Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

Entertainment Law & FinanceKickerFeaturesTopicsCommercial LawSectionsNewsLJN Newsletters

Counsel Concerns

By ALM Staff | Law Journal Newsletters |
April 27, 2007

Attorney-Client Privilege. The U.S. District Court for the Northern District of Illinois held that Arachnid Inc., a plaintiff in a computer-jukebox patent suit, had waived in limited scope its attorney-client privilege when its lawyer failed to object to the disclosure of attorney advice about the patent during the deposition of a former employee in a prior lawsuit. (Arachnid's lawyer had represented both Arachnid and the former employee in the prior litigation.) Rowe International Corp. v. ECast Inc., 06 C 2703. Plaintiff Arachnid Inc. had obtained a patent for jukeboxes that delivered digital music. Rowe International and Arachnid later filed a patent-infringement suit. During discovery, defendant ECast sought production of 'all privileged communications (including the 'patent reports') concerning the patentability of the inventions claimed in the patents-in-suit, [a prior, similar] Patent, communications relating to the preparation and prosecution of the applications of the patents-in-suit, and communications concerning inventorship.'

The district court additionally found that 'even if [Arachnid counsel John] Held's failure to object at the [prior suit] deposition' to statements by former employee Michael Tillery about counsel's advice on the computer-jukebox patent 'did not waive Arachnid's privilege, Arachnid most certainly waived the privilege when it provided a copy of Tillery's deposition transcript to the [Patent and Trademark Office (PTO)]. It is hard to imagine a more 'knowing disclosure' than making the substance of a privileged communication part of the public record.' But the district court went on to note: 'On the other hand, the Court rejects defendants' contention that the waiver extends to the other patents in suit, inventorship, and issues of patentability generally. Courts narrowly construe the scope of waiver in patent cases.'

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Law Firms are Reducing Redundant Real Estate by Bringing Support Services Back to the Office Image

A trend analysis of the benefits and challenges of bringing back administrative, word processing and billing services to law offices.

Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

Bit Parts Image

Summary Judgment Denied Defendant in Declaratory Action by Producer of To Kill a Mockingbird Broadway Play Seeking Amateur Theatrical Rights

Risks of “Baseball Arbitration” in Resolving Real Estate Disputes Image

“Baseball arbitration” refers to the process used in Major League Baseball in which if an eligible player's representative and the club ownership cannot reach a compensation agreement through negotiation, each party enters a final submission and during a formal hearing each side — player and management — presents its case and then the designated panel of arbitrators chooses one of the salary bids with no other result being allowed. This method has become increasingly popular even beyond the sport of baseball.

Disconnect Between In-House and Outside Counsel Image

'Disconnect Between In-House and Outside Counsel is a continuation of the discussion of client expectations and the disconnect that often occurs. And although the outside attorneys should be pursuing how inside-counsel actually think, inside counsel should make an effort to impart this information without waiting to be asked.