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In re EchoStar Communs. Corp.

United States Court of Appeals for the Federal Circuit

May 1, 2006, Decided

MISCELLANEOUS DOCKET NOS. 803, 805

Opinion

 [***1677]  [*1296]   ON PETITION FOR WRIT OF MANDAMUS

ORDER

EchoStar Communications Corporation, EchoStar DBS Corporation, EchoStar Technologies Corporation, and Echosphere Limited Liability Company (collectively "EchoStar") petition for a writ of mandamus, in Miscellaneous Docket No. 803, to direct the United States District Court for the Eastern District of Texas, in case 2: 04-CV-1, to vacate its September 26, 2005 and October 6, 2005 orders that compelled EchoStar to produce documents created by the law firm Merchant & Gould P.C. that EchoStar asserts are protected from discovery by the work-product doctrine. Merchant & Gould moves for leave to intervene in Miscellaneous Docket No. 803 and submits its own petition for a writ of mandamus, filed as Miscellaneous Docket No. 805. TiVo, Inc. opposes the petitions and responds to the motion for leave to intervene. EchoStar and Merchant & Gould reply. We grant Merchant & Gould's unopposed motion for leave to intervene  [*1297]  in Miscellaneous Docket No. 803. The motions for leave to file the replies are also granted. To the extent set forth below, we grant the petition for mandamus.

 [**2]  I

TiVo sued EchoStar for infringement of its U.S. Patent No. 6,233,389 ("the '389 patent"). In response to the allegation of willful infringement, EchoStar asserted the defense of reliance on advice of counsel. Prior to the filing of the action, EchoStar relied on advice of in-house counsel. After the action was filed, EchoStar obtained additional legal advice  [***1678]  from Merchant & Gould but elected not to rely on it. Presumably to explore further EchoStar's state of mind in determining that it did not infringe the patent, TiVo sought production of documents in the possession of EchoStar and Merchant & Gould. The district court held that by relying on advice of in-house counsel EchoStar waived its attorney-client privilege and attorney work-product immunity relating to advice of any counsel regarding infringement, including Merchant & Gould. The district court indicated that the scope of the waiver included communications made either before or after the filing of the complaint and any work product, whether or not the product was communicated to EchoStar. The district court also held that EchoStar could redact information related only to trial preparation or information unrelated to infringement. [**3]  EchoStar produced communications, including two infringement opinions from Merchant & Gould, but did not produce any work product related to the Merchant & Gould opinions. 1

Thereafter, the parties sought clarification of the district court's order. TiVo argued that the district court should order EchoStar to produce all Merchant & Gould documents that relate to the advice-of-counsel defense, even if EchoStar was not in possession of the documents because they were never communicated to EchoStar. EchoStar argued that it should only be required to produce documents that were provided to it by Merchant & Gould.

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448 F.3d 1294 *; 2006 U.S. App. LEXIS 11162 **; 78 U.S.P.Q.2D (BNA) 1676 ***

IN RE ECHOSTAR COMMUNICATIONS CORPORATION, ECHOSTAR DBS CORPORATION, ECHOSTAR TECHNOLOGIES CORPORATION, and ECHOSPHERE LIMITED LIABILITY COMPANY, and MERCHANT & GOULD P.C., Petitioners.

Subsequent History: Writ of mandamus granted In re Knearl, 184 Fed. Appx. 955, 2006 U.S. App. LEXIS 14772 (Fed. Cir., 2006)

Rehearing denied by, Rehearing, en banc, denied by In re Echostar Communs. Corp., 2006 U.S. App. LEXIS 17511 (Fed. Cir., July 5, 2006)

US Supreme Court certiorari denied by TiVo, Inc. v. EchoStar Communs. Corp., 549 U.S. 1096, 127 S. Ct. 846, 166 L. Ed. 2d 665, 2006 U.S. LEXIS 9478 (U.S., 2006)

Prior History: TiVo Inc. v. EchoStar Communs. Corp., 2006 U.S. Dist. LEXIS 97135 (E.D. Tex., Apr. 3, 2006)

Disposition: The court granted the firm's motion for leave to intervene. It also granted the petition for mandamus as to certain classifications of documents.

CORE TERMS

infringement, communicated, work product, attorney-client, documents, work-product, district court, waived, advice, patent, willful, in-house, subject matter, immunity, mandamus, advice-of-counsel, asserts, discovery, preparation, disclosure, mental impressions, advice of counsel, memorandum, letters, abuse of discretion, legal opinion, state of mind, writ petition, conveyed, parties

Civil Procedure, Preliminary Considerations, Equity, Adequate Remedy at Law, Irreparable Injury, Writs, Common Law Writs, Mandamus, Patent Law, Jurisdiction & Review, Subject Matter Jurisdiction, General Overview, Governments, Courts, Judicial Precedent, Discovery, Privileged Communications, Remedies, Damages, Methods of Discovery, Inspection & Production Requests, Attorney-Client Privilege, Evidence, Privileges, Attorney-Client Privilege, Scope, Waiver, Infringement Actions, Defenses, Standards of Review, Abuse of Discretion, Work Product Doctrine, Waiver of Protections, Scope of Protection, Fact Work Product, Opinion Work Product