COUNSEL
(a) The substance of any advice of counsel tendered in defense to a
charge of willful infringement, and any other information which might be
deemed to be within the scope of a waiver attendant to disclosure of such
advice, shall not be discoverable until the earlier of:
(1) five (5) days after a ruling on summary judgment
indicating a triable issue of fact to which willfulness would be
relevant; or
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(2) thirty (30) days prior to the close of fact discovery under
the discovery track to which the case is assigned.
(b) On the day such willfulness information becomes discoverable,
the party relying on such advice shall produce the following:
(1) a copy of all written opinions to be relied on by the party
opposing the claim of infringement;
(2) a copy of all materials or information provided to the
attorney in connection with the advice;
(3) a copy of all written attorney-work product developed in
the course of preparation of the opinion and which work product was
disclosed to the client;
(4) identification of the date, sender and recipient (but not
necessarily the substance) of all written or oral communications
between the attorney or law firm rendering any opinions to be relied
on, which communications discuss the same subject matter as such
opinion.
(c) After such willfulness information becomes discoverable, a
party claiming willful infringement shall be entitled to take the deposition of
any attorneys rendering the advice relied on and any persons who received
such advice, including but not limited to any person who claims to have
relied on such advice.
(d) These rules contain no presumption as to whether any materials
other than those specifically required to be produced by this rule are, in fact,
discoverable or subject to the scope of the waiver of any attorney client
privilege. Resolution of any dispute over disclosure of further material shall
be left to the Court.
