydamages for copyright infringement. Un-der the Copyright Act, a copyright ownercan elect to receive statutory damages, andtrial courts have discretion to enhance thedamages, up to a statutory maximum, forwillful infringement. 17 U.S.C. § 504(c).Although the statute does not define will-ful, it has consistently been defined asincluding reckless behavior. See, e.g., Yur-man Design, Inc. v. PAJ, Inc., 262 F.3d101, 112 (2d Cir.2001) (‘‘Willfulness in [thecontext of statutory damages for copyrightinfringement] means that the defendant‘recklessly disregarded’ the possibility that‘its conduct represented infringement.’ ’’)(quoting Hamil Am., Inc. v. GFI, Inc., 193F.3d 92, 97 (2d Cir.1999) (additional cita-tions omitted)); Wildlife Express Corp. v.Carol Wright Sales, 18 F.3d 502, 511–12(7th Cir.1994) (same); RCA/Ariola Int’l,Inc. v. Thomas & Grayston Co., 845 F.2d773, 779 (8th Cir.1988) (same); see alsoeBay Inc. v. MercExchange, L.L.C., –––U.S. ––––, 126 S.Ct. 1837, 1840, 164L.Ed.2d 641 (2006) (noting with approvalthat its resolution of the permanent injunc-tion standard in the patent context createdharmony with copyright law).

Just recently, the Supreme Court ad-dressed the meaning of willfulness as astatutory condition of civil liability for pu-nitive damages. Safeco Ins. Co. of Am. v.Burr, ––– U.S. ––––, 127 S.Ct. 2201, 167L.Ed.2d 1045 (2007). Safeco involved theFair Credit Reporting Act (‘‘FCRA’’),which imposes civil liability for failure tocomply with its requirements. Whereasan affected consumer can recover actualdamages for negligent violations of theFCRA, 15 U.S.C. § 1681 o(a), he can alsorecover punitive damages for willful ones,15 U.S.C. § 1681 n(a). Addressing the


willfulness requirement in this context, theCourt concluded that the ‘‘standard civilusage’’ of ‘‘willful’’ includes reckless behav-ior. Id. at 2209; accord McLaughlin v.Richland Shoe Co., 486 U.S. 128, 132–33,108 S.Ct. 1677, 100 L.Ed.2d 115 (1988)(concluding that willful violations of theFair Labor Standards Act include recklessviolations); Trans World Airlines, Inc. v.Thurston, 469 U.S. 111, 128, 105 S.Ct. 613,83 L.Ed.2d 523 (1985). Significantly, theCourt said that this definition comportswith the common law usage, ‘‘which treat-ed actions in ‘reckless disregard’ of the lawas ‘willful’ violations.’’ Id. at 2209 (citingW. Keeton, D. Dobbs, R. Keeton, & D.Owen, Prosser and Keeton on Law ofTorts § 34, p. 212 (5th ed.1984)).

[10, 11] In contrast, the duty of careannounced in Underwater Devices sets alower threshold for willful infringementthat is more akin to negligence. Thisstandard fails to comport with the generalunderstanding of willfulness in the civilcontext, Richland Shoe Co., 486 U.S. at133, 108 S.Ct. 1677 (‘‘The word ‘willful’ TTT

is generally understood to refer to conductthat is not merely negligent.’’), and it al-lows for punitive damages in a mannerinconsistent with Supreme Court prece-dent, see, e.g., Safeco, 127 S.Ct. at 2209,2214–15, 2216 n.20; Smith v. Wade, 461U.S. 30, 39–49, 103 S.Ct. 1625, 75 L.Ed.2d632 (1983). Accordingly, we overrule thestandard set out in Underwater Devicesand hold that proof of willful infringementpermitting enhanced damages requires atleast a showing of objective recklessness.Because we abandon the affirmative dutyof due care, we also reemphasize thatthere is no affirmative obligation to obtainopinion of counsel.

[12–14] We fully recognize that ‘‘theterm [reckless] is not self-defining.’’Farmer v. Brennan, 511 U.S. 825, 836, 114S.Ct. 1970, 128 L.Ed.2d 811 (1994). How-ever, ‘‘[t]he civil law generally calls a per-son reckless who acts TTT in the face of anunjustifiably high risk of harm that is ei-ther known or so obvious that it should beknown.’’ Id. (citing Prosser and Keeton§ 34, pp. 213–14; Restatement (Second) ofTorts § 500 (1965)). Accordingly, to es-tablish willful infringement, a patenteemust show by clear and convincing evi-dence that the infringer acted despite anobjectively high likelihood that its actionsconstituted infringement of a valid patent.See Safeco, 127 S.Ct. at 2215 (‘‘It is [a]high risk of harm, objectively assessed,that is the essence of recklessness at com-mon law.’’). The state of mind of theaccused infringer is not relevant to thisobjective inquiry. If this threshold objec-tive standard is satisfied, the patenteemust also demonstrate that this objective-ly-defined risk (determined by the recorddeveloped in the infringement proceeding)was either known or so obvious that itshould have been known to the accusedinfringer. We leave it to future cases tofurther develop the application of thisstandard.5

Finally, we reject the argument thatrevisiting our willfulness doctrine is eitherimproper or imprudent, as Convolve con-tends. The ultimate dispute in this case isthe proper scope of discovery. While it istrue that the issue of willful infringement,or even infringement for that matter, hasnot been decided by the trial court, it isindisputable that the proper legal standardfor willful infringement informs the rele-vance of evidence relating to that issue

5. We would expect, as suggested by JudgeNewman, post at 1377, that the standards of

commerce would be among the factors acourt might consider.


and, more importantly here, the properscope of discovery. See United StatesNat’l Bank of Or. v. Indep. Ins. Agents ofAm., Inc., 508 U.S. 439, 447, 113 S.Ct.2173, 124 L.Ed.2d 402 (1993) (‘‘[A] courtmay consider an issue ‘antecedent to TTT

and ultimately dispositive of’ the disputebefore it, even an issue the parties fail toidentify and brief.’’ (quoting Arcadia v.Ohio Power Co., 498 U.S. 73, 77, 111 S.Ct.415, 112 L.Ed.2d 374 (1990))); see alsoFed. R. Civ. Pro. R. 26(b) (limiting discov-ery to relevant, not necessarily admissible,information); accord Singleton v. Wulff,428 U.S. 106, 121, 96 S.Ct. 2868, 49L.Ed.2d 826 (1976) (‘‘The matter of whatquestions may be taken up and resolvedfor the first time on appeal is one leftprimarily to the discretion of the courts ofappeals, to be exercised on the facts ofindividual cases.’’); Forshey v. Principi,284 F.3d 1335, 1355–59 (Fed.Cir.2002) (enbanc ). Accordingly, addressing willful-ness is neither hypothetical nor advisory.

II. Attorney–Client Privilege

[15] We turn now to the appropriatescope of waiver of the attorney-client privi-lege resulting from an advice of counseldefense asserted in response to a charge ofwillful infringement. Recognizing that itis ‘‘the oldest of the privileges for confiden-tial communications known to the commonlaw,’’ we are guided by its purpose ‘‘toencourage full and frank communicationbetween attorneys and their clients andthereby promote broader public interestsin the observance of law and administra-tion of justice.’’ Upjohn Co. v. UnitedStates, 449 U.S. 383, 389, 101 S.Ct. 677, 66L.Ed.2d 584 (1981). The privilege also‘‘recognizes that sound legal advice or ad-vocacy serves public ends and that suchadvice or advocacy depends upon the law-yer’s being fully informed by the client.’’Id.

[16–18] The attorney-client privilegebelongs to the client, who alone may waiveit. E.g., Knorr–Bremse, 383 F.3d at 1345;Am. Standard, Inc. v. Pfizer, Inc., 828F.2d 734, 745 (Fed.Cir.1987). ‘‘The widelyapplied standard for determining the scopeof a waiver TTT is that the waiver appliesto all other communications relating to thesame subject matter.’’ Fort James Corp.v. Solo Cup Co., 412 F.3d 1340, 1349 (Fed.Cir.2005). This broad scope is groundedin principles of fairness and serves to pre-vent a party from simultaneously using theprivilege as both a sword and a shield;that is, it prevents the inequitable result ofa party disclosing favorable communica-tions while asserting the privilege as toless favorable ones. EchoStar, 448 F.3d at1301; Fort James, 412 F.3d at 1349. Ulti-mately, however, ‘‘[t]here is no bright linetest for determining what constitutes thesubject matter of a waiver, rather courtsweigh the circumstances of the disclosure,the nature of the legal advice sought andthe prejudice to the parties of permittingor prohibiting further disclosures.’’ FortJames, 412 F.3d at 1349–50.

In considering the scope of waiver re-sulting from the advice of counsel defense,district courts have reached varying re-sults with respect to trial counsel. Somedecisions have extended waiver to trialcounsel, e.g., Informatica Corp. v. Bus.Objects Data Integration, Inc., 454F.Supp.2d 957 (N.D.Cal.2006), whereasothers have declined to do so, e.g., Collabo-ration Props., Inc. v. Polycom, Inc., 224F.R.D. 473, 476 (N.D.Cal.2004); AmpexCorp. v. Eastman Kodak Co., 2006 WL1995140, 2006 U.S. Dist. LEXIS 48702(D.Del. July 17, 2006). Still others havetaken a middle ground and extended waiv-er to trial counsel only for communicationscontradicting or casting doubt on the opin-ions asserted. E.g., Intex Recreation


Corp. v. Team Worldwide Corp., 439F.Supp.2d 46 (D.D.C.2006); BeneficialFranchise Co., Inc. v. Bank One, N.A., 205F.R.D. 212 (N.D.Ill.2001); Micron Separa-tions, Inc. v. Pall Corp., 159 F.R.D. 361(D.Mass.1995).

Recognizing the value of a common ap-proach and in light of the new willfulnessanalysis set out above, we conclude thatthe significantly different functions of trialcounsel and opinion counsel advise againstextending waiver to trial counsel. Where-as opinion counsel serves to provide anobjective assessment for making informedbusiness decisions, trial counsel focuses onlitigation strategy and evaluates the mostsuccessful manner of presenting a case toa judicial decision maker. And trial coun-sel is engaged in an adversarial process.We previously recognized this distinctionwith respect to our prior willfulness stan-dard in Crystal Semiconductor Corp. v.TriTech Microelectronics International,Inc., 246 F.3d 1336, 1352 (Fed.Cir.2001),which concluded that ‘‘defenses prepared[by litigation counsel] for a trial are notequivalent to the competent legal opinionof non-infringement or invalidity whichqualify as ‘due care’ before undertakingany potentially infringing activity.’’ Be-cause of the fundamental difference be-tween these types of legal advice, this situ-ation does not present the classic ‘‘swordand shield’’ concerns typically mandatingbroad subject matter waiver. Therefore,fairness counsels against disclosing trialcounsel’s communications on an entire sub-ject matter in response to an accused in-fringer’s reliance on opinion counsel’s opin-ion to refute a willfulness allegation.

Moreover, the interests weighingagainst extending waiver to trial counselare compelling. The Supreme Court rec-ognized the need to protect trial counsel’s

thoughts in Hickman v. Taylor, 329 U.S.495, 510–11, 67 S.Ct. 385, 91 L.Ed. 451(1947):

[I]t is essential that a lawyer workwith a certain degree of privacy, freefrom unnecessary intrusion by oppos-ing parties and their counsel. Properpreparation of a client’s case demandsthat he assemble information, siftwhat he considers to be the relevantfrom the irrelevant facts, prepare hislegal theories and plan his strategywithout undue and needless interfer-ence. That is the historical and thenecessary way in which lawyers actwithin the framework of our system ofjurisprudence to promote justice andto protect their clients’ interests.

The Court saw that allowing discovery ofan attorney’s thoughts would result in‘‘[i]nefficiency, unfairness and sharp prac-tices,’’ that ‘‘[t]he effect on the legal pro-fession would be demoralizing’’ and thus‘‘the interests of the clients and the causeof justice would be poorly served.’’ Id. at511, 67 S.Ct. 385. Although Hickman con-cerned work product protection, the attor-ney-client privilege maintained with trialcounsel raises the same concerns in patentlitigation. In most cases, the demands ofour adversarial system of justice will faroutweigh any benefits of extending waiverto trial counsel. See Jaffee v. Redmond,518 U.S. 1, 9, 116 S.Ct. 1923, 135 L.Ed.2d337 (1996) (‘‘Exceptions from the generalrule disfavoring testimonial privileges maybe justified, however, by a ‘public goodtranscending the normally predominantprinciple of utilizing all rational means forascertaining the truth.’ ’’) (quoting Tram-mel v. United States, 445 U.S. 40, 50, 100S.Ct. 906, 63 L.Ed.2d 186 (1980) (quotingElkins v. United States, 364 U.S. 206, 80S.Ct. 1437, 4 L.Ed.2d 1669 (1960) (Frank-


furter, J., dissenting))) (additional internalquotation marks omitted).

[19–21] Further outweighing any bene-fit of extending waiver to trial counsel isthe realization that in ordinary circum-stances, willfulness will depend on an in-fringer’s prelitigation conduct. It is cer-tainly true that patent infringement is anongoing offense that can continue afterlitigation has commenced. However, whena complaint is filed, a patentee must have agood faith basis for alleging willful in-fringement. Fed. R. Civ. Pro. 8, 11(b).So a willfulness claim asserted in the origi-nal complaint must necessarily be ground-ed exclusively in the accused infringer’spre-filing conduct. By contrast, when anaccused infringer’s post-filing conduct isreckless, a patentee can move for a prelim-inary injunction, which generally providesan adequate remedy for combating post-filing willful infringement. See 35 U.S.C.§ 283; Amazon.com, Inc. v. Barnesandno-ble.com, Inc., 239 F.3d 1343, 1350 (Fed.Cir.2001). A patentee who does not attemptto stop an accused infringer’s activities inthis manner should not be allowed to ac-crue enhanced damages based solely onthe infringer’s post-filing conduct. Simi-larly, if a patentee attempts to secure in-junctive relief but fails, it is likely theinfringement did not rise to the level ofrecklessness.

We fully recognize that an accused in-fringer may avoid a preliminary injunctionby showing only a substantial question asto invalidity, as opposed to the higher clearand convincing standard required to pre-vail on the merits. Amazon.com, 239 F.3dat 1359 (‘‘Vulnerability is the issue at thepreliminary injunction stage, while validityis the issue at trial. The showing of asubstantial question as to invalidity thusrequires less proof than the clear and con-

vincing showing necessary to establish in-validity itself.’’). However, this lessenedshowing simply accords with the require-ment that recklessness must be shown torecover enhanced damages. A substantialquestion about invalidity or infringement islikely sufficient not only to avoid a prelimi-nary injunction, but also a charge of will-fulness based on post-filing conduct.

[22] We also recognize that in somecases a patentee may be denied a prelimi-nary injunction despite establishing a like-lihood of success on the merits, such aswhen the remaining factors are consideredand balanced. In that event, whether awillfulness claim based on conduct occur-ring solely after litigation began is sustain-able will depend on the facts of each case.

Because willful infringement in the mainmust find its basis in prelitigation conduct,communications of trial counsel have little,if any, relevance warranting their disclo-sure, and this further supports generallyshielding trial counsel from the waiverstemming from an advice of counsel de-fense to willfulness. Here, the opinions ofSeagate’s opinion counsel, received aftersuit was commenced, appear to be of simi-larly marginal value. Although the rea-soning contained in those opinions ulti-mately may preclude Seagate’s conductfrom being considered reckless if infringe-ment is found, reliance on the opinionsafter litigation was commenced will likelybe of little significance.

[23] In sum, we hold, as a generalproposition, that asserting the advice ofcounsel defense and disclosing opinions ofopinion counsel do not constitute waiver ofthe attorney-client privilege for communi-cations with trial counsel. We do not pur-port to set out an absolute rule. Instead,trial courts remain free to exercise their


discretion in unique circumstances to ex-tend waiver to trial counsel, such as if aparty or counsel engages in chicanery.We believe this view comports with Su-preme Court precedent, which has madeclear that rules concerning privileges aresubject to review and revision, when neces-sary. See Jaffee, 518 U.S. at 9, 116 S.Ct.1923 (noting that federal courts are ‘‘to‘continue the evolutionary development oftestimonial privileges.’ ’’ (quoting Tram-mel, 445 U.S. at 47, 100 S.Ct. 906)).

III. Work Product Protection

An advice of counsel defense asserted torefute a charge of willful infringement mayalso implicate waiver of work product pro-tection. Again, we are here confrontedwith whether this waiver extends to trialcounsel’s work product. We hold that itdoes not, absent exceptional circum-stances.

[24, 25] The work product doctrine is‘‘designed to balance the needs of the ad-versary system: promotion of an attor-ney’s preparation in representing a clientversus society’s general interest in reveal-ing all true and material facts to the reso-lution of a dispute.’’ In re Martin Mariet-ta Corp., 856 F.2d 619, 624 (4th Cir.1988).Unlike the attorney-client privilege, whichprovides absolute protection from disclo-sure, work product protection is qualifiedand may be overcome by need and unduehardship. Fed. R. Civ. Pro. 26(b)(3).However, the level of need and hardshiprequired for discovery depends on whetherthe work product is factual, or the result ofmental processes such as plans, strategies,tactics, and impressions, whether memori-alized in writing or not. Whereas factualwork product can be discovered solelyupon a showing of substantial need andundue hardship, mental process work

product is afforded even greater, nearlyabsolute, protection. See id.; Upjohn Co.v. United States, 449 U.S. 383, 400, 101S.Ct. 677, 66 L.Ed.2d 584 (1981); Holm-gren v. State Farm Mut. Auto. Ins., 976F.2d 573, 577 (9th Cir.1992) (holding thatwork product ‘‘may be discovered and ad-mitted when mental impressions are atissue in a case and the need for the mate-rial is compelling’’); see also Director, Of-fice of Thrift Supervision v. Vinson &Elkins, LLP, 124 F.3d 1304, 1307 (D.C.Cir.1997) (‘‘virtually undiscoverable’’). But seeNat’l Union Fire Ins. Co. v. Murray SheetMetal Co., 967 F.2d 980, 984 (4th Cir.1992)(‘‘ ‘absolutely’ immune from discovery’’).

[26] Like the attorney-client privilege,however, work product protection may bewaived. United States v. Nobles, 422 U.S.225, 239, 95 S.Ct. 2160, 45 L.Ed.2d 141(1975). Here, the same rationale generallylimiting waiver of the attorney-client privi-lege with trial counsel applies with evengreater force to so limiting work productwaiver because of the nature of the workproduct doctrine. Protecting lawyers frombroad subject matter of work product dis-closure ‘‘strengthens the adversary pro-cess, and TTT may ultimately and ideallyfurther the search for the truth.’’ MartinMarietta, 856 F.2d at 626; accord EchoS-tar, 448 F.3d at 1301 (‘‘[W]ork-product im-munity TTT promotes a fair and efficientadversarial systemTTTT’’); Coastal StatesGas Corp. v. Dep’t of Energy, 617 F.2d854, 864 (D.C.Cir.1980) (‘‘The purpose ofthe privilege, however, is not to protectany interest of the attorney TTT but toprotect the adversary trial process itself.It is believed that the integrity of oursystem would suffer if adversaries wereentitled to probe each other’s thoughts andplans concerning the case.’’). In addition,trial counsel’s mental processes, which fall


within Convolve’s discovery requests, en-joy the utmost protection from disclosure;a scope of waiver commensurate with thenature of such heightened protection isappropriate. See Martin Marietta, 856F.2d at 625–26.

The Supreme Court has approved ofnarrowly restricting the scope of workproduct waiver. In United States v. No-bles, a criminal case, an accused armedrobber presented the testimony of an in-vestigator in an attempt to discredit thetwo eyewitnesses. When they testified forthe prosecution, the defense attorney re-lied on the investigator’s report in cross-examining the eyewitnesses. 422 U.S. at227, 95 S.Ct. 2160. After the prosecutionrested, the defense attempted to call theinvestigator to testify. The trial court,however, ruled that if the investigator tes-tified, his affirmative testimony wouldmandate disclosure of the portions of hisreport relating to his testimony. Id. at229, 95 S.Ct. 2160. The Supreme Courtagreed that the investigator’s affirmativetestimony waived work product protection,but it approvingly noted the ‘‘quite limit-ed’’ scope of waiver imposed by the trialcourt and its refusal to allow a general‘‘fishing expedition’’ into the defense filesor even the investigator’s report. Id. at239–40, 95 S.Ct. 2160. Similarly, Convolvehas been granted access to the materialsrelating to Seagate’s opinion counsel’sopinion, and he was made available fordeposition. The extent of this waiver ac-cords with the principles and spirit of No-bles.

[27, 28] Accordingly, we hold that, as ageneral proposition, relying on opinioncounsel’s work product does not waivework product immunity with respect totrial counsel. Again, we leave open thepossibility that situations may arise in

which waiver may be extended to trialcounsel, such as if a party or his counselengages in chicanery. And, of course, thegeneral principles of work product protec-tion remain in force, so that a party mayobtain discovery of work product absentwaiver upon a sufficient showing of needand hardship, bearing in mind that a high-er burden must be met to obtain thatpertaining to mental processes. See Fed.R. Civ. Pro. 26(b)(3).

[29] Finally, the work product doctrinewas partially codified in Rule 26(b)(3) ofthe Federal Rules of Civil Procedure,which applies work product protection to‘‘documents and tangible things.’’ Courtscontinue to apply Hickman v. Taylor, 329U.S. 495, 67 S.Ct. 385, 91 L.Ed. 451, to‘‘nontangible’’ work product. See, e.g., Inre Cendant Corp. Sec. Litig., 343 F.3d 658,662–63 (3d Cir.2003); United States v. OneTract of Real Property, 95 F.3d 422, 428 n.10 (6th Cir.1996). This is relevant herebecause Convolve sought to depose Sea-gate’s trial counsel. We agree that workproduct protection remains available to‘‘nontangible’’ work product under Hick-man. Otherwise, attorneys’ files would beprotected from discovery, but attorneysthemselves would have no work productobjection to depositions.

Conclusion

Accordingly, Seagate’s petition for a writof mandamus is granted, and the districtcourt will reconsider its discovery ordersin light of this opinion.

GAJARSA, Circuit Judge, concurring,with whom Circuit Judge NEWMAN joins.

I agree with the court’s decision to grantthe writ of mandamus; however, I writeseparately to express my belief that the


court should take the opportunity to elimi-nate the grafting of willfulness onto section284. As the court’s opinion points out,although the enhanced damages clause ofthat section ‘‘is devoid of any standard forawarding [such damages],’’ ante at 1368,this court has nevertheless read a willful-ness standard into the statute, see, e.g.,Beatrice Foods Co. v. New England Print-ing & Lithographing Co., 923 F.2d 1576,1578 (Fed.Cir.1991); Leesona Corp. v.United States, 220 Ct.Cl. 234, 599 F.2d958, 969 (1979). Because the language ofthe statute unambiguously omits any suchrequirement, see 35 U.S.C. § 284 (‘‘[T]hecourt may increase the damages up tothree times the amount found or as-sessed.’’), and because there is no princi-pled reason for continuing to engraft awillfulness requirement onto section 284, Ibelieve we should adhere to the plainmeaning of the statute and leave the dis-cretion to enhance damages in the capablehands of the district courts. Accordingly,I agree that Underwater Devices, Inc. v.Morrison–Knudsen Co., 717 F.2d 1380(Fed.Cir.1983), should be overruled andthe affirmative duty of care eliminated. Iwould also take the opportunity to overrulethe Beatrice Foods line of cases to theextent those cases engraft willfulness ontothe statute. I would vacate the districtcourt’s order and remand for the court toreconsider its ruling in light of the clearand unambiguous language of section 284.

In order to reach this conclusion thatenhanced damages should not be limitedby willfulness, it is appropriate to place theissue of enhanced damages in the properhistorical perspective. Treble damageswere first introduced into American patentlaw by the Act of February 21, 1793, whichallowed the patentee to recover, in an ac-tion at law, ‘‘a sum, that shall be at leastequal to three times the price, for which

the patentee has usually sold or licensed toother persons, the use of [the invention].’’Act of Feb. 21, 1793, ch. 11, § 5, 1 Stat.318, 322. The Act of April 17, 1800, al-lowed the patentee to recover, also in anaction at law, ‘‘a sum equal to three timesthe actual damage sustained by [the] pat-entee.’’ Act of Apr. 17, 1800, ch. 25, § 3, 2Stat. 37, 38. Notably, however, neither ofthese acts permitted the courts discretionin assessing treble damages.

Such discretion was not conferred uponthe courts until the Act of July 4, 1836,which provided that ‘‘it shall be in thepower of the court to render judgment forany sum above the amount found by [the]verdict as the actual damages sustained bythe plaintiff, not exceeding three times theamount thereof, according to the circum-stances of the case.’’ Act of July 4, 1836,ch. 357, § 14, 5 Stat. 117, 123 (emphasisadded). Nothing in the phrase ‘‘accordingto the circumstances of the case’’ impliesthat the district court’s discretion to awardenhanced damages is contingent upon afinding of willfulness. Indeed, one defi-ciency identified in pre–1836 patent lawwas the insufficiency of damages in com-pensating deserving patentees. Sen. JohnRuggles, S. Report Accompanying SenateBill No. 239, at 6 (Apr. 28, 1836) (explain-ing that pre–1836 patent law ‘‘offer[ed] aninadequate remedy for the [infringement]injury, by giving an action of damages’’).At the same time, pre–1836 patent law wascriticized for its limited standards regard-ing the granting of patents, which led toabusive wielding of the treble-damagesclub by undeserving patentees. See id. at3–4 (describing the ‘‘reprehensible’’ prac-tice of patentees in possession of ‘‘patentsfor what has been long in public use, andwhat every one has therefore a right touse,’’ who, ‘‘being armed with the apparentauthority of the Government, having the


sanction of its highest officers the seal ofstate, scour[ ] the country, and by threatsof prosecution, compel[ ] those who arefound using the thing patented, to pay thepatent price or commutation tribute’’). Itwould appear, then, that the 1836 Act wasintended to control not only the grant ofunwarranted patents, but also to restorethe flexibility of remedy that is the tradi-tional judicial province.

Moreover, due to the division of law andequity, a patentee having no basis for in-voking the equitable jurisdiction of a feder-al court was limited to legal remedies in anaction on the case. Though the court’sequitable powers—such as the power togrant discovery into a defendant’s affairsin order to determine damages—mightstill be accessible to the patentee, access tosuch powers was not guaranteed. SeeSinclair Refining Co. v. Jenkins Petro-leum Process Co., 289 U.S. 689, 696, 53S.Ct. 736, 77 L.Ed. 1449 (1933) (‘‘To holdthat the plaintiff in an action at law mayhave discovery of damages is not to saythat the remedy will be granted as a mat-ter of course, or that protection will not begiven to his adversary against impertinentintrusion.’’). Even if discovery was grant-ed in an action on the case, the patenteehad no basis for collecting the infringer’sprofits through an equitable action for aninjunction and accounting. See Root v.Ry., 105 U.S. 189, 215–216, 26 L.Ed. 975(1882). As such, actual damages provableat law—though not ‘‘inadequate’’ in theequitable sense—could nevertheless beless than sufficient to compensate the pat-entee. In such a case, a discretionaryenhancement of damages would be appro-priate for entirely remedial reasons, irre-spective of the defendant’s state of mind.

Apart from the difficulties created bythe old law and equity division, a district

court might decide to enhance a patentee’sdamages to overcome other obstacles.For example, assume that a substantialportion of a defendant’s sales data is inad-vertently but irretrievably lost prior todiscovery. In such a case, a successfulplaintiff, through no fault of its own, mightbe unable to prove the real extent of dam-age caused by the infringement. It wouldbe entirely reasonable, in my judgment,for the district court to exercise its statu-tory discretion and enhance the damageaward by some measure. Another fore-seeable situation is one in which a plaintiff,having successfully secured a damageaward for past infringement, moves for apermanent injunction. However, in orderto avoid manifest injustice, a multiplicity ofsuits, etc., the district court might reason-ably determine that monetary relief in theform of enhanced damages is more appro-priate than an injunction. See, e.g., City ofHarrisonville v. W.S. Dickey Clay Mfg.Co., 289 U.S. 334, 53 S.Ct. 602, 77 L.Ed.1208 (1933); New York City v. Pine, 185U.S. 93, 22 S.Ct. 592, 46 L.Ed. 820 (1902);Restatement (Second) of Torts § 951(1979); see also eBay Inc. v. MercEx-change L.L.C., ––– U.S. ––––, 126 S.Ct.1837, 1839, 164 L.Ed.2d 641 (2006) (‘‘Thedecision to grant or deny permanent in-junctive relief is an act of equitable discre-tion by the district court, reviewable onappeal for abuse of discretion.’’). Yet, byreading a willfulness requirement into thestatute, we are unnecessarily confining en-hanced damages to a subset of cases wherepunitive awards are appropriate, andthereby restricting district courts from ex-ercising legitimate, remedial options of thetype discussed above.

In spite of our seemingly unequivocalholding in cases like Beatrice Foods, ourcase law has not been entirely consistentwith respect to enhanced damages. We


have recognized a remedial aspect of suchdamages in at least three precedentialopinions. See King Instrs. Corp. v. Pere-go, 65 F.3d 941, 951 n. 6 (Fed.Cir.1995)(‘‘The problem of inadequate compensationwhen damages are based on a reasonableroyalty has been expressly recognized inseveral casesTTTT The solutions suggestedinclude awards of treble damages, attorneyfees and prejudgment interest, TTT, anddiscretionary awards of greater than a rea-sonable royalty[.] TTT Such discretionaryincreases may be appropriate where plain-tiffs cannot prove direct and foreseeabledamages in the form of lost profits.’’ (em-phasis added)); Rite–Hite Corp. v. KelleyCo., 819 F.2d 1120, 1126 (Fed.Cir.1987)(‘‘Whether or not ‘willfulness’ is found, thecourt has authority to consider the degreeof culpability of the tortfeasor. ‘The meas-ure of damages, as indeed the assessmentof attorney fees, provides an opportunityfor the trial court to balance equitableconcerns as it determines whether andhow to recompense the successful liti-gant.’ ’’ (quoting S.C. Johnson & Son, Inc.v. Carter–Wallace, Inc., 781 F.2d 198, 201(Fed.Cir.1986)) (emphasis added)); Sticklev. Heublein, Inc., 716 F.2d 1550, 1563

(Fed.Cir.1983) (‘‘As a final matter wewould add that the trial court may awardan amount of damages greater than a rea-sonable royalty so that the award is ‘ade-quate to compensate for the infringement.’TTT Such an increase, which may be statedby the trial court either as a reasonableroyalty for an infringer (as in Panduit) oras an increase in the reasonable royaltydetermined by the court, is left to itssound discretion.’’ (emphasis altered)).1

Our occasional recognition of this reme-dial aspect of section 284 is not surprisingbecause it is practically dictated by theSupreme Court’s reasoning in GeneralMotors Corp. v. Devex Corp., 461 U.S. 648,103 S.Ct. 2058, 76 L.Ed.2d 211 (1983)(‘‘GM ’’ or ‘‘Devex ’’), which deals with thestandard for awarding interest under thevery same statute. Prior to 1946, the pat-ent laws of the United States did not con-tain a provision relating to any interestdue to a prevailing patentee in a suit forinfringement; however, interest was nev-ertheless awarded under the common lawrule—referred to as the Duplate stan-dard—that, in the absence of bad faith onthe part of the defendant, interest did notaccrue on unliquidated damages. See, e.g.,

1. And in one nonprecedential opinion, seeFed. Cir. R. 37.1(d), this court actually re-manded a case for the district court to consid-er increasing damages for remedial reasons:

As to the claim for increased damagesunder 35 U.S.C. § 284, contrary to the dis-trict court’s holding, the authority to in-crease damages is not restricted to excep-tional circumstances. Damages should beincreased where necessary to afford full com-pensation for infringement. See GeneralMotors Corp. v. Devex Corp., [461 U.S. 648,103 S.Ct. 2058, 76 L.Ed.2d 211 (1983)].Under the circumstances of this case andconsidering that there will be a trial ondamages, we remand on the question ofincreased damages so that the district courtcan take the evidence at trial on damagesinto account in determining that question.

Sherman Indus., Inc. v. Proto–Vest, Inc., 732F.2d 168 (Fed.Cir.1984) (table) (emphasisadded); see also Code–Alarm, Inc. v. Electro-motive Techs. Corp., Nos. 96–1368, 96–1369,and 96–1385, 1997 WL 311542, *2, 1997U.S.App. LEXIS 13031, at *4 (Fed.Cir.1997)(nonprecedential) (‘‘In cases where awardingdamages based on a reasonable royalty doesnot adequately compensate the patentee, it isalso within the district court’s discretion toaward damages that exceed a reasonable roy-alty.’’); Aptargroup, Inc. v. Summit PackagingSys., Nos. 97–1475 and 97–1484, 1998 WL31744, *9–10, 1998 U.S.App. LEXIS 28047, at*24–*25 (Fed.Cir.1998) (nonprecedential)(same).


Duplate Corp. v. Triplex Safety Glass Co.of N. Am. 298 U.S. 448, 459, 56 S.Ct. 792,80 L.Ed. 1274 (1936). In 1946, however,Congress statutorily made available toprevailing patentees ‘‘interest, as may befixed by the court.’’ Act of Aug. 1, 1946,Pub.L. No. 79–587, 60 Stat. 778. In 1952,this provision underwent minor, non-sub-stantive modification, to become today’sstatute, i.e., 35 U.S.C. § 284 (providing toprevailing patentees ‘‘interest TTT as fixedby the court’’). Act of July 19, 1952,Pub.L. No. 82–593, 66 Stat. 792, 813. Asis evident from the plain language of boththe 1946 and the 1952 Acts, Congress didnot answer with these enactments thequestion of whether the Duplate standardshould apply to interest awards underthese statutory provisions.

That question was squarely presented inGM, and the Supreme Court held that nobad-faith standard should be read into sec-tion 284. Id. at 653, 103 S.Ct. 2058 (‘‘Onthe face of § 284, a court’s authority toaward interest is not restricted to excep-tional circumstances, and there is no war-rant for imposing such a limitation. WhenCongress wished to limit an element ofrecovery in a patent infringement action, itsaid so explicitly. With respect to attor-ney’s fees, Congress expressly providedthat a court could award such fees to aprevailing party only ‘in exceptional cases.’35 U.S.C. § 285. The power to awardinterest was not similarly restricted.’’).The Court also observed that ‘‘[t]he stan-dard governing the award of prejudgmentinterest under § 284 should be consistentwith Congress’ overriding purpose of af-fording patent owners complete compensa-tion.’’ Id. at 655, 103 S.Ct. 2058. Thus,because ‘‘an award of prejudgment interestis necessary to ensure that the patent own-er is placed in as good a position as hewould have been in had the infringer en-

tered into a reasonable royalty agree-ment,’’ id. at 655, 103 S.Ct. 2058, the Courtheld that ‘‘prejudgment interest should beawarded under § 284 absent some justifi-cation for withholding such an award,’’ id.at 657, 103 S.Ct. 2058.

While the issue in GM was ‘‘[t]he stan-dard governing the award of prejudgmentinterest under § 284,’’ id. at 655, 56 S.Ct.792, the rationale underlying the GM hold-ing applies with equal force to enhanceddamages, and it is in direct dialectic ten-sion with some of this court’s case lawconcerning the standard governing theaward of such damages. The statutory-language argument applies with equalforce to both interest and enhanced dam-ages; just as prejudgment interest may beawarded in other than ‘‘exceptional cases’’under the plain language of the statute, sotoo may enhanced damages. Moreover,discretionary use of enhanced damages toachieve remedial goals is likewise ‘‘consis-tent with Congress’ overriding purpose ofaffording patent owners complete compen-sation.’’ Id.

The fact that the interest provision ofsection 284 was previously only a creatureof common law does not diminish the appli-cability of GM to the provision for en-hanced damages. In GM, the Court ex-plained:

There is no basis for inferring that Con-gress’ adoption of the provision concern-ing interest merely incorporated theDuplate standard. This is not a case inwhich Congress has reenacted statutorylanguage that the courts had interpretedin a particular way. In such a situation,it may well be appropriate to infer thatCongress intended to adopt the estab-lished judicial interpretation. See, e.g.,Herman & MacLean v. Huddleston, 459U.S. 375, 384–386, 103 S.Ct. 683, 74


L.Ed.2d 548 (1983); Lorillard v. Pons,434 U.S. 575, 580–581, 98 S.Ct. 866, 55L.Ed.2d 40 (1978). In this case, howev-er, the predecessor statute did not con-tain any reference to interest, and the1946 amendments specifically added aprovision concerning interest in patentinfringement actions. We cannot agreewith petitioner that the only significanceof Congress’ express provision for theaward of interest was the incorporationof a common-law standard that devel-oped in the absence of any specific pro-vision concerning interest.

GM, 461 U.S. at 653–54, 103 S.Ct. 2058.But unlike prejudgment interest, a provi-sion for enhanced damages has been a partof nearly every patent act since 1790.Therefore, we can reasonably and logicallyconclude that the enhanced damages per-mitted by section 284 are not inherentlyexempt from the inference that Congresswas merely reenacting consistently-inter-preted statutory language with the 1952Act.

Nevertheless, the inference is not war-ranted in this case because pre–1952 inter-pretations of the enhanced damages stat-utes have at times explicitly recognized aremedial aspect. See, e.g., Clark v. Woost-er, 119 U.S. 322, 326, 7 S.Ct. 217, 30 L.Ed.392 (1886) (‘‘It is a general rule in patentcauses, that established license fees arethe best measure of damages that can beused. There may be damages beyond this,such as the expense and trouble the plain-tiff has been put to by the defendant; andany special inconvenience he has sufferedfrom the wrongful acts of the defendant;but these are more properly the subjectsof allowance by the court, under the au-thority given to it to increase the dam-ages.’’); Birdsall v. Coolidge, 93 U.S. 64,69–70, 23 L.Ed. 802 (1876) (explaining that

the provision making treble damages avail-able in equity helps ameliorate the ‘‘mani-fest injustice TTT done to the complainantin equity suits [under prior law], by with-holding from him a just compensation forthe injury he sustained by the unlawfulinvasion of his exclusive rights’’).

It is also noted that the Supreme Courtcases cited in this court’s opinion—onlyone of which pre-dates the 1952 Act—donot hold that a finding of willfulness isnecessary to support an award of en-hanced damages. See ante at 1368–69.At most, those cases merely stand for theuncontroversial proposition that a findingof willfulness is sufficient to support anaward of enhanced damages. See Dowlingv. United States, 473 U.S. 207, 227, 105S.Ct. 3127, 87 L.Ed.2d 152 (1985) (‘‘Despiteits undoubted power to do so, however,Congress has not provided criminal penal-ties for distribution of goods infringingvalid patents TTTT [n.19] Congress insteadhas relied on provisions affording patentowners a civil cause of action. 35 U.S.C.§§ 281–294. Among the available reme-dies are treble damages for willful in-fringement.’’); Aro Mfg. Co. v. ConvertibleTop Replacement Co., 377 U.S. 476, 508, 84S.Ct. 1526, 12 L.Ed.2d 457 (1964) (explain-ing that the patentee ‘‘could in a case ofwillful or bad-faith infringement recoverpunitive or ‘increased’ damages under thestatute’s trebling provision’’); Seymour v.McCormick, 57 U.S. 480, 489, 16 How. 480,14 L.Ed. 1024 (1854) (‘‘The power to inflictvindictive or punitive damages is commit-ted to the discretion and judgment of thecourt within the limit of trebling the actualdamages found by the jury.’’). Thosecases cannot be interpreted to mean thatenhanced damages are limited to a findingof willfulness.

To the extent this court relies on inter-pretations of other statutes to support its


reading of 35 U.S.C. § 284, those statutesfail to ground the postulate. For example,the court analogizes section 284 to 17U.S.C. § 504(c) of the Copyright Act inorder to demonstrate that a showing ofrecklessness is required to support anaward of enhanced damages. Ante at1370–71. That comparison is unconvinc-ing, however, because section 504(c) actu-ally uses the word ‘‘willfully’’ to describethe threshold state of mind necessary tojustify an award of enhanced damages,whereas section 284 does not. The courtdraws a similar analogy between section284 and 15 U.S.C. § 1681 n(a) of the FairCredit Reporting Act (‘‘FCRA’’), the latterhaving recently been interpreted by theSupreme Court to require a showing ofobjective recklessness to support enhanceddamages. Safeco Ins. Co. of Am., Inc. v.Burr, ––– U.S. ––––, 127 S.Ct. 2201, 167L.Ed.2d 1045 (2007). By contrasting thelanguage of 15 U.S.C. § 1681 n(a)—whichuses the word ‘‘willfully’’ to describe thethreshold state of mind necessary to justi-fy an award of enhanced damages underthe FCRA—with the language of 15 U.S.C.§ 1681 o(a)—which uses the word ‘‘negli-gent’’ to describe the threshold state ofmind necessary to justify an award of actu-al damages under the FCRA—this courtconcludes that the negligence-like state ofmind established by Underwater Devicesas necessary and generally sufficient tojustify an award of enhanced damages un-der section 284 of the Patent Act is incon-sistent with the objective recklessnessstandard of Safeco. Ante at 1371. Aswith the copyright statute, the problemwith this court’s logic is that it depends onthe assumption that section 284 also usesthe word ‘‘willfully,’’ which of course itdoes not. This assumption, unwarrantedfor several reasons already discussed, isadditionally discordant with the Supreme

Court’s emphasis in Safeco on adherenceto statutory language. See 127 S.Ct. at2209 (relying on the ‘‘interpretive assump-tion that Congress knows how we construestatutes and expects us to run true toform’’); cf. eBay, Inc. v. MercExchange,L.L.C., ––– U.S. ––––, 126 S.Ct. 1837, 1839,164 L.Ed.2d 641 (2006) (‘‘Nothing in thePatent Act indicates that Congress intend-ed TTT a departure [from the traditions ofequity in granting injunctions]. To thecontrary, the Patent Act expressly pro-vides that injunctions ‘may’ issue ‘in accor-dance with the principles of equity.’ ’’).We should take this opportunity to bringpatent law regarding damages into themainstream of the general law and avoidthe necessity of carving a special niche forthe realm of patent law.

It is also important to note several othercontexts in which enhanced damages al-lowed by statute have a remedial purpose.See, e.g., 15 U.S.C. § 1117(a) (discretionaryaward of up to three times actual damages‘‘shall constitute compensation and not apenalty’’); Cook County v. United States,538 U.S. 119, 130, 123 S.Ct. 1239, 155L.Ed.2d 247 (2003) (‘‘To begin with it isimportant to realize that treble damageshave a compensatory side, serving remedi-al purposes in addition to punitive objec-tivesTTTT While the tipping point betweenpay-back and punishment defies generalformulation, being dependent on the work-ings of a particular statute and the courseof particular litigation, the facts about theFCA show that the damages multiplier hascompensatory traits along with the puni-tive.’’); Agency Holding Corp. v. Malley–Duff & Associates, Inc., 483 U.S. 143, 151,107 S.Ct. 2759, 97 L.Ed.2d 121 (1987)(‘‘Both RICO and the Clayton Act aredesigned to remedy economic injury byproviding for the recovery of treble dam-ages, costs, and attorney’s fees.’’); Am.


Soc’y of Mech. Eng’rs v. Hydrolevel Corp.,456 U.S. 556, 575, 102 S.Ct. 1935, 72L.Ed.2d 330 (1982) (‘‘It is true that anti-trust treble damages were designed inpart to punish past violations of the anti-trust lawsTTTT But treble damages werealso designed to deter future antitrust vio-lationsTTTT Moreover, the antitrust privateaction was created primarily as a remedyfor the victims of antitrust violations.’’);Brunswick Corp. v. Pueblo Bowl–O–Mat,Inc., 429 U.S. 477, 485–86, 97 S.Ct. 690, 50L.Ed.2d 701 (1977) (‘‘Section 4 [of theClayton Act], in contrast, is in essence aremedial provision. It provides trebledamages to ‘[a]ny person who shall beinjured in his business or property by rea-son of anything forbidden in the antitrustlawsTTTT’ Of course, treble damages alsoplay an important role in penalizingwrongdoers and deterring wrongdoing, aswe also have frequently observedTTTT Itnevertheless is true that the treble-dam-ages provision, which makes awards avail-able only to injured parties, and measuresthe awards by a multiple of the injuryactually proved, is designed primarily as aremedy.’’).

Simply put, interpretations of the pre-cursors to section 284, of section 284 itself,and of any other enhanced damages stat-utes give rise to no inference that Con-gress was merely reenacting consistently-interpreted statutory language with the1952 Act. That inconsistency seems to

abound in the case law is nothing new.According to Professor Chisum, ‘‘[w]hetherthe purpose of an increased damage awardshould be exemplary (i.e. to punish anddeter flagrant acts of patent infringement)or compensatory (i.e. to compensate thepatent owner for immeasurable expensesand losses) is a longstanding controversyin the law. Perhaps the best view is thatincreased awards combine both purposes.’’7 Donald S. Chisum, Chisum on Patents§ 20.03[4][b][iii] (2002).2 Thus, while somecourts have held that a finding of willful-ness is necessary to support an award ofenhanced damages, other courts have tak-en a remedial view of the statute. See,e.g., Saturn Mfg., Inc. v. Williams PatentCrusher & Pulverizer Co., 713 F.2d 1347,1358 (8th Cir.1983) (‘‘It appears that thedistrict court imposed a higher standard,the exceptional circumstances standard, indenying increased damages. Although anaward of increased damages is discretion-ary under the statute and the decidedcases, nonetheless in view of the analysisin Devex that section 284 does not incorpo-rate the exceptional circumstances stan-dard of section 285, TTT we feel it appro-priate to remand this issue to the districtcourt for further consideration in light ofDevex.’’); 3 Trio Process Corp. v. L. Gold-stein’s Sons, Inc., 638 F.2d 661, 663 (3dCir.1981) (‘‘Because it is often difficult inpatent litigation to measure with mathe-matical precision a patentee’s damages, the

2. Without citation, Chisum summarily assertsthat ‘‘[t]he power to increase is triggered onlywhen the infringer’s conduct warrants an ex-emplary award.’’ 7 Chisum § 20.03[4][b][iii].No Supreme Court case supports this propo-sition. I also discern no principled basis forinferring such a proposition. If Congress wasconcerned with ensuring that patentees arefully compensated for infringement, therewould seem to be no reason to condition fullcompensation upon a showing of culpableconduct.

3. In Saturn, the district court appears to havedrawn a distinction between willfulness and‘‘exceptional circumstances,’’ holding the lat-ter to require proof of more egregious behav-ior. The Eighth Circuit reversed, instructingthe district court that its finding of willfulnesscould support an award of enhanced dam-ages. Importantly, however, the Eighth Cir-cuit did not hold that willfulness is requiredto make such an award.


enhancement provision of the statute isdesigned to permit, inter alia, adequatecompensation for an infringement wherestrict legal rules would not afford it.’’).4

To be sure, the majority rule has beenthat an award of enhanced damages pursu-ant to section 284 requires a finding ofwillfulness. 7 Chisum § 20.03[4][b][iii].However, the existence of this ‘‘longstand-ing controversy’’ adequately demonstratesthat Congress was not merely reenactingconsistently-interpreted statutory lan-guage with the 1952 Act so as to justifythe inference suggested in GM. Therefore,I am of the judgment that this courtshould not continue to read a willfulnessrequirement into section 284, to supportthe enhancement of damages. That said,willfulness remains a relevant consider-ation under section 284. Thus, to the ex-tent Convolve seeks to demonstrate thatSeagate is willfully infringing its patents, Iagree with the court that it is appropriateto follow the Supreme Court’s statutoryinterpretation in Safeco. See 127 S.Ct. at2209 (explaining that its interpretation of‘‘willfully’’ adheres to ‘‘the general rulethat a common law term in a statute comeswith a common law meaning’’). Under myreading of Safeco, which I believe is consis-tent with that of this court, Convolve mustshow, by clear and convincing evidence, (1)that Seagate’s theory of noninfringe-ment/invalidity, was not only incorrect, butwas objectively unreasonable, and (2) thatSeagate ran a risk of infringing Convolve’spatents substantially greater than the riskassociated with a theory of noninfringe-ment/invalidity that was merely careless.See id. at 2215 (holding that a defendant‘‘does not act in reckless disregard of [astatute] unless the action is not only aviolation under a reasonable reading of the

statute’s terms, but shows that the [defen-dant] ran a risk of violating the law sub-stantially greater than the risk associatedwith a reading that was merely careless’’).

If Convolve is unable to show the for-mer, Seagate cannot be found to have will-fully infringed, regardless of any evidenceof its subjective beliefs. See id. at 2216 n.20 (‘‘To the extent that [the plaintiffs] ar-gue that evidence of subjective bad faithcan support a willfulness finding evenwhen the [defendant’s] reading of the stat-ute is objectively reasonable, their argu-ment is unsound.’’); see also id. at 2215(explaining that ‘‘there is no need to pin-point the negligence/recklessness line[where the defendant’s] reading of thestatute, albeit erroneous, was not objec-tively unreasonable’’). Thus, Seagate’ssubjective beliefs may become relevantonly if Convolve successfully makes thisshowing of objective unreasonableness.See id. at 2216 n. 20 (leaving open thepossibility that ‘‘good-faith reliance on le-gal advice should render [defendants] im-mune to claims [of willfulness]’’). Becauseno finding of objective unreasonablenesshas yet been made in this case, the issuesof attorney-client privilege and work prod-uct may not even need to be confronted.As such, it is premature to comment onthe scope of the waiver of the attorney-client privilege and work-product protec-tion.

NEWMAN, Circuit Judge, concurring.

I join the court’s holding that a volun-tary waiver of the attorney-client privilegeand work product protection as to patentopinion counsel is not a waiver of anyprivilege or protection as to litigationcounsel. I also agree with the separate

4. These cases, while not binding on this court, are persuasive authority nonetheless.


decision to overrule Underwater Devices,but only because that case has been misap-plied, in the extremis of high-stakes litiga-tion, to mean that ‘‘due care’’ requiresmore than the reasonable care that a re-sponsible enterprise gives to the propertyof others. The obligation to obey the lawis not diminished when the property is‘‘intellectual.’’ However, experience, andthe exhortations of the amici curiae, havepersuaded me that we should reduce theopportunities for abusive gamesmanshipthat the ‘‘due care’’ standard apparentlyhas facilitated.

The thrust of Underwater Devices wasthat patent property should receive thesame respect that the law imposes on allproperty. Industrial innovation would fal-ter without the order that patent propertycontributes to the complexities of invest-ment in technologic R & D and commer-cialization in a competitive marketplace.The loser would be not only the public, butalso the nation’s economic vigor. So I amsympathetic when told of the dispropor-tionate burdens that a rigorous reading ofUnderwater Devices has placed on other-wise law-abiding commercial enterprise.Thus, to the extent that Underwater De-vices has been applied as a per se rule thatevery possibly related patent must be ex-haustively studied by expensive legal tal-ent, lest infringement presumptively incurtreble damages, I agree that the standardshould be modified.

Although new uncertainties are intro-duced by the court’s evocation of ‘‘objec-tive standards’’ for such inherently sub-

jective criteria as ‘‘recklessness’’ and‘‘reasonableness,’’ I trust that judicial wis-dom will come to show the way, in thecommon-law tradition. The standards ofbehavior by which a possible infringerevaluates adverse patents should be thestandards of fair commerce, including rea-sonableness of the actions taken in theparticular circumstances. It cannot bethe court’s intention to tolerate the inten-tional disregard or destruction of the val-ue of the property of another, simply be-cause that property is a patent; yet thestandard of ‘‘recklessness’’ appears to rat-ify intentional disregard, and to reject ob-jective standards requiring a reasonablerespect for property rights.

The remedial and deterrent purposes ofmultiplied damages, and their measure fora particular case, are best established bythe district court in light of the originalpurposes of 35 U.S.C. § 284, as set forth inJudge Gajarsa’s concurring opinion. Thefundamental issue remains the reasonable-ness, or in turn the culpability, of commer-cial behavior that violates legally protectedproperty rights.

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