The Complaintant filed a motion in limine choosing the district court to preclude the Defendant from offering at trial any testimony concerning the Defendant’s opinion of counsel defense which was not disclosed during discovery. As described through the district court, the Complaintant also alleged the Defendant selectively created certain documents relating towards the Defendant’s opinion of counsel defense and instructed witnesses to not testify on matters in regards to the Defendant’s analysis in to the Plaintiff’s allegations of patent violation and thievery of trade secrets.
The district court discovered that the Plaintiff’s motion was vague since it unsuccessful to deal with which documents and opinions were withheld.
The district court then agreed “the situation of In re Echostar Commc’n Corp., 448 F.3d 1294 (Given. Cir. 2006), establishes the key that whenever an accused patent infringer asserts a guidance-of-counsel defense regarding willful violation, it waives its attorney client-privilege and work product immunity for just about any document or opinion that discusses a communication into it or from this concerning if the patent applies.Inch
Nevertheless, the district court discovered that it might be unfair “to preclude the Defendant from offering at trial proof of its advice-of-counsel defense due to the fact the Complaintant didn’t obtain details about that defense during discovery. Further, as also noted through the Defendant, the Plaintiff’s motion confuses the constraints of the perception of counsel defense. The defense concerns the problem of patent violation, not thievery of trade secrets.”
Accordingly, the district court denied the motion.
Texas Advanced Optoelectronic Solutions, Corporation. v. Intersil Corporation, Situation No. 4:08-CV-451 (E.D. Tex. February. 2015)