Richards Layton & Finger
 

Chief Judge Stark Finds that Waiver of Privilege Extends to Pre-Patent and Post-Complaint Communications

January 30, 2018

In Morphosys AG v. Janssen Biotech, Inc., No. 16-221-LPS-CJB (D. Del. Oct. 26, 2017), Chief Judge Stark ordered the defendant Janssen Biotech Inc. to produce materials previously withheld as privileged. Janssen had relied on advice of counsel as a defense to willful infringement, but the parties disputed the scope of the resulting waiver. The plaintiff, Morphosys AG, sought all documents regarding infringement or validity, regardless of their relationship to the opinion of counsel or whether they were generated before the patent issued or after the complaint was filed. Janssen argued that any waiver was limited to documents exchanged between it and its opinion counsel. Chief Judge Stark granted the request, and in doing so rejected Janssen Biotech’s reliance on statements from the Federal Circuit’s decision in In re Seagate Technology, LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007)—that willfulness must “necessarily be grounded exclusively in the accused infringer’s pre-filing conduct” and that the remedy for post-complaint willfulness is a preliminary injunction—to try to limit the scope of the waiver.

The Court also found that defendants Genmab US, Inc. and Genmab A/S waived the attorney-client privilege by sharing the opinions of in-house counsel with Janssen, notwithstanding that the Genmab defendants were not themselves asserting an advice-of-counsel defense. Chief Judge Stark ruled that the scope of the subject-matter waiver was the same as that applicable to Janssen.

Key Point: Think carefully before asserting the advice-of-counsel defense. Although parties control whether to assert advice of counsel as a defense, the scope of the subject matter to which its waiver applies may be broader than expected.