Law.com Subscribers SAVE 30%

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

Counsel Concerns

By ALM Staff | Law Journal Newsletters |

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
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.

Judge Rules Shaquille O'Neal Will Face Securities Lawsuit for Promotion, Sale of NFTs Image

A federal district court in Miami, FL, has ruled that former National Basketball Association star Shaquille O'Neal will have to face a lawsuit over his promotion of unregistered securities in the form of cryptocurrency tokens and that he was a "seller" of these unregistered securities.

Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It Image

Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?

Blockchain Domains: New Developments for Brand Owners Image

Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.

Coverage Issues Stemming from Dry Cleaner Contamination Suits Image

In recent years, there has been a growing number of dry cleaners claiming to be "organic," "green," or "eco-friendly." While that may be true with respect to some, many dry cleaners continue to use a cleaning method involving the use of a solvent called perchloroethylene, commonly known as perc. And, there seems to be an increasing number of lawsuits stemming from environmental problems associated with historic dry cleaning operations utilizing this chemical.