Many thanks!

Joe

Affinion Net Patents, Inc. v. Maritz, Inc., __ F. Supp. 2d __, __, 2006 WL 2096712, *1 (D. Del. July 28, 2006) (stating in dicta, “Defendant contends that, because it has retained different lawyers, although in the same firm, as opinion and litigation counsel, only communications with opinion counsel are waived. This argument is not supported by the case law of the Federal Circuit. When a defendant asserts the advice-of-counsel defense, the attorney-client privilege is waived as to communications with all counsel related to the same subject matter. Accordingly, Defendant has waived the attorney-client privilege as to communications with ‘litigation counsel,’ and any other counsel, to the extent the communications relate to non-infringement, invalidity, and any other defense to infringement. . . . The work-product privilege is waived only to the extent it is relevant to the alleged infringer’ state of mind, i.e., whether counsel’s opinion is ‘thorough enough, as combined with other factors, to instill a belief in the infringer that the court might reasonably hold the patent is invalid, not infringed, or unenforceable.’ Accordingly, impressions and opinions of attorneys, which are not provided by the attorneys to the clients, are not discoverable because they would not have had an impact on the accused infringer’s state of mind.â€? – citations to Echostar and other cases omitted – denying patentee’s motion to compel accused infringer to produce two claim charts comparing the asserted patent claims to prior art, where the claim charts had been inadvertently disclosed to patentee’s counsel, and ruling that the waiver associated with the accused infringer’s reliance on advice of counsel did not extend to the claim charts, even though opinion counsel and trial counsel were different lawyers in the same firm, because there was no showing that the claim charts had ever been disclosed or communicated to the client – “The Court concludes that Defendant did not waive privilege as to the inadvertently disclosed charts, and therefore, Defendant is not required to produce the charts. The Court does not reach this conclusion because the charts were prepared by counsel and are protected by the work-product privilege, as Defendant argues, but because the charts were not disclosed or provided to Defendant by counsel. Further, the Court notes that the charts do not discuss a communication between attorney and client.â€?)

Indiana Mills & Mfg., Inc. v. Dorel Indus., No. 1:04CV01102-LJM-WTL, 2006 WL 1749413, *6-*7 (S.D. Ind. May 26, 2006) (on reconsideration in view of EchoStar, ruling that by disclosing noninfringement opinion of counsel, accused infringer did not waive privilege for invalidity opinion, further ruling that EchoStar does not prohibit a district court from balancing the needs of the privilege against the need for discovery when addressing whether a waiver will extend to trial counsel and post-filing communications with trial counsel and ruling that under the circumstances of the case the wavier of attorney-client privilege and work-product immunity would not apply to communications made after the lawsuit commenced since there was no evidence that the accused infringer obtained any additional post-filing opinions from trial counsel)

Bob