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Important patent decision

Yesterday, the Federal Circuit issued a quite important decision in the area of willful infringement. The decision, before the court on mandamus, is In re Echostar. The key question in the matter is the scope of the waiver created by Echostar’s reliance on legal advice as a way to dispel the notion that its infringement was willful. Resolving a longstanding split in the district courts, the Federal Circuit holds that (a) the question is a matter of Federal Circuit (not regional circuit) law, and (b) the waiver does not extend to materials that the advising lawyer did not communicate to the client. Instead, these uncommunicated materials remain behind the protective cloak of the work product doctrine.