Caution your client against sending any internal opinion letters (or internal communications generally) directly to a competitor. If that is their intention, a separate letter should be prepared for this purpose, and drafted as a public document.
Background / Facts: Wi-Lan obtained an opinion of counsel as to LG’s infringement of one of its patents, and sent that letter directly to LG. The letter appeared to be privileged as it was (1) marked “CONFIDENTIAL” on every page, (2) addressed from an attorney to his client, and (3) contained detailed legal opinions. For discovery purposes, LG attempted to assert that Wi-Lan had waived it’s attorney/client privilege not only with regard to the letter itself, but that the waiver automatically extended to all documents and testimony relating to the subject matter of the letter. The district court agreed and found Wi-Lan’s law firm in contempt for refusing to produce those documents and testimony (for which they claimed there was no impediment to fairness), which led to the appeal.
Issue(s): Whether a party who expressly waives privilege pre-litigation receives the same protection of the “fairness balancing test,” as per Rule 502(a), in determining the extent of such waiver as one ordinarily does when the waiver occurs during litigation.
Holding(s): Yes. The district court erred by rejecting considerations of fairness when assessing the scope of the waiver. The fairness doctrine applies and requires an assessment of whether LG would be unfairly prejudiced by Wi-Lan’s assertion of privilege against discovery into attorney/client communications beyond the four corners of the opinion letter. (The evaluation of what was fair in this instance was remanded back to the district court.)