If enacted by Congress, Federal Rule of Evidence 502 will define the scope of subject matter waiver of both attorney-client privilege and work product protection. Unless and until that happens, the common law governs. One traditional event triggering a waiver is a party’s reliance on advice of counsel as a defense. The Federal Circuit explored the scope of such a waiver when advice of counsel is asserted in response to a charge of willful infringement in In re Seagate Tech., LLC, 2007 U.S. App. LEXIS 19768 (Fed. Cir. Aug. 20, 2007). The key question: Did the subject matter waiver extend beyond ‛opinion counsel“ to trial counsel? As to both attorney-client privilege and work product protection, the Federal Circuit held that, ‛as a general proposition,“ the waiver stops at opinion counsel and does not extend to trial counsel, although the opinion leaves room for trial judges to exercise their discretion ‛in unique circumstances“ to come to another conclusion.

There was a threshold question in Seagate — appellate jurisdiction. The Court issued a writ of mandamus because, it found, the privilege holder satisfied the Federal Circuit’s three-part test for review of discovery orders that turn on claims of privilege: ‛(1) there is raised an important issue of first impression, (2) the privilege would be lost if review were denied until final judgment, and (3) immediate resolution would avoid the development of doctrine that would undermine the privilege." There is a split in the Circuits on appellate review of privilege assertions. Jerry Solovy and Bob Byman of Jenner & Block wrote and excellent article on this subject in the National Law Journal in March of 2003.