Advice of Counsel Defense Waiver Applies to Trial-Counsel’s Pre-Suit Communications

The court granted plaintiff's motion to compel trial counsel's pre-suit communications and work product related to defendant's opinion of counsel defense that defendant withheld as privileged. "⁠[Trial counsel's] negotiations on Defendant’s behalf pre-suit sought to avoid the adversarial process and engage in voluntary alternative dispute resolution. The relevant circumstances concerning the disclosure Plaintiff seeks -- [counsel's] pre-suit communications and work -- indicate that [counsel's] function was more analogous to that of advice or opinion counsel than trial counsel. . . . [Counsel] was retained for a period from 2010–2011 and again from 2015–2016. During this time, Defendant was regularly communicating with Plaintiff regarding Plaintiff’s [patent] and accusations of infringement against Defendant. . . . It would be illogical to shield from discovery the very conduct that is dispositive of whether infringement was committed willfully. . . . Depending upon the advice Defendant received from [trial counsel] regarding Defendant’s alleged infringement activities, it may or may not have been reasonable for Defendant to rely on [opinion counsel's] exculpatory opinion."

Zen Design Group, Ltd. v. Scholastic, Inc., 2-16-cv-12936 (MIED June 22, 2018, Order) (Cleland, USDJ)